Wednesday, December 12, 2018 T 2303/16 - refused for lack of two-part form, conciseness and reference numerals

Car towed because of a parking violation

The application was refused after a single office action on the grounds of lack of conciseness, two-part form and reference numerals. In appeal these are addressed but no interlocutory revision was given. 

After entering the regional phase at the EPO in 2006, the applicant received its first office action in 2014. The office action raised clarity issues and a few smaller problems, in particular lack of reference numerals. The international search report had complained earlier about lack of two-part form, and lack of conciseness due to too many independent claims (in addition of substantive problems). In it's reply, the applicant amended for the clarity issue, and addressed the patentability of the claims. The second communication in ten years was a refusal. 

The board did not see a problem with a refusal based on formal issues that were only identified in the ISR, but did rule that interlocutory revision should have been granted. 

Tuesday, December 11, 2018 Hot News: T 1063/18 - Rule 28(2) EPC in conflict with Art.53(b) as interpreted by the EBoA in G 2/12 and G 2/13.

Hot News: Communication from the BoAs (link):

Decision in case T 1063/18 on the patentability of plants

7 December 2018

Case T 1063/18 concerns the appeal by the applicant against the decision of the examining division to refuse European patent application no. 12 756 468.0 (publication no. EP 2 753 168) for the sole reason that the claimed subject-matter falls within the exception to patentability according to Article 53(b) and Rule 28(2) EPC (here: plants exclusively obtained by means of an essentially biological process).

At the oral proceedings, which took place on 5 December 2018, Technical Board of Appeal  3304, in an enlarged composition consisting of three technically and two legally qualified members, held that Rule 28(2) EPC (see OJ 2017, A56) is in conflict with Article 53(b) EPC as interpreted by the Enlarged Board of Appeal in decisions G 2/12 and G 2/13. The Board referred to Article 164(2) EPC, according to which the provisions of the Convention prevail in case of conflict with the Implementing Regulations, and decided to set the decision under appeal aside and to remit the case to the examining division for further prosecution.

The written decision containing the board's full reasons is expected to be issued early next year.

We will post another blog as soon as the written decision is available The file wrapper can be found here. Photo "Farmer's Market Summer Colors" by Luxbao obtained via Flickr under Public Domain Mark 1.0

------------------------------
Update 19-12-2018: Minutes from Oral proceedings before the Board available

The minutes from the oral Proceedings of 5 December 2018 are available in the EP Register (here) and are cited in full below (emphasize aded by the blog editor).

Appeal number T1063/18-3.3.04

Application No.: 12756468.0
Applicant: Syngenta Participations AG

Minutes of the oral proceedings

of 5 December 2018

Composition of the Board:

Chair: G. Alt
Members: R. Morawetz
                 P. de Heij
                 A. Chakravarty
                 L. Bühler

Start of oral proceedings: 09:30 hours
End of oral proceedings:  13:00 hours

 Present on behalf of the appellant:

Mr M. A. Kock, authorised by an authorisation dated 19 October 2018, and Mr N. Amelot, professional representatives, both identified by EPO-identity card.

The chair declared the oral proceedings open. She noted that the board had been enlarged pursuant to Article 21(3)(b) EPC and Article 9 RPBA. She then summarised the relevant facts as they appeared from the file. The appellant confirmed that they had received all third parties observations on file.

The chair stated that the board had taken note of the third parties observations. The chair also stated that the board intended to decide whether the decision to refuse the application was correct.

The chair ascertained the appellant ’s opening requests which the board understood to be as follows.

The appellant requested:

- as the main request: That the decision under appeal be set aside and, should the board remain of the opinion that the grounds raised in the communication of the board prevented the application from being granted, the case be remitted to the examining division for further prosecution on the basis of the set of claims filed on 7 August 2015;

- as auxiliary request 1: Should the board not be in a position to take a decision on the validity and/or scope of Rule 28(2) EPC according to the main request or see points of law of fundamental importance, questions be referred to the Enlarged Board of Appeal as suggested in the statement of grounds of appeal dated 5 April 2018, including a question to clarify the apparent contradiction between the definitions of essentially biological processes under G 2/07 and under Rule 27(c) EPC and the Biotechnology Directive 98/44, as further construed by the Commission Notice;

- as auxiliary request 2: Should the board be minded to dismiss the appeal without deciding on the appellant's main request to set aside the decision of the examining division, the following question be submitted to the Enlarged Board of Appeal: "Is a Board of Appeal entitled to reject an appeal on grounds not related to the appeal without first deciding on the Appellant's Main Request to set aside the decision of the Examining Division?";

- as auxiliary request 3: Should the board intend to reject the request to remit the case to the examining division for further prosecution on the basis of the set of claims filed on 7 August 2015, a patent be granted on the basis of an amended set of claims filed as auxiliary request 4 with the letter dated 26 October 2018.

The chair summarised the appellant’s different lines of argument presented in writing. She noted that one of these lines was that Rule 28(2) EPC was in conflict with Article 53(b) EPC, as interpreted by the Enlarged Board of Appeal in decisions G 2/12 and G 2 /13, and that therefore Article 164(2) EPC applied. She invited the appellant to first present comments on this line of argument.

The appellant presented their arguments on the matter and stated that they agreed with the observations of the third party Konig, which the board should take into consideration, and had nothing to add to the comments provided by Konig on the observations of the third party ESA (European Seed Association). [Note: both third parties made multiple submissions - see EP Register]

After deliberation, the chair announced that the board was of the opinion that Rule 28(2) EPC was in conflict with Article 53(b) EPC, as interpreted by the Enlarged Board of Appeal in decisions G 2/12 and G 2/13, and that in accordance with Article 164(2) EPC the provisions of the Convention prevailed.

Next, the appellant presented their arguments in support of the request for remittal to the examining division. These were, inter alia, that the objections of lack of inventive step and lack of clarity had been raised by the board and that they had the right to have these objections considered by two instances.

After another break for deliberation by the board, the chair stated that the board would not order the remittal of the case at the present stage of the oral proceedings, but would reconsider the request after the appellant had been heard on the issue of inventive step of the subject-matter of claim 1 of the main request. There was no loss of instance for this issue because the examining division had provided an opinion on inventive step.

As regards document D1 and the San Luis Ancho pepper disclosed therein, the appellant submitted that it was not known whether the features in claim 1 defining the extreme dark green colour of the fruit at immature harvestable state, i.e. the chlorophyll A and chlorophyll B, lutein and violaxanthin  content, were inherent features of the San Luis Ancho pepper. The dark green colour of the pepper as not necessarily linked to these features. An analysis of the chlorophyll and carotenoid content of the San Luis Ancho pepper could provide the relevant information, however, the appellant's experts had not had sufficient time to carry out such an analysis.

The proceedings were again interrupted for deliberation of the board. After resumption, the chair announced that the board had reconsidered the request for remittal and had decided to remit the case to the examining division for further prosecution. This would allow the appellant to carry out an  analysis of the San Luis Ancho pepper to support their arguments on inventive step.

The chair asked the appellant to state their final requests. These were the same as their opening requests.

The chair asked the appellant if they had any further comments or observations. They had none.

The chair then closed the debate and announced the following decision of the board:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division for further prosecution on the basis of the set of claims of the main request, as filed on 7 August 2015.

The chair then closed the oral proceedings.

The Minute Writer: P. de Heij

The Chair: G. Alt

Wednesday, December 05, 2018 T 1890/15 - Giving oral evidence, or replacing representative's pleading

In the present case, the patent proprietor (appellant) lodged an appeal against the decision of the opposition division revoking the European patent and requests oral submissions of a technical expert as accompanying person to explain the skilled person's understanding. The Board applies the criteria of G 4/95 and concludes that these were not complied with, and exercises its discretion referred to in G 4/95 by not permitting the technical expert as an accompanying person to make oral submissions.

Additionally, the Board deliberates whether the Enlarged Board in G 4/95, and specifically when considering that Art. 117 EPC did not provide a legal basis for hearing oral submissions by an accompanying person involving the presentation of facts and evidence, means that the Enlarged Board considered that an accompanying person, in particular a technical expert, gives oral evidence by way of making oral submissions at the oral proceedings, or merely presents (legal or technical) arguments in place of the presentation of the case (pleading) by the professional representative.

The Board concludes that should oral submissions by an accompanying person be considered and intended to be oral evidence comparable to a written statement ("affidavit") of said person, the same criteria as for the admission of late filed facts and evidence should apply. 

Tuesday, November 27, 2018 R 0004/18 - Wait for a decision

This (yet unsuccessful) petition for review concerns appeal proceedings against a decision of the Examining Division.

The appeal was withdrawn by the representative of the applicant/petitioner during oral appeal proceedings reason for which the appellant later wanted to change his representative. In the minutes of the oral proceedings the BoA used the wording: "the Chairman gave the Boards  conclusion that claim 1 did not meet Art. 123(2)". The petitioner interpreted this wording as a decision of the BoA and requested correction of the word "conclusion" into "preliminary view". The request was refused by the BoA.

The appellant filed the petition based on several grounds under Art. 112a, EPC and further argued that the Examining Division by examining a divisional application of the patent application in suit referred to the minutes to as a decision, thereby adversely affecting the divisional, besides leading to the refusal of the parent. 

The Enlarged Board stated that a condition for filing a petition is the existence of a BoA decision. The minutes of oral proceeding and a correction thereof, are not a decision in the sense of Art. 106, EPC (confirmed by T 0838/92, T 0212/97, T 0231/99) and the appellant/petitioner withdrew the appeal even before oral proceedings were concluded and a decision could be issued. Therefore the Enlarged Board considered the petition inadmissible. 

Friday, November 23, 2018 T 1045/12 - If the grass is greener on the other side, one path that leads you there is sufficient

The present appeal is against a refusal decision by the Examining Division on the grounds of lack of inventive step. In its provisional opinion, the Board also expressed doubts as to whether the application complied with Article 56 EPC. During oral proceedings, the appellant's position was that the Board had not provided conclusive reasons on the basis of tangible evidence showing why the skilled person starting from the closest prior art (D4) would, and not just could, have arrived at the claimed invention. The appellant further argued that the solution to the objective technical problem taught by D3 (evidence of common general knowledge) was one of several, equally likely options, and that in the presence of several, equally likely options, the Board had to provide a reason why the skilled person would have selected the claimed option.

The Board cited decision T 1014/07, which held that [a finding of lack of inventive step must] "identify conclusive reasons on the basis of tangible evidence that would have prompted the skilled person to act in one way or another", and concluded that its present decision, being based on prior art documents D4 and D3, is indeed based on "tangible evidence".

The Board further concluded that one of the options taught by D3 solved the underlying technical problem, and that the existence of other options has no bearing on the obviousness of one specific option. Furthermore, if all options are equally likely, then the invention is merely the result of an obvious and consequently non-inventive selection from a number of known possibilities. The finding of lack of inventiveness was therefore upheld and the appeal dismissed. 

Wednesday, November 21, 2018 T 1946/17 - blanket statements cannot be considered to address the arguments raised

In this appeal case, the Boards emphasized again that a decision according to the state of the file must, as any other decision, be reasoned and arguments raised must be addressed. The standard form for referring only to an earlier communication can only be used under strict conditions spelled out in the Guidelines. It is only possible to use this form of decision where the previous communication addresses all the arguments raised by the applicant. Further, it is possible by way of exception to refer to more than one communication in the standard form, but then the examiner should carefully consider the requirements of Rule 111(2) EPC. Blanket statements --such as merely stated that the "arguments were carefully considered" but "no new evidence" was provided-- cannot be considered to address the arguments raised and does not comply with the requirement of Rule 111(2) EPC that the decision be reasoned. Also, in view of contradictory statements in the communications referred to in the present standard form decision, it is not clear which of the reasons given by the Examining Division under Articles 54 and 56 EPC, if any, might form part of the reasons for the decision to refuse. Lastly, comments submitted by the applicant after the last communication and before the request for a decision according to the state of the file were ignored. 

Monday, November 19, 2018 T 839/14 - Fresh ground before opposition division

Fresh ground

In the written submissions before oral proceedings in first instance opposition, the opponent argued for the first time that the granted patent contained added subject matter. The opposition division refused to allow the new grounds to be added in the proceedings,as it didn't consider it to be prima facie relevant. The decision does contain argumentation though, why the division did not consider there to be added subject matter. The board concurs with the decision not to allow the new ground. Accordingly, the argumentation regarding the added matter which is in the opposition divisions decision is not reviewed by the Board.