23 Aug 2019

T 2704/16 - Refund appeal fee only

Key points

  • In this examination appeal, the applicant had requested a refund of the appeal fee. The applicant then submits a letter stating that the appeal was withdrawn and requesting a decision according to the state of the file. The Register then explained (in a telephone conversation) that this contradictory. The appellant then conformed the intention to request a decision according to the state of the file. 
  • Subsequently, the renewal fee is not paid, also not with an additional fee.
  • This makes that the application is withdrawn. The Board still decides on the request for refund of the appeal fee and refuses it, because the appeal was not (actively) withdrawn. 
  • " A withdrawal of an appeal must be expressed in unambiguous terms. The appellant's statement in his letter dated 18 May 2018 that the appeal was withdrawn was in direct contradiction to the request for a decision according to the state of the file, because a withdrawal of the appeal leads to the decision of the department of first instance taking legal effect without a decision by the Board. In view of this contradiction the letter dated 18 May 2018 did not contain a valid request for a withdrawal of the appeal." 



Reasons for the Decision
1. This decision only concerns the appellant's request for reimbursement of the appeal fee. No substantive requests can be considered as the application is deemed withdrawn pursuant to Article 86(1) EPC. The request for oral proceedings is considered withdrawn in view of the subsequent request for a decision according to the state of the file.
2. The appellant has not given any reason as to why the appeal fee should be reimbursed. The Board cannot see any such reason either. The legal basis for reimbursement of the appeal fee is provided for in Rule 103 EPC. According to this rule the appeal fee may be reimbursed if a substantial procedural violation occurred in the proceedings before the department of first instance (and certain additional conditions are fulfilled - see Rule 103(1)(a) EPC) or if the appeal has been withdrawn at a certain stage of the appeal proceedings (Rule 103(1)(b) and (2) EPC). However, neither of these conditions have been fulfilled in the case before the Board - the appellant has neither alleged a substantial procedural violation nor has he withdrawn the appeal.
3. A withdrawal of an appeal must be expressed in unambiguous terms. The appellant's statement in his letter dated 18 May 2018 that the appeal was withdrawn was in direct contradiction to the request for a decision according to the state of the file, because a withdrawal of the appeal leads to the decision of the department of first instance taking legal effect without a decision by the Board. In view of this contradiction the letter dated 18 May 2018 did not contain a valid request for a withdrawal of the appeal. The appellant's letter dated 11 June 2018 clarified the appellant's intention to request a decision according to the state of the file and not to withdraw the appeal.
Order
For these reasons it is decided that:
The request for reimbursement of the appeal fee is refused.

22 Aug 2019

J 0008/18 - SME appeal fee and restoration priority

Key points
  • An appeal against a decision of the Receiving  Section is filed by a Chinese SME. The Legal Board explains, firstly, that this small or medium-sized enterprise is entitled to the reduced appeal fee.
    • "whereas the reduction in the filing fee and the examination fee is only available for natural persons and the above-mentioned entities if they have their residence or principal place of business in a Contracting State having a language other than English, German or French as an official language, and nationals of such state who are resident abroad, the applicable amount of the appeal fee is not dependent on the restrictions in Article 14(4) EPC, and also not on the language in which the notice of appeal is filed." 
  • A second question what is the meaning of the self-declaration that the appellant is an SME. The EPO Notice OJ 2018, A5 states that " Appellants wishing to benefit from the reduced fee for appeal must expressly declare that they are a natural person or an entity covered by Rule 6(4) EPC".
    • The Legal Board observes firstly that "The Decision of the Administrative Council [OJ 2018, A4; i.e. amended Rfees2)(1)11] does however not refer to Rule 6(6) EPC, wherein such declaration is mentioned, either." The Board emphasizes that "the Board is in no way bound by Notices from the EPO concerning the application or interpretation of legal provisions". 
    • As a comment, I think the Board expresses here that the purported requirement of a declaration of OJ 2018 A15 simply lacks any legal basis and simply does not exist. This is somewhat similar to recent decision J 4/18 were the Legal Board concluded that the purported requirement that for reduction of the examination fee for SME's under Rule 6, there is no requirement that all applicants must fulfill the requirements of Article 14(4) EPC. 
    • The Board nevertheless finds that the Notice "appears to suggest that it is enough to benefit from the reduced fee for appeal if the appellant simply declares that it is an [entitled entity]." The Board finds that "at least based on the principle of legitimate expectations the appellant could rely on the information given by the EPO and furthermore assume that its appeal would either be deemed filed or admissible following the refund of the regular appeal fee before the file was transferred to the boards of appeal" 
    • The latter remark refers to the fact that the appellant had paid both the reduced amount and the full amount and the fact that the full amount was refunded, apparently the refund was made by the EPO already before the file was transferred to the Board. As a comment, I think the Legal Board could more straightforwardly have said that the even the higher appeal fee was validly paid by the applicant; the fact that someone in the EPO's accounting department decides to refund it does not make the payment invalid.
  • The impugned decision was taken by the Receiving Section and did not state the name of the employee. The Board finds this to be a substantial procedural violation of Rule 113(2). 
  • The substantive issue is that the applicant had filed a request for restoration of priority, within the time limit of one month from the expiry of the 31-month time limit but without paying the fee. The Board finds that the request is deemed to not have been filed by applying Rule 136(1) last sentence EPC mutatis mutandis.  
  • The applicant had argued that further processing should be available for the missed time limit of Rule 49ter.2(b)(i) PCT. The Board explains that under " Article 48(2)(a) PCT [...] further processing is not available if it is not available for not meeting a corresponding time limit under the EPC. Article 121(4) EPC expressly rules out further processing inter alia in respect of the time limit for requesting re-establishment of rights. A request for restoration of rights as specified in Rule 49ter.2 PCT is equivalent to, and identical in legal nature, to a request for re-establishment of rights under the EPC". Accordingly, neither further processing nor re-establishment are available. 
  • "The appellant's final argument [invoking  the principle of legitimate expectations] that it was not obvious that a fee was due for a request for restoration under Rule 49ter.2 PCT cannot convince the Board either. Apart from the fact that parties to proceedings before the EPO are expected to know the relevant legal provisions, it should also be known that the EPO charges fees for further processing and re-establishment of rights, and it would therefore be unlikely that the EPO did not charge a fee for the request for restoration under Rule 49ter.2 PCT. It would therefore have been incumbent on the appellant to check whether the EPO had made use of its right to charge a fee under Rule 49ter.2(d) PCT." 


J 0008/18 - J 8/18 - link



Reasons for the Decision
Admissibility of the appeal
1.1 The appeal fee was paid twice within the two month period of Article 108 EPC, once the reduced amount of ¤ 1880 on 3 April 2018 and once the regular amount of ¤ 2255 on 4 April 2018. The amount of ¤ 2255 was subsequently (on 17 April 2018) refunded to the appellant.
1.2 According to Article 1(4) of the Decision of the Administrative Council of 13 December 2017 amending Articles 2 and 14 of the Rules relating to Fees (OJ EPO 2018, A4) the fee for appeal for an appeal filed by a natural person or an entity referred to in Rule 6(4) and (5) EPC shall be ¤ 1880. The fee for an appeal filed by another entity shall be ¤ 2255. These amounts shall be applicable for appeals filed on or after 1 April 2018 (Article 3(4) of the Decision). The present appeal has been filed on 3 April 2018.

21 Aug 2019

T 0435/17 - Intervention by (not?) a third party

Key points

  • In this opposition appeal, two notices of intervention were filed under Article 105 EPC. The patentee protests that the interveners are not really third parties, because of their "factual proximity" to the opponent " in geographical, accounting (i.e. EPO deposit account] and representational terms". The interventions would, therefore, be an abuse of procedure to delay the opposition.
  • The Board finds that there is no legal basis to hold an intervention inadmissible because of proximity to the opponent.


EPO T 0435/17 -  link



Motifs de la décision
1. Recevabilité des interventions
1.1 Dans la notification selon l'article 15(1) RPCR la Chambre a annoncé et motivé son avis provisoire que les deux interventions sont recevables comme suit:
"8.1 La Chambre juge les deux interventions recevables parce qu'elles satisfont aux dispositions de l'article 105 CBE et de la règle 89 CBE. En particulier, les deux contrefactrices présumées ont apporté la preuve qu'une action en contrefaçon fondée sur le brevet a été introduite à leur encontre (cf. assignation devant le TGI Paris du 22 décembre 2017).
8.2 La titulaire du brevet soutient que les deux interventions sont irrecevables parce que les contrefactrices présumées ne sont pas des tiers au sens de l'article 105(1) CBE, en raison de leur proximité factuelle en termes géographiques, comptables et de représentation avec l'opposante 1, et qu'elles utilisent donc la procédure d'intervention pour porter tardivement à la procédure des moyens qui auraient déjà pu être présentés devant la division d'opposition.
8.3 Toutefois, la Chambre estime que le terme "tout tiers" figurant à l'article 105(1) CBE doit être interprété au sens où le contrefacteur présumé doit être une entité juridique distincte des autres parties à la procédure (cf. par exemple la Jurisprudence des Chambres de recours de l'OEB, 2016, chapitre IV.C.3.1.1), et qu'il n'existe aucune base juridique pour exclure qu'un contrefacteur présumé partage avec un opposant des locaux, un compte courant pour le paiement de taxes - lesquelles peuvent par ailleurs être payées par toute personne - et/ou un mandataire agréé. Il ne ressort pas des éléments présentés par la titulaire du brevet que les contrefactrices présumées et l'opposante 1 ne sont pas des entités juridiques distinctes.
8.4 La Chambre n'est donc pas persuadée que le fait d'autoriser les interventions revienne à permettre à l'opposante 1 d'introduire tardivement de nouveaux moyens dans la procédure de recours."
1.2 La titulaire du brevet n'a pas répondu sur le fond à cet avis provisoire.
1.3 Au début de la procédure orale, la Chambre a constaté qu'en l'absence d'élément nouveau la conclusion communiquée à titre provisoire devait s'appliquer de manière inchangée et a ainsi décidé que les interventions étaient recevables.
1.4 Les intervenantes sont par conséquent assimilées à des opposantes pour la suite de la procédure (article 105(2) CBE).

20 Aug 2019

T 0085/16 - No three-point-test for omitted features

Key points

  • In this opposition appeal, claim 1 at issue does not contain three features compared to claim 1 of the (parent) application as filed. 
  • "The [patentee] argued that the three-point-test developed in T331/87 was applicable in the present case. "
  • "However, the basic principle underlying Articles 76(1) and 123(2) EPC is independent of particular tests that have sometimes been used in other decisions, even if this might, in certain cases, have become common practice of the EPO. While such tests might give some guidance in certain situations, they do not substitute the application of said basic principle. The question to be answered is hence what a skilled person can derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the documents as filed. This is known as the gold standard (see G2/10, Reasons 4.3)."
  • Turning to the omitted features at issue, "The [patentee] argued that the non-woven fabric was not "essential" for solving the technical problems."
  • The Board: "However, whether something is essential or not is not the same as whether subject-matter is directly and unambiguously derivable by a skilled person. For example, a reader might well conclude, after having deliberated on the essentiality of the non-woven fabric for any particular purpose or reason, that another material could also have been used for the laminate's sheets, but this does not mean that it has been directly and unambiguously disclosed. There is no disclosure in the earlier application - be it explicit or implicit - of the general sheets with which the feature "non-woven fibre sheet" was replaced. These general sheets cannot be derived directly and unambiguously from the original documents. Having ascertained this, it is of no relevance whether the sheets of the non-woven fibre type have been presented as being essential for the invention or whether they were indispensable for its function."


EPO T 0085/16 -  link



1.3 Omission of features - the relevant standard and test
1.3.1 As already stated in the communication of the Board (see points 1.1 and 1.2), when assessing whether the subject-matter of granted claims 1 and 2 of the patent extends beyond the content of the earlier application as filed under Article 76(1) EPC the same principles apply as when examining whether the requirement of Article 123(2) EPC is met. The basic principle therefor can be found in the case law of the Enlarged Board of Appeal and was summarised in G2/10 (see Reasons 4.3).
1.3.2 The appellant argued that the three-point-test developed in T331/87 was applicable in the present case. It further referred to T2311/10, in which decision it was pointed out that the risk existed of applying the three-point-test in the wrong way by formulating an objective technical problem with regard to some state of the art instead of deriving it directly from the application. In the appellant's view, such risk did not exist in the present case and the test should be applied.

19 Aug 2019

R 0007/18 - Cancelled flights and the Enlarged Board

Key points


  • " VII. Oral Proceedings before the Enlarged Board of Appeal were scheduled to start at 10:30 on 4 February 2019. After no representative of the petitioner was present at 10:30 and taking into account that travel conditions might be difficult due to bad weather, the registrar of the Enlarged Board undertook enquiries with the office of the petitioner's representative. The start of the oral proceedings was delayed to allow said enquiries." 
  • " VIII. The Enlarged Board then took note of a telefax letter sent by an employee of [the professional representative's] office [a large patent attorney firm in The Netherlands), which contained the information that [the professional representative] would not attend the hearing taking place on 4 February 2019 at 10:30 am due to cancelled flights [presumably this fax] . The telefax letter did not contain any request for postponement of the oral proceedings. The information given in the telefax letter was also obtained in two telephone conversations between the registrar of the Enlarged Board and two employees of the representative's office, Ms [X1] and Mr [X2]. The Enlarged Board then decided that the oral proceedings would take place in the absence of the petitioner's representative and started the oral proceedings at 12:30.
  • The petition for review was unanimously rejected as being clearly inadmissible during the oral proceedings on 04.02.2019.
  • The petitioner sent a letter about the oral proceedings taking place in his absence on 25.02.2019 explaining that on Sunday 3 Feb there was heavy snow and "the flight was cancelled" from Turin to Munich (by the airline I understand). The next flight on Monday 4 Feb at 6AM the next flight was also cancelled. Furthermore, the Registrar of the Enlarged Board Mr. C had retired on 31.01.2019 and the representative could not contact anyone of the Enlarged Board by phone. At the same time, his assistant Ms. X1 sent faxes to the Enlarged Board, the representative could not see the content of these faxes. The first time his assistant could reach someone of the Enlarged Board by phone was about 13:14 when the decision had already been taken (still according to the petitioner's letter).
  • The fax of the assistant Ms. X1 of 09:24 stated in the entire relevant part: "Mr. [professional representative] will not the below hearing due to cancelled flights" (leaving open who had cancelled the flights).
  • The Registrar issued a Communication on 10.04.2019 informing the petitioner that the email (p.2 of the PDF) of the representative to the Registrar Mr.C of 4 Feb 07:53 a.m. (mentioning 'events have conspired to prevent my arrival in Haar today' and 'my flight ... is cancelled') had no effect firstly because Mr.C had retired on 31.01 and secondly because email has no legal force, recalling that 'urgent queries or communications should, therefore, be sent by fax only, referring tot he Notice OJ 200 p.458) (Interesting to note that  this Notice still has legal force as long as fax is not yet abolished). The Communication refers to phone calls with the assistants Ms.X1 and Mr.X2 on 10:45, 11:23 and indicates that the decision of the Enlarged Board becomes formally res judicata 'as soon as it was pronounced public oral proceedings'. The Communication acknowledges the petitioner's request for interruption under Rule 142(1)and then gives some reasoning - of the Registrar of the Enlarged Board.
  •  On 06.05.2019, the petitioner sent a further letter requesting in essence re-opening of the proceedings invoking inter alia interruption under Rule 142.  The written decision of the Enlarged Board was notified on 19.06.2019. With a letter of 10.07.2019 the petitioner formally requests interruption under Rule 142. With a letter of 25.07.2019, the Legal Division informs the petition that 'all proceedings before the EPO concerning [the patent] have been completed" and that the EBA has already dealt with the request in the Communication of 10.04.2019. On 06.08.2019, the petitioner files a further letter requesting for a decision on the interruption by the Legal Division itself (I don't understand the point fully, the letter of 25.07.2019 is signed by a lawyer of the EPO). 
  • As a comment, under recent decision T 54/17 the Enlarged Board itself appears competent to decide on interruption under Rule 142 caused by events occurring during the petition for review procedure.

EPO R 0007/18 - link

[text omitted; the relevant part is cited above].

16 Aug 2019

T 0473/15 - CPA from different field

Key points

  • In this opposition appeal, the Board is happy to take D5 as the closest prior art, as proposed by the opponents. However, claim 1 is about a filter medium (for removing particles from a fluid stream) whereas D5 is about "chromatographic separation of contaminants".  
  • "In other words, D5 relates to a different technical field than that of the patent in suit. However, a closest prior art that is not directed to the same purpose or effect as the invention cannot, according to established case law, lead the skilled person in an obvious way to the claimed invention " 
  • " pplied to the present case, this means that the skilled person would not, without hindsight, try to improve the particulate capture efficiency of the medium of D5, which is meant for chromatographic separation. Hence, the skilled person would not, when starting from D5, apply D4's, D10's or any other document's teaching since these documents do not deal with chromatographic separation." 


EPO T 0473/15 -  link


4.2 Closest prior art
In the appellants' [opponents'] view, D5 should be considered as the closest prior art. The board sees no reason to depart from this choice.
4.3 Problem to be solved
According to the patent in suit, one of the problems to be solved is the provision of a filter medium with improved filtration properties (paragraph [39] of the patent).
4.4 Solution
As a solution, the filter medium of claim 1 is proposed, characterised by a layer of fine fibers with a small diameter, spacer particulate and a specific fine fiber solidity, i.e. volume fraction taken by the fibers.
4.5 Success of the solution
It is plausible that fibers with a smaller diameter facilitate the capture of solid particulate matter. [...]

4.6 Obviousness
Although the positive influence of a decrease in the fiber diameter on the particulate capture efficiency is known from D10, as explained above, an inventive step within the meaning of Article 56 EPC is acknowledged:
While the medium of D5 is certainly suitable for capturing particulate from a fluid stream, it actually deals with the chromatographic separation of contaminants. This is illustrated on multiple occasions: see page 10, lines 13 to 31, as well as page 8, line 6, page 13, line 18 and page 14, lines 1 to 10. Consistently, dye is separated from water in the examples in D5 (page 22 lines 21, 22 and 28; Table 2, column "Percent Recovery (Disperse Red 1)").
Admittedly, D5 mentions the term "filtration", e.g. on page 13, line 14 and page 19, line 14). However, on page 10, lines 13 to 31 it is explained that the term "filtering" in D5 is to be understood in the sense of chromatographic separation: "... in which the particles can interact with (for example, chemically or physically react with, or physically contact and modify or to be modified by) a medium or a component thereof to which the particles are exposed".
Apart from page 1, line 12, which refers to the use of fiber fabrics in the prior art only, the term "particle" in D5 refers to the particles enmeshed in the web and not to fine particles to be captured from a fluid stream. page 11, lines 4 to 7 is to be understood in this sense, too.
In other words, D5 relates to a different technical field than that of the patent in suit. However, a closest prior art that is not directed to the same purpose or effect as the invention cannot, according to established case law, lead the skilled person in an obvious way to the claimed invention (see the introductory remarks to Case Law of the Boards of Appeal, 8th ed., I.D.3.2).
Applied to the present case, this means that the skilled person would not, without hindsight, try to improve the particulate capture efficiency of the medium of D5, which is meant for chromatographic separation. Hence, the skilled person would not, when starting from D5, apply D4's, D10's or any other document's teaching, since these documents do not deal with chromatographic separation.
For these reasons, an inventive step within the meaning of Article 56 EPC is acknowledged.

15 Aug 2019

T 2278/14 - Extent of opposition

Key points
  • In this opposition appeal, the opposition had been restricted to independent claim 13 as granted only. During the oral proceedings, the Board concludes that claim 13 is not novel. The proprietor then files a request wherein independent claim 13 is cancelled, the other claims are maintained. 
  • The Board applies G 9/91 and concludes that the remaining claims - which were not opposed - are "not subject of the opposition proceedings" and are therefore allowable without further examination.
T 2278/14 - link

Allowability of the claim request
4. The opposition was directed only against claim 13 of the patent (see notice of opposition, section V) and the grounds for opposition were also limited to claim 13 and its subject-matter (Rule 76(2)(c) EPC; see page 1 of these grounds). 
The Enlarged Board of Appeal in its decision G 9/91 (OJ EPO 1993, 408) remarked that "by limiting the extent to which the patent is opposed to only certain subject-matters, the opponent deliberately refrains from making use of his right under the EPC to oppose remaining subject-matters covered by the patent. Such subject-matters are therefore, strictly speaking, not subject to any "opposition" in the sense of Articles 101 and 102 EPC, nor are there any "proceedings" in the sense of Articles 114 and 115 EPC in existence concerning such non-opposed subject-matters. Consequently, the EPO has no competence to deal with them at all (see reasons, point 10). It is furthermore noted that, where an opposition is explicitly directed only to the subject-matter of an independent claim, subject-matter covered by claims dependent on that claim may also be examined as to patentability, in the case the independent claim falls in opposition or appeal proceedings, provided their validity is prima facie in doubt on the basis of already available information (see reasons, points 10 and 11).
5. Now that independent claim 13 and dependent claim 14 of the former main request, have been deleted, it follows that the main request and its subject-matter are allowable because they are not subject of the opposition proceedings.