31 Oct 2016

T 0485/11 - Identification code: technical

Key points

  • Claim 1 is directed to a method for data management in an analytical laboratory. The distinguishing feature at issue is that an identification code is placed on a container at the time of production or packaging of said container, and not thereafter. The opposition division took the view that the labelling of a sample container at the stage of production or packaging was merely an administrative measure devoid of any technical aspects and should thus not be taken into consideration in assessing inventive step. The Board however finds that this feature is "a technical feature solving the technical problem of avoiding label misplacement with respect to the kind of container to be used for a given type of analysis". The Board acknowledges inventive step.

EPO T 0485/11 - link


IX. Claim 1 of the main request reads as follows:
"A method for data management in an analytical laboratory,
comprising the steps of:
- providing a plurality of containers for the laboratory analysis of biological specimens, each container being associated with a unique identification
code, placed on the container at the time of the production or packaging thereof;
- by means of a central computer, associating a patient code with a patient to be subjected to analysis;
- for each container used for said patient, generating in a data processing system a combination of said patient code and said identification code of
the corresponding container;
- carrying out, by means of at least one analyzer, at least one analysis on the container or containers used for said patient, the analyzer entering the
results of said analysis, combined with the identification code of the container or containers, into the data processing system,
wherein said identification code contains additional data relating to the type of analysis for which said container is intended, and wherein the analyzer
receiving a container reads the identification code and checks that the type of analysis for which the container is intended corresponds to the analysis which
the analyzer is to carry out."

Reasons for the Decision
1. The appeal is admissible.
2. Main request - Article 56 EPC
2.1 It was common ground in the written and oral submissions of both the appellant and the respondent that E1 represents the closest prior art to the subject-matter of the granted claims. Both parties also agreed that, as stated in the decision under appeal, the subject-matter of claim 1 differs in substance from the disclosure of E1 in that:

28 Oct 2016

T 0899/11 - Background section as CPA

Key points

  • The Board takes as closest prior art (for a claim essentially for collaboration software) a system which is briefly described in the background section of US patent D1.
  • The Board: " Although the known system in the background section of D1 is described with a focus on one of its disad­van­tages, it is still the disclosure of a known system. As a matter of principle, this disclosure thus constitutes prior art for the present invention as well." 


T 0899/11 - link

Reasons for the Decision

Suitable starting points for the inventive-step assessment
4. The board considers that D1 provides two suitable starting points for the assessment of inventive step, the system summarized in the background section (esp. column 4, line 44 to column 5, line 17) and the solution proposed in D1 to overcome the deficiency of the known system (see column 6, line 3 et seq.). For brevity, these will be referred to below as the "background" and the "invention" of D1, respectively.

27 Oct 2016

T 2172/13 - Displaying suggestions inventive

Invention

  • The invention relates to a computer system for communicating HD data to a game console. The Board accepts inventive step based on the features of evaluating bandwidth, and in case of insufficient bandwidth, informing the user of bandwidth issues, displaying data throughput, and displaying suggestions for improving network throughput. The Board identifies as objective technical problem: how to improve reliability of high-definition transmissions within the system.
  • The Board does not expressly identify a technical effect, or how the features provide such effect, and does not discuss the "broken technical chain fallacy",i.e. a chain of effects from providing information to its use in a technical process is broken by the intervention of a user (T1670/07). 



T 2172/13 -  link


Summary of Facts and Submissions
V. The independent claims according to the appellant's main request read as follows: 
1. "A computer system for communicating high definition transmissions to a game console (120) comprising:
a remote computer-readable medium (206);
a tuner (202) to receive high definition content transmissions; and a game console (120) communicatively coupled, by a network, to the tuner (202), the game console (120) being configured to retrieve and execute program code (208) from the remote computer-readable medium (206), the program code (208) enabling the game console (120) to receive high definition content (402) streamed from the tuner (202) in real-time; and the program code (208) enabling the game console (120) to play high definition content received by the tuner (202),
wherein the program code (208), when executed, comprises:
performing a test to evaluate (504) the available bandwidth of the network coupling the game console (120) to the tuner (202) and, in response to the network bandwidth being insufficient to support the real-time streaming of high definition content:
informing (510) a user of possibility of network performance issues;

starting (512) continuous network throughput monitoring;
measuring (514) network throughput;
displaying (516) current network throughput at a network performance monitor user interface (600, 700);
displaying (518) one or more suggestions for improving network throughput;
 
and looping back (520) to the starting (512) continuous network monitoring until the user terminates the loop or a timeout occurs or an adequate bandwidth is achieved".
Reasons for the Decision


7. Inventive step, claim 1
7.1 The Board considers D1 to be the most relevant of the available prior art. Following on from the discussion of novelty, the identified differences of the system including a medium carrying [are] program code that, when executed on the game console of the system, evaluates bandwidth, and in the case of insufficiency thereof, inter alia informs the user of bandwidth issues, displays throughput, displays suggestions for improving network throughput. In the Board's opinion, the problem associated with this difference is to modify the computer system of D1 to improve reliability of high-definition transmissions within the system.
7.2 Nothing in D1 itself suggests the claimed solution, nor does the Board consider it would belong to the skilled person's general knowledge. Whether or not it might be obvious to modify the system of D1 to continuously monitor available bandwidth, the disclosure of D1 focuses on making the best use of shared bandwidth by allocating different amounts to different tasks, rather than extending the total available bandwidth (see paragraph bridging pages 28 and 29).
In this respect the Board does not consider it would be obvious for the skilled person to solve the above problem by modifying D1 to inform the user of a bandwidth issue, nor by introducing the technical features, involving technical display means, of displaying actual network throughput and suggestions for improving network throughput. This is because the thrust of D1, with its optimised allocation of shared bandwidth, is to mitigate any effects of a bandwidth issue, so that the user need never be aware of the issue, let alone be presented with suggestions for network throughput improvement on a display (cf. impugned decision page 8, third from last paragraph).
At best the objective problem might prompt the skilled person to further optimise the existing scheme of bandwidth allocation to make even better use of available network throughput, but not to arrive at program code informing the user of network throughput and empowering them to extend it as claimed.

7.3 As also explained above (see point 6.2), neither D2 nor D3 give any hint to the program code features. Therefore, the combination of the teachings of D1 and either of these documents (whether that combination is obvious or not) would not result in the program code features claimed.

26 Oct 2016

T 0497/11 - Inventive step and Art. 69 EPC

Key points
  • For the assessment of inventive step, there is according to the Board no reason to take the description into account for interpretation of the claims, given that the claims as such are clear.
  • The Board:  " All differences over the generic prior art identified above can be carried out by a human, e.g. a flight controller, without involving any further technical means. Thus, these identified differences may be regarded as mental acts. Therefore, the board concludes that claim 1 merely defines the automation of a mental act by known means, which is obvious for the person skilled in the art. Thus the subject-matter of claim 1 does not involve an inventive step in the sense of Article 56 EPC. [...] The appellants argued in the context of several of the features discussed above that a greater degree of complexity (e.g. larger number of aircraft, complicated goal function, longer time-scales) was implicit if the claim was interpreted in the light of the description in accordance with Article 69 EPC. However, that article concerns the determination of the scope of protection of the claims, such that there is no reason to take the description into account for interpretation, given that the claims as such are clear."
EPO T 0497/11 - link



IV. Claim 1 of the appellants' main request reads as follows:
"A method for an aviation system to temporally manage the flow of a plurality of aircraft with respect to a specified system resource, based upon specified data and operational goals pertaining to said aircraft and system resource, said method comprising the steps of:
- collecting and storing said specified data and operational goals,

25 Oct 2016

T 0437/14 - Referral G 1/16 - Undisclosed disclaimers

EPO Headnote


The following questions are referred to the Enlarged Board of Appeal for decision
(update 20.12.2017: see decision G1/16 here)
  
1. Is the standard referred to in G 2/10 for the allowability of disclosed disclaimers under Article 123(2) EPC, i.e. whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim after the introduction of the disclaimer as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed, also to be applied to claims containing undisclosed disclaimers?
  
2. If the answer to the first question is yes, is G 1/03 set aside as regards the exceptions relating to undisclosed disclaimers defined in its answer 2.1?
  
3. If the answer to the second question is no, i.e. if the exceptions relating to undisclosed disclaimers defined in answer 2.1 of G 1/03 apply in addition to the standard referred to in G 2/10, may this standard be modified in view of these exceptions?






EPO T 0437/14 - link (EPO T 437/14; EPO G 0001/16; EPO G1/16; undisclosed disclaimer)


Reasons for the Decision


7. Allowability of the disclaimers - applicability of G 1/03 and G 2/10



7.1 Claim 1 contains two disclaimers, namely
- a first disclaimer with the following wording:
"excluding the compounds having formula:
FORMULA/TABLE/GRAPHIC
wherein the ligand FORMULA/TABLE/GRAPHIC is an alpha-amino acid residue selected from glycine, L-alanine, L-valine,
D-leucine, L-proline, or L-phenylalanine,"
- and a second disclaimer with the following wording:
"and excluding the following compound:
FORMULA/TABLE/GRAPHIC"



7.2 It was undisputed that both disclaimers were undisclosed disclaimers.


7.3 In G 1/03 and G 2/03 (hereinafter, the present board will refer for simplicity to G 1/03 only) the Enlarged Board of Appeal considered undisclosed disclaimers to be allowable under Article 123(2) EPC:

J 0014/16 - Re-establishment

Key points

  • A request for re-establishment of rights for failure to pay the renewal fee (with additional fee) is refused. The mistake was that the amounts for the search fee and the renewal fee were the same, and only one amount was paid. 
  • The Board: " In more recent case law, the boards of appeal have held that time-limit monitoring systems cannot be regarded as "normally satisfactory" just because they have worked without problems in the past, and that if doubts exist all due care may not have been taken. Evidence that a monitoring system has operated efficiently for many years will support its "normally satisfactory" character, but can be outweighed by evidence that essential hallmarks of that character, such as independent cross-checks, are missing"



J 0014/16 -  link



Summary of Facts and Submissions
I. The appeal lies from the decision of the Examining Division dated 13 April 2016 rejecting the request dated 11 September 2013, received on 19 September 2013, for re-establishment of rights in respect of the time limit for paying the fourth renewal fee (plus additional fee), and finding that European patent application No. 09015402.2 was deemed withdrawn with effect from 2 July 2013.
VI. The appellant's arguments can be summarised as follows:
The appellant had a proper and reliable system of monitoring payments pertaining to patent applications and renewal fees. In particular the appellant had entrusted Mr. Lukaszyk, European Patent Attorney with the task of, inter alia, sending notices to the appellant about the upcoming renewal payments. Mr. Lukaszyk had informed the appellant by e-mail of 5 September 2012 about the need of payment of the search fee (555 EUR) and the examination fee (1244 EUR), which were paid by the appellant in due time. On 7 February 2013 the appellant had received an e-mail from Mr. Lukaszyk that the renewal fee for the underlying patent application had not been paid to the EPO attaching the EPO's communication of 4 February 2013 under Rule 51(2) EPC pointing out that the fourth renewal fee could be paid up until 30 June 2013 (the end of the six-month grace period) together with an additional fee. Unfortunately the amounts of the renewal fee and the search fee were identical (555 EUR). Therefore, Mr. Gegontek assumed that the payment of 555 EUR had already been done.

24 Oct 2016

T 2517/11 - Implicit feature and inventive step

Key point

  • A feature that is implicitly disclosed in the closest prior art document, can be considered as disclosed for the formulation of the objective technical problem and for the assessment of inventive step. The claimed invention relates to coding and decoding signals and the feature at issue was identifying some elements as having mirror symmetry. 




EPO Headnote
Le fait que l'existence d'une caractéristique technique "cachée" - à savoir une caractéristique implicitement présente dans un document de l'état de la technique dont l'existence ne saurait, cependant, être établie à la seule lecture du document considéré - d'un procédé connu de l'état de la technique ne puisse être établie qu'en ayant recours à une démonstration mathématique ne fait nullement obstacle à sa prise en compte en tant que caractéristique divulguée, la démonstration mathématique établissant le caractère accessible de la caractéristique "cachée". L'argument selon lequel il n'existe aucune raison objective de procéder à une telle démonstration n'affecte en rien ce constat (cf. points V et 5.2.1).

T 2517/11 -  link 


Exposé des faits et conclusions

II. La division d'examen a fondé son objection d'absence d'activité inventive sur le document:
D1: B. Edler, "Codierung von Audiosignalen mit Überlappender Transformation und adaptiven
Fensterfunktionen", pages 252-256, (XP 52987),

XII. La revendication 1 selon la requête unique s'énonce comme suit :
"1. Procédé de codage d'un signal numérique, par transformée avec recouvrement utilisant des fenêtres de pondération, dans lequel deux blocs d'échantillons du signal, consécutifs et de même taille (2M), sont pondérés respectivement par une première (ha1) et une deuxième fenêtre {ha2) d'analyse, et lesdites première et deuxième fenêtres comportant chacune un front montant et un front descendant, le front montant de la deuxième fenêtre (ha2) est différent du front descendant de la première fenêtre (ha1) retournée temporellement."

21 Oct 2016

T 0194/15 - Transfer of opposition

Key points 
  • The OD had (implicitly) accepted a transfer of opposition of one of the opponents (via a business asset transfer). The Board reviews the assignment agreement and finds that the transfer of the business assets had occurred before the Notice of opposition was filed, so that the transfer of the opposition is ineffective. Hence, the first instance decision was taken with the wrong party as Opponent 4, there was a substantial procedural violation, and the case is remitted.
  • Irrespective of the validity of the transfer, the assignee was mentioned as opponent in the first instance decision and was therefore a "party", so its appeal is admissible. 



T 0194/15 - link


Summary of Facts and Submissions
I. The present decision is only concerned with the procedural status of appellant-opponent 4 (now the sole appellant, following opponent 2's withdrawal of its appeal) and the admissibility of its appeal.
Opponents 1 and 3 withdrew their oppositions during the first instance proceedings and are no longer parties to the proceedings, while opponents 2 and 5 are parties as of right.
II. The facts relevant for the present decision may be summarised as follows:
III. A notice of opposition was filed on 30 August 2012 by Abbott Laboratories, which was then "opponent 4".
IV. During the opposition proceedings, by a letter dated 3 January 2013, opponent 4 filed a request for the transfer of the opposition from Abbott Laboratories to AbbVie Inc., stating inter alia that "On 1 August 2012 all of the business assets and liabilities pertaining to human therapeutic use of anti-TNF antibodies were moved from Abbott to AbbVie". In support of the request, opponent 4 filed
- a copy of a "Contribution, Assignment and Assumption Agreement",
- a declaration by John M. Leonard, M.D., Senior Vice President, Pharmaceuticals, Research and Development at Abbott Laboratories, and
- an "Authorization for the Transfer".
V. AbbVie Inc. was listed for the first time as opponent 4 in release 2014/47 of the European Patent Register.
VI. The oral proceedings before the opposition division were held with AbbVie Inc. as opponent 4 (see page 1 of the minutes, EPO Form 2309.1 12.08CSX).
VII. During appeal proceedings, after the board had accepted the appellant's request for acceleration of the proceedings, the respondent submitted for the first time in a letter dated 26 January 2016 the objection that the appellant's appeal was inadmissible because the transfer of the status of opponent 4 from Abbott Laboratories ("Abbott") to AbbVie Inc. ("AbbVie") was not effective. It submitted that the evidence filed with the letter of 3 January 2013 was insufficient to demonstrate that the business assets to which the opposition related had been transferred together with the opposition from Abbott to AbbVie.
VIII. With its communication dated 8 February 2016 the board informed the parties of its provisional view on the issue of the transfer of opponent status. It also indicated that this issue would be discussed at the beginning of the oral proceedings.
IX. With letter of 24 February 2016, in support of its contention that AbbVie was not entitled to pursue the opposition and the appeal proceedings, the respondent filed new submissions and document:
D115: pages 1/52 to 8/52 of "Form 10-Q" filed by AbbVie Inc. on 11 June 2015 before the "United States Securities and Exchange commission", being the "Quarterly Report Pursuant to section 13 or 15(d) of the Securities Exchange Act of 1934" and drawn up "for the quarterly period ended September 30, 2015".
X. By letter of 4 March 2016 the appellant replied and, to prove the validity of the transfer, filed the following documents:
D116: Excerpts from a "Separation and Distribution Agreement" of 28 November 2012; table of contents and definitions;
D117: Excerpts from an "Employee Matters Agreement" of 31 December 2012; table of contents and definitions;
D118: Excerpts from "Form 10-K" for "the fiscal year ended December 31, 2012" filed by Abbott Laboratories with the United States Securities and Exchange Commission;
D119: Declaration by Johanna M. Corbin, Vice-President Intellectual Property & Strategy at AbbVie Inc., dated 4 March 2016;
D120: Patient's instructions for HUMIRA**(®)single-use prefilled syringe, Abbott Laboratories (September 2012);
D121: Marketing brochure "Living with Spondylitis", Abbott Laboratories (August 2012);
D122: Marketing brochure for plaque psoriasis, Abbott Laboratories (December 2012);
D123: FDA communication to Abbott Laboratories re Supplemental HUMIRA**(®)approval, 28 September 2012;
D124: Extended HUMIRA**(®)label, as approved on 28 September 2012;
D125: Declaration of Kris Hoult, Director Mergers & Acquisitions in the Corporate Human Resources Department at AbbVie Inc., dated 4 March 2016;
D126: Declaration of David S. Fishman, Vice President Licensing and Acquisitions, Legal at AbbVie Inc., dated 4 March 2016.
XI. Oral proceedings before the board took place on 9 March 2016. Opponents 2 and 5 were absent, as notified previously in writing. The debate at the oral proceedings was restricted to the admissibility of the appeal and the transfer of opponent 4's status as an opponent. At the end of the oral proceedings the chairwoman announced the board's decision.
XII. The respondent's arguments on those two issues, in writing and at the oral proceedings, and as far as they are relevant to the present decision, may be summarised as follows:
Although filed late, the objection to the status of opponent 4 and thus to the admissibility of the appeal was admissible, because issues of admissibility may be raised at any stage of the proceedings.
As stated in decision G 4/88, "the opposition must constitute an inseparable part of the assets and insofar as those assets are transferable or assignable [...] the opposition which is part of them must be regarded as transferable or assignable in accordance with the principle that an accessory thing when annexed to a principal thing becomes part of the principal thing".
The request of 3 January 2013 was based on the transfer of all assets of the business to which the opposition related. That all assets were transferred had however not been demonstrated by the evidence filed with the request. It was not possible to know from the "Contribution, Assignment and Assumption Agreement" of 1 August 2012 (i) which assets were assigned and (ii) to whom.
As to (i), the passages in the Agreement regarding the definition of the assets assigned, the assets excluded from the transfer and those for which the transfer was delayed, had been redacted. Humira**(®) was such an important product that it would not have been treated as a footnote.
As to (ii), the Agreement referred to a "Separation and Distribution Agreement" between Abbott and its subsidiaries and AbbVie and its subsidiaries.
AbbVie had been incorporated on 12 April 2012 as a subsidiary of Abbott. The opposition could therefore have been filed by AbbVie.
On 1 January 2013, Abbott had merely sold shares in its subsidiary AbbVie. Such an transaction was not conclusive proof of the validity of a transfer (see decision G 2/04).
XIII. The appellant's arguments on the admissibility and opponent status issues, in writing and at the oral proceedings, and as far as they are relevant to the present decision, may be summarised as follows:
The respondent's request that the appeal be dismissed as inadmissible was clearly at odds with established case law such as decisions T 1178/04 and T 1982/09.
The respondent's attack was unfounded. It first contended that appellant-opponent 4 had failed to establish the transfer of all relevant assets relating to the business in the interest of which the opposition had been filed. Then it claimed that all the assets had been transferred on 1 August 2012 and thus before the opposition was filed on 30 August 2012.
Recital 3 of the "Contribution, Assignment and Assumption Agreement" announced a "Separation and Distribution Agreement" which would "more fully define the allocation of Assets and Liabilities between Abbott and its Subsidiaries on the one hand and AbbVie and its Subsidiaries on the other hand".
The separation and transfer of ownership of the pharmaceutical business from Abbott to AbbVie, including the Humira**(®)business and assets, was a complex multiple-step process which had continued after the opposition was filed.
The Humira**(®)business, in whose interest the opposition had been filed, had not been transferred to AbbVie on 1 August 2012, the date of the "Contribution, Assignment and Assumption Agreement". In fact, the opposition had been filed by Abbott in the interest of its own ongoing Humira**(®)business, which as such did not have legal personality. This segment of business had been transferred to and taken over by AbbVie only with effect from 1 January 2013. The request for transfer of the opponent status had been filed with the corresponding evidence on 3 January 2013, once that business had been transferred.
That Abbott continued the Humira**(®)business after 1 August 2012 was shown by documents D116 to D126. One important milestone establishing the continuation of Humira**(®)business by Abbott was the transfer of the employment contracts from Abbott to AbbVie on 31 December 2012.
In case the board did not find the transfer valid, a power of attorney was included in which Abbott approved, confirmed and, to the extent legally possible, authorised with retroactive effect all the earlier procedural actions, requests, submissions and observations made in the name of AbbVie in the present proceedings.
XIV. Neither of the two parties as of right made any submission with regard to the issues under consideration.
XV. The appellant requested that the decision under appeal be set aside and that the patent be revoked.
The respondent requested that the appeal be declared inadmissible because the transfer of opponent status was invalid.
Should the transfer be held valid, the respondent requested that the appeal be dismissed (i.e. that the patent be maintained in the version maintained by the opposition division), or alternatively on the basis of auxiliary request I, filed with the letter of 9 February 2016, or of auxiliary request II filed with the letter of 24 August 2015.
Reasons for the Decision
1. The duly summoned parties as of right (opponents 2 and 5) did not attend the oral proceedings, as communicated to the board in writing beforehand. In accordance with Rule 115(2) EPC and Article 15(3) RPBA the oral proceedings were held in their absence.
Admissibility of the appeal
2. The respondent submits that the transfer of the opponent status to AbbVie was invalid and that therefore AbbVie was not entitled to file the present appeal, which should therefore be held inadmissible.
2.1 According to Article 107 EPC "Any party to proceedings adversely affected by a decision may appeal". Thus, the question arises whether, on the assumption that the transfer of the opposition from Abbott to AbbVie was invalid, AbbVie was nevertheless at the relevant time a "party to [the opposition] proceedings". The board agrees with the board in T 261/03 (see reasons, point 1.5) that the decision as to whether and when an alleged opponent gains party status falls within the exclusive competence of the organ, i.e. opposition division or board of appeal, before which the proceedings are pending.
2.2 In the present case, there is no indication in the public part of the file pertaining to the opposition proceedings, and in particular in the decision under appeal, that the opposition division took a decision on the transfer of opponent status. The board notes that release 2013/36 of the European Patent Register lists Abbott as opponent 4, whereas release 2014/47 lists AbbVie. However, the entry of a change of an opponent's name in the European Patent Register does not establish a right, it merely records it (see also T 799/97, reasons, point 2.4).
2.3 Nevertheless, on the front page of the minutes of the oral proceedings before the opposition division opponent 4 is referred to as "AbbVie Inc." Moreover, at the end of the oral proceedings the opposition division announced its decision. These circumstances indicate to the board that the opposition division accepted and thus implicitly decided that AbbVie was the new opponent 4. Thus, AbbVie was a "party" to the opposition proceedings within the meaning of Article 107 EPC. It was therefore entitled to file an appeal against the decision of the opposition division (see for example also T 1178/04, reasons, points 1 to 5 and T 1982/09, reasons, points 1.5 and 1.6). Since there is no dispute that the other requirements of Article 107 and 108 EPC have been satisfied in this case, AbbVie's appeal is admissible and therefore the respondent's request that it be held inadmissible is refused.
The status of opponent 4 during the opposition proceedings
3. The objection as regards the validity of the status of opponent was raised late in the appeal proceedings (see section VII above). However, as a matter of principle, the European Patent Office has a duty to examine, at all stages of the proceedings, the position of a party who claims to be a transferee from the original opponent (see e.g. T 1178/04, reasons, point 34). The board has thus examined the validity of the transfer of the opposition to AbbVie Inc.
4. In the course of the opposition proceedings, opponent 4, Abbott Laboratories ("Abbott"), requested that its opponent status be transferred to AbbVie Inc. ("AbbVie"). In support of the request, a declaration from the Senior Vice President, Pharmaceuticals, Research and Development at Abbott ("Declaration") and a redacted copy of an agreement between Abbott and AbbVie ("Agreement") were filed (see section IV above).
5. From the evidence on file it appears that the parties were neither heard on this request by the opposition division nor notified of its decision or of a change in the European Patent Register. And while the decision under appeal is silent as regards the transfer of opponent status, the board has concluded (see point 2.3 above) that the opposition division agreed to it.
6. The EPC does not contain any provision governing such transfers, apart from an implicit acknowledgement in Rule 84(2) EPC that the opposition is transmitted to the opponent's heirs. It is also well-established case law that opponent status is not freely transferable (see G 2/04, OJ EPO 2005, 549, Order, point I(a)). An opposition may, however, be transferred or assigned to a third party as part of the opponent's business assets, together with the assets in the interests of which the opposition was filed (see G 4/88, OJ EPO 1989, 480, Order and Case Law of the Boards of Appeal, 7th edition 2013, section IV.C.2.2.3).
7. As to the point in time when a transfer of opponent status becomes procedurally effective, the boards of appeal have, in such situations, applied mutatis mutandis the principle laid down in Rules 22(3) and 85 EPC, i.e. that transfers of European patents take effect for the European Patent Office's purposes only when and to the extent that the necessary documentary evidence has been produced. To apply the same requirements to patent proprietors and opponents would appear justified given the principle of equal treatment of parties to proceedings (see also e.g. T 6/05, reasons, point 1.6.1).
8. As a consequence, a transfer of opposition can only be acknowledged as from the date when adequate evidence is filed, i.e. ex nunc (see e.g. T 956/03, reasons, point 4; T 1137/97, reasons, point 4; T 1421/05 reasons, point 3.3). Until such evidence is provided, the original party to the proceedings continues to have the relevant rights and obligations (see T 184/11, reasons, point 2.6).
9. Therefore, in the present case, the following issues need to be decided: (i) which business assets were transferred from Abbott, (ii) to whom, and (iii) when.
The documentary evidence available to answer these questions at the time when the opposition division had to decide on the transfer are the Agreement and the Declaration (see section IV above).
10. As to (i), the Declaration sets out in its introduction its purpose as follows: "In support of transfer of the above-mentioned opposition from Abbott Laboratories ("Abbott") to AbbVie Inc. ("AbbVie"), I, John M. Leonard, M.D., hereby declare and state as follows: (...)". Six numbered paragraphs then follow.
10.1 The first two paragraphs state Dr Leonard's position and responsibilities at Abbott, i.e. that he is the Senior Vice President, Pharmaceuticals, Research and Development, and responsible inter alia for the management of global proprietary pharmaceutical discovery and development efforts. In the board's view, this establishes that Dr Leonard was qualified to make the statements he was making.
10.2 Paragraphs 3 to 5 of the Declaration relate to the actual transfer and are set out below in full:
"3. Enclosed with this Declaration is a copy of a Contribution, Assignment and Assumption Agreement between Abbott and AbbVie which provides evidence of transfer of all proprietary pharmaceutical business assets from Abbott to AbbVie.4. Specifically, the business assets included in the transfer encompass all of the business assets pertaining to human therapeutic use of anti-TNF antibodies. More specifically, the business assets encompass the commercial product HUMIRA, which is used in the treatment of autoimmune disease.5. Thus, the opposition, along with all of the business assets and liabilities to which the opposition relates, have been transferred from Abbott to AbbVie."
10.3 Thus, paragraph 4 of the Declaration defines the transferred assets as "all of the business assets pertaining to human therapeutic use of anti-TNF antibodies". As the opposed patent relates to the use of anti-TNF antibodies in the treatment of autoimmune disease, the board considers that this statement in the Declaration establishes that all the assets relating to the business in the interest of which the opposition had been filed were transferred.
10.4 As to (ii) of point 9 above, the Declaration states that the Agreement provides "evidence of transfer of all proprietary pharmaceutical business assets from Abbott to AbbVie" (see point 10.2 above) and the first paragraph of the Agreement states that it is "by and between" Abbott and AbbVie. The reference in the Agreement (page 1, 4th paragraph) to yet another agreement, i.e. the "Separation and Distribution Agreement" by which further steps in the separation process are to be defined, namely "the allocation of Assets and Liabilities between Abbott and its Subsidiaries on the one hand and AbbVie and its Subsidiaries on the other hand", has no bearing on the fact that the Agreement itself provides for a transfer of the assets from Abbott to AbbVie. The board concludes that the assets were transferred from Abbott to AbbVie, and to AbbVie only.
11. The respondent submitted that it was not possible to establish from the Agreement which assets had been transferred or to whom, as it had been heavily redacted.
11.1 It is true that the entire section setting out the assets of Abbott to be transferred to AbbVie (see Section 1.01 on pages 1 and 2 of the Agreement) is redacted in the Agreement, as are the sections on pages 3 and 4 setting out which assets are not being transferred and the sections on pages 6 and 7 setting out those whose transfer is being delayed.
11.2 It is conceivable that an unredacted version of the Agreement might have been a more direct piece of evidence than the one submitted. But the evidence has to be taken as it stands (see also T 273/02, reasons, point 2.6; T 1178/04, reasons, point 40).
Anyway, in the board's judgement, the fact that the Agreement was redacted has no bearing on the issue to be decided because, as found above, the Agreement with the Declaration as complementary evidence defines which assets were transferred - namely all of them - and to whom (see points 10.3 and 10.4 above). The Agreement serves to prove that a transfer of assets from Abbott to AbbVie has taken place. That such transfer has taken place has not been contested by the respondent.
12. In view of the above, the board is satisfied that the Agreement supported by the Declaration, i.e. the evidence which was on file when the opposition division had to decide the issue, prove that all the assets relating to the business in the interest of which the opposition had been filed had been transferred to AbbVie as sole transferee.
13. As to (iii) of point 9 above, i.e. the date of the transfer of the relevant business assets, the Agreement states that "This Contribution, Assignment and Assumption Agreement (this "Agreement"), dated as of August 1, 2012 (the Effective Date") is ...".
1 August 2012 is in fact the only date derivable from the available evidence. It is moreover in agreement with what was stated in the request to which the Declaration and the Agreement were annexed, namely that "On 1 August 2012, all of the business assets and liabilities pertaining to human therapeutic use of anti-TNF antibodies were moved from Abbott to AbbVie." These were the relevant business assets in the present case, see point 10.3 above.
14. The appellant [= Opponent  4] submitted that while some assets had been transferred on 1 August 2012 to AbbVie, the relevant business assets, namely the assets relating to the anti-TNF antibody HUMIRA**(®) business, had been transferred to AbbVie only after the opposition had been filed on 30 August 2012.
14.1 However, although the Agreement provides for the delayed transfer of some assets (see point 11.1 above), it does not indicate what these assets are, as the relevant parts have been blackened out.
15. The board concludes that on the basis of the evidence provided with the request, the date of the transfer of the relevant business assets was 1 August 2012. It follows, that, when the opposition was filed by Abbott on 30 August 2012, the business assets in the interest of which the opposition was filed and to which the opposition was the accessory in the sense of G 4/88 (see reasons, point 6) had already been transferred to AbbVie. Accordingly, the opposition filed by Abbott could no longer be transferred to AbbVie.
16. As a consequence, the opposition proceedings were continued with the wrong party as opponent 4.
The status of opponent 4 during the appeal proceedings
17. Based on the Agreement and the new evidence, documents D116 to D126, the appellant's new argument during the appeal proceedings was that "even though certain individual assets had been transferred to AbbVie Inc. on August 1, 2012, the actual HUMIRA**(®) business ("Geschäftsbetrieb") [note by the board: the business assets in the interest of which the opposition was filed] was not transferred and continued essentially unchanged at Abbott Laboratories until the end of 2012. The opposition was thus filed in the interest of Abbott Laboratories own HUMIRA**(®) business. Abbott Laboratories proprietary pharmaceutical business segment, including the HUMIRA**(®) business, was transferred to and taken over by AbbVie Inc. with effect from January 1, 2013, when the separation from Abbott Laboratories was accomplished and the distribution occurred" (emphasis in the original). It was further submitted that the separation between the two companies had been a multistep process.
17.1 The respondent argued that the relevant assets had been transferred on 1 August 2012 and submitted document D115 "which conveniently sets out the background to the incorporation of AbbVie Inc. and the disposal of the common stock to its shareholders by which it became an independent company".
18. Thus, it has to be determined whether the date of transfer of those business assets in the interest of which the opposition was filed, which was found on the basis of the Agreement, the Declaration and the request to be 1 August 2012 (see points 13 to 15 above), was not the correct date after all. In the board's view, to answer this question documents D116 to D126 have to be evaluated in the light of document D115.
19. Document D115 recounts on page 7 the history of the separation between Abbott and AbbVie. Thus, it appears that AbbVie became a legal entity on 10 April 2012, when it was incorporated in Delaware (page 7, second paragraph). Document D115 also confirms that the separation process foreseen in the Agreement needed time and (ibid.) that "in connection with the separation, AbbVie and Abbott entered into transition services agreements covering certain corporate support and back office services that AbbVie historically received from Abbott. Such services included information technology, accounts payable, payroll, receivables collection, treasury, and other financial functions, as well as order entry, warehousing, engineering support, quality assurance support, and other administrative services." That the separation process continued even after the date of 1 January 2013 is also evident from document D115 (ibid.) which states that "these agreements facilitated the separation by allowing AbbVie to operate independently prior to establishing stand-alone back office functions across its organization. The majority of these transition service agreements expired without extension at December 31, 2014; however, some of these services continue to be provided to AbbVie on a temporary basis."
19.1 Document D115 thus discloses that, while AbbVie was incorporated in Delaware on 10 April 2012, Abbott conducted business activities on behalf of AbbVie at least until 31 December 2014.
20. As to documents D116 to D126:
Document D116 consists of the "Table of Contents"- and the "Definitions"-part of a "Separation and Distribution Agreement by and between Abbott Laboratories and AbbVie Inc. dated as of November 28, 2012". Although the appellant states that document D116 "provides a detailed "roadmap" for the separation including a multitude of further intercompany transactions", nothing can in fact be learned from the table of contents and definitions part of this document about the separation or its roadmap.
Document D117 consists of the "Table of Contents"- and "Definitions"-part of the "Employee Matters Agreement by and between Abbott Laboratories and AbbVie Inc. dated as of December 31, 2012". Again, nothing of relevance can be learned from document D117. In particular, it does not disclose, as the appellant would have it, that "on January 1, 2013 they [note by the board: the employees working at Abbott in the proprietary pharmaceutical business segment] became employees of AbbVie Inc. so that just from that date AbbVie Inc. could take over and continue Abbott Laboratories HUMIRA**(®)business."
Document D118 are excerpts from "Form 10-K" for the fiscal year ended December 31, 2012 filed by Abbott with the "United States Securities and Exchange Commission". It discloses on page 27, that "on January 1, 2013, Abbott distributed all of the outstanding shares of AbbVie to Abbott's shareholders" and that "As a result of the distribution, AbbVie is now an independent company".
Document D119 is a declaration by Johanna M. Corbin. She declares inter alia (see points 9 and 10) that the "Abbott Laboratories HUMIRA**(®) Team continued these HUMIRA**(®)-related activities throughout the entirety of 2012" while "on and after January 1, 2013 the HUMIRA**(®) Team continued their HUMIRA**(®)-related work at AbbVie."
Documents D120 to D122 are marketing leaflets for HUMIRA**(®) issued in the name of Abbott Laboratories and dated September 2012, August 2012 and December 2012 respectively.
Document D123 is a document from the FDA proposing a new indication for HUMIRA**(®). The addressee is Abbott and the document refers inter alia to "your amendments" of "August 01, 2012, August 15, 2012, August 22, 2012, September 17, 2012, September 18, 2012, and September 26, 2012".
Document D124 highlights some prescription information for HUMIRA**(®). It is in the name of Abbott Laboratories and bears the revision date "09/2012".
Document D125, a declaration by Kris Hoult, states (see point 4) that "at least 80 people from the senior staff of Abbott Laboratories with substantial responsibility for the HUMIRA**(®) business throughout 2012 and in years before that, transferred to AbbVie Inc. with effect of January 1**(st), 2013."
Document D126, a declaration by David S.Fishman, summarises the processes leading to the establishment of AbbVie Inc.. He declares inter alia (see point 4) that "a first contract was executed between Abbott Laboratories and AbbVie Inc. on August 1st, 2012 ("Contribution , Assignment and Assumption Agreement"). Therewith certain assets were transferred from Abbott Laboratories to AbbVie Inc."
20.1 In the board's view, documents D116 to D126 fall into two categories. Documents D116 and D117 appear to be of no evidential value for the facts to be proven, while documents D118 to D126 merely seem to illustrate what document D115 already discloses (see point 19 above), namely that the separation process was indeed a complex one and that Abbott performed activities on behalf of AbbVie during the separation process.
20.2 But these documents, taken as a whole, do not prove that the relevant business assets were transferred to AbbVie on a date other than 1 August 2012, as established on the basis of the Agreement, Declaration and the request (see points 13 to 15 above).
21. Hence, the transfer of opponent status from Abbott to AbbVie cannot be acknowledged in the appeal proceedings either.
Remittal
22. In circumstances like the present ones, the board in case T 1178/04 held (see reasons, points 44 to 45) that requests made by the wrong party during the proceedings before the opposition division were inadmissible, and saw no other means to correct this procedural deficiency than to order remittal of the case to the opposition division so that the proceedings could be conducted with the right party.
23. The board in case T 1982/09, in the same circumstances, considered in accordance with Article 11 RPBA whether there were any "special reasons" speaking against remittal. In the end it decided against remittal (see reasons, point 2.2 ), the "special reasons" being that "the appellant's representative explicitly stated that he had been and was still authorized to represent the original opponent (...), none of the parties argued that the fact that the opposition proceedings were continued with the wrong party had changed the outcome of the proceedings in substance (...), any suggestion that the true opponent might not have appealed the decision or might have conducted the appeal proceedings differently would amount to mere speculation (...), and all the parties agreed that a remittal and the ensuing repetition of the first instance proceedings would cause a considerable and undesirable delay (...)".
24. In the present case, the board, seeking to come to a final decision in these proceedings without delay, has therefore, like the board in T 1982/09, considered whether there were any "special reasons" against remittal.
24.1 However the board, whilst well aware of the negative consequences that remittal entails, does not see any "special reasons" justifying non-remittal in the present case. Also the new evidence submitted during the appeal proceedings has not established that the relevant business assets were still with Abbott when the opposition was filed, i.e. that the opposition could have been transferred to AbbVie as part of the opponent's business assets together with the assets in the interests of which the opposition was filed.
25. As a consequence, it has decided to remit the case to the opposition division so that the proceedings can be conducted with the right party.
It is noted that the opposition division will be bound only by the ratio decidendi of the board's decision concerning the validity of the transfer of opponent status, but not by its previous decision.
Order
For these reasons it is decided that:
1. The appeal is held admissible.
2. The decision under appeal is set aside.
3. The case is remitted to the opposition division with the order to continue the opposition proceedings with Abbott Laboratories as opponent 4.

20 Oct 2016

T 0610/11 - Retraction of withdrawal appeal

Key points
  • The appellant in this examination appeal tries to retract the withdrawal of the appeal. The professional representative had correctly carried out the instructions from a manager with the client to withdraw the appeal. The instructions were argued to be made in error by the manager. However, this does not support correction under Rule 139 EPC.
  • " [In] the view of the Board, it can be derived from general procedural principles as defined by the boards of appeal that, in cases where a professional representative acts before the EPO, under Rule 139 EPC only errors or mistakes can be corrected which occurred in the sphere of said representative." 

T 0610/11 - link

Summary of Facts and Submissions
I. The European patent application No 06117047.8 was refused by the decision of the European Patent Office (EPO) dated 8 October 2010. []
V. With a letter dated 21 April 2016, the appellant's representative withdrew the appeal by stating "We herewith withdraw our Appeal of the Decision to refuse the above application. We will not attend the oral proceedings of 8 July 2016." []
VII. With a letter dated 2 June 2016, the appellant's representative submitted that the withdrawal of the appeal was due to an error and requested correction of that error. In particular, the appellant's representative stated "I have become aware that our instruction to withdraw this appeal were in error. I request correction of that error under Rule 139 EPC, or otherwise, so that this application and appeal are re-instated."

19 Oct 2016

T 1377/15 - No appeal against Rule 71(3)

Key points
  • This appeal was against a Communication pursuant to Rule 71(3) EPC based on the Auxiliary Request. The Communication includes the reasons for refusal of the Main Request. The appeal is inadmissible because the Communication is not a decision to refuse the application. To obtain a refusal, the application should have declared that he maintains the Main Request in response to the Rule 71(3) Communication.
  • For some reason, the Board gives its substantive analysis under the" Summary of Facts and Submissions" part.
  • After the appeal, a Notice of loss of rights under Rule 112 EPC was issued for failure to reply to the Rule 71(3) Communication. 


T 1377/15 - link

Exposé des faits et conclusions

IV. []
4. Il convient, d'abord, de noter que, conformément à l'article 106(1) CBE, seules sont susceptibles de recours les « décisions » des divisions d'examen. Selon l'article 106(2) CBE, une décision qui ne met pas fin à une procédure à l'égard d'une des parties ne peut faire l'objet d'un recours qu'avec la décision finale, à moins que ladite décision ne prévoie un recours indépendant.

Afin de pouvoir juger si le présent recours est dirigé ou non contre une décision au sens de l'article 106 CBE, il y a lieu, d'abord, d'observer que c'est le contenu et non pas la forme d'un document qui détermine s'il s'agit d'une décision ou d'une notification (cf. J 8/81, JO OEB 1982, 10).
La « décision rejetant la requête principale » sur le formulaire 2906

18 Oct 2016

T 2129/14 - Exception to reformatio in peius

Key points

  • The Board allows the patentee-respondent to delete three features compared to the claims as allowed by the OD, as exception to the prohibition of reformatio in peius under G1/99. The Board analyses the deleting of each feature (i.e. requirement) separately.


T 2129/14 - link

Reasons for the Decision

5.5 Reformatio in peius
The appellant argued that the amendments made in claim 1 of the second auxiliary request with respect to the subject-matter of claim 1 of the request found allowable by the Opposition Division (present main request) did not comply with the principle of prohibition of reformatio in peius.
The Enlarged Board of Appeal dealt with this principle and its application to a case like the present one, in which the opponent was the sole appellant, in decision G 1/99. In the Order, the Enlarged Board concluded that:
"in principle, an amended claim, which would put the opponent and sole appellant in a worse situation than if it had not appealed, must be rejected."
Compared with claim 1 of the request found allowable by the Opposition Division, in claim 1 of the second auxiliary request the features that "the hydrophobic filter (20) is attached to the canister (18), the odor vapor filter (23) is attached to the hydrophobic filter (20), and the further hydrophobic filter (22) is attached to the odor vapor filter (23)" have been deleted. Instead, the two hydrophobic filters are claimed to be "an integral part of the canister". As a result of these amendments the second auxiliary request confers protection on systems in which, in particular, the odour vapour filter is not attached to the hydrophobic filters. Hence, the protection is extended with respect to that of the request on the basis of which the patent would have been maintained if the opponent and sole appellant had not appealed. Under such circumstances the opponent and sole appellant is in a worse situation than if it had not appealed. Hence, in principle, the conclusion of the Enlarged Board would apply and the patent would have to be revoked.
However, the Enlarged Board went on to state that:
"an exception to this principle may be made in order to meet an objection put forward by the opponent/appellant or the Board during the appeal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment held allowable by the Opposition Division in its interlocutory decision."
The present case falls under these circumstances, since the deleted features objected to by the appellant during the appeal proceedings had been previously introduced by way of amendment during the opposition proceedings and were held allowable by the Opposition Division in its interlocutory decision.
Lastly, the Enlarged Board laid down the conditions under which the exception may be made:
"in order to overcome the deficiency, the patent proprietor/respondent may be allowed to file requests as follows:
- in the first place, for an amendment introducing one or more originally disclosed features which limit the scope of the patent as maintained;
- if such a limitation is not possible, for an amendment introducing one or more originally disclosed features which extend the scope of the patent as maintained, but within the limits of Article 123(3) EPC;
- finally, if such amendments are not possible, for deletion of the inadmissible amendment, but within the limits of Article 123(3) EPC."
As the appellant pointed out, these three conditions are sequential. In other words, a request satisfying merely the third condition should not be allowed if it was possible to satisfy the first or second one.
In the present case, the inadmissible amendment held allowable by the Opposition Division in its interlocutory decision and then deleted in claim 1 of the second auxiliary request concerned four elements of the claimed system and some relationships between them. These four elements are the two hydrophobic filters, the odour vapour filter and the canister. More particularly, it was required that:
- the first hydrophobic filter be attached to the canister;
- the odour vapour filter be attached to the first hydrophobic filter;
- the second hydrophobic filter be attached to the odour vapour filter; and, consequently,
- the odour vapour filter be indirectly attached to the canister and the second hydrophobic filter be indirectly attached to the first hydrophobic filter and the canister.
Further, the Board notes that in claim 1 of the second auxiliary request features have been added which also involve some relationships between those four elements of the system, i.e. that the two hydrophobic filters "are an integral part of said canister" and that the odour vapour filter is "interposed between said first hydrophobic filter [...] and said second hydrophobic filter".
In the Board's opinion, each of the requirements lost by deleting the inadmissible amendment has to be considered together with the added features in the light of the conditions established in G 1/99.
As regards the lost requirement that the first hydrophobic filter be attached to the canister, the addition that the first hydrophobic filter is an integral part of the canister is more specific than the two components being merely attached to each other. Hence, as far as this requirement is concerned, the amendments fall within the first condition for an allowable exception under G 1/99. As a consequence, there is no need to keep in the claim the broader feature that the first hydrophobic filter is attached to the canister.
The addition that the second hydrophobic filter is an integral part of the canister implies an attachment which is more specific than an indirect attachment between the canister and the second hydrophobic filter. Hence, as regards the lost requirement that the canister and the second hydrophobic filter be indirectly attached to each other, the amendments also fall within the first condition for an allowable exception under G 1/99.
Similarly, the additions that the first and second hydrophobic filters are an integral part of the canister imply an attachment between those two filters which is more specific than an indirect attachment. Hence, as regards the lost requirement that the second hydrophobic filter be indirectly attached to the first hydrophobic filter, the amendments also fall within the first condition for an allowable exception under G 1/99.
As regards the lost requirements that the odour vapour filter be attached to the first and second hydrophobic filters and, indirectly, to the canister, the Board considers that in particular the addition of the feature that the odour vapour filter is "interposed between said first hydrophobic filter [...] and said second hydrophobic filter" does not limit the scope of the patent as maintained. The added feature does not imply any form of attachment. Hence, as far as these requirements are concerned, the amendments do not fall within the first condition for an allowable exception under G 1/99. However, in the Board's view, satisfying the first condition for these requirements is impossible in this case. In the original application no form of attachment of the odour vapour filter to the other elements concerned was disclosed either in general or more specific terms. The addition of the feature that the odour vapour filter is "interposed between said first hydrophobic filter [...] and said second hydrophobic filter" constitutes an introduction of an originally disclosed feature, which however extends the scope of the patent as maintained, but within the limits of Article 123(3) EPC, as far as the relationships between the odour vapour filter and the hydrophobic filters are concerned. Hence, to a certain extent, the amendments are in the direction of the second condition for an allowable exception under G 1/99 as regards the lost requirements that the odour vapour filter be attached to the first and second hydrophobic filters.
For the lost requirement of the indirect attachment of the odour vapour filter to the canister, the amendment in claim 1 of the second auxiliary request constitutes a mere deletion, falling within the third condition for an allowable exception under G 1/99. However, for this requirement, neither the first nor the second conditions can be satisfied. The Board is unable to find any part of the original application relating to any form of direct or indirect attachment of the odour vapour filter to the canister. Hence, as regards the lost requirements that the odour vapour filter be attached to the first and second hydrophobic filters and, indirectly, to the canister, the present amendments fall within the second and third conditions for an allowable exception under G 1/99, respectively allowing the deletion of the former inadmissible amendments, and are therefore allowable.
The appellant's argument that an amendment referring directly to figure 1 would have extended by a smaller amount the protection conferred by the claim is not convincing. Due to its schematic nature, figure 1 as originally filed discloses neither more than the relative position of the odour vapour filter with respect to the hydrophobic filters as defined in claim 1 of the second auxiliary request, nor any form of indirect attachment of the odour vapour filter to the canister. Moreover, a reference to the figure such as "a system according to the arrangement of figure 1" would unduly restrict the claim in other aspects not concerned with the deleted inadmissible amendment and, also due to the schematic nature of the figure, would render the scope of the claim unclear.
For these reasons the Board concludes that the amendments made in claim 1 of the second auxiliary request are allowable in view of the exception to the principle of reformatio in peius as established in decision G 1/99.

17 Oct 2016

T 1647/15 - Evidence inspection; partiality

Key points
  • " When relevant features of the prior art trailers as asserted by the Opponents are questionable and remain contested, a request from the Opponents to secure the evidence, e.g. by hearing witnesses proposed by the Opponents or by inspection of the trailer in accordance with Article 117 (1) (f), cannot be rejected without justification."
  • " However, to the eyes of an objective observer, taking into account the strong language of the chairman's utterance which clearly went beyond the form of a mere reprimand and on account of the escalation following the incident and its ensuing emotional impact, the Board accepts that, subsequently to his outburst ["Shut your mouth"], the ability of the chairman to hear Opponent III with an objective judicial mind could be perceived as being affected. " 
  • " In particular" is taken as indicating an optional feature.
  • Filin date in 2005, grant in 2009, first appeal decision T1907/11 in 2014 (remittal), second OD decision in July 2015, notice of second appeal in August 2015, decision taken in June 2016. 
T 1647/15 - link


Reasons for the Decision
1. The appeals are admissible.
2. Substantial procedural violations: Suspected partiality against at least one member of the Opposition Division, and right to be heard in connection with the prior uses
2.1 All the Appellants-Opponents requested that the contested decision be set aside for partiality of at least one of the members of the Opposition Division and that the case be remitted for rehearing before an Opposition Division in a different composition. In its statement setting out its grounds of appeal and in accordance with its Legal Questions 1 and 2, Appellant-Opponent III has argued that Article 24(3) EPC was automatically applicable to opposition divisions. The Appellants-Opponents have in particular argued that the suspected members should not have participated to the decision on their own partiality. Instead, an Opposition Division in a different composition should have taken a decision on the objection of partiality.