29 Sep 2017

T 1934/16 - EPO proofs delivery

Key points

  • In this case, the patentee did not file the translations of the claims in time during opposition, and did not pay the printing fee. The patentee argued that he had not received the invitation setting a time limit to pay the fee, and file the translated claims, with surcharge (Rule 82(3) EPC). Hence, under Rule 126(2) EPC,  it is incumbent on the EPO to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee.
  • " Following the enquiry in the present case, the letter from 1 March 2016 was found to have been delivered on 4 March 2016 at 09:18 to the law firm of the appellant's representative. The letter with the registered number (barcode) RD18229975NL contains a reference to the patent's application number 071143283 and can therefore be identified." 
  • The patentee did not respond to this, and the request for re-establishment was withdrawn. Hence, the OD was correct in revoking the patent.
  • In this case, the Board notes that the opposition decision transferred the appeal to the Board " without rectifying its decision". The patentee had requested interlocutory revision. However, as a comment, it is not so clear if interlocutory revision would have been available at all, because the opponent was treated as respondent by the Board. Indeed, in Form 2701, box 1 was crossed: appeal with more than one party, so no interlocutory revision. 

EPO T 1934/16 - link

Reasons for the Decision
1. The appeal is not allowable.
The appealed decision issued by the opposition division was correct. The provisions for the revocation of the patent due to failure to validly comply with the requirements under Rule 82(2) and (3) EPC were satisfied. The opposition division did not commit a procedural violation.
1.1 When an interlocutory decision relating to the maintenance of a patent in amended form has become final, the EPO sends an invitation to pay the printing fee and to file translations of the claims within a period of three months pursuant to Rule 82(2) EPC.
This invitation was dispatched in the present case on 13 October 2015. The appellant did not contest the receipt of this communication. Nevertheless no response from the appellant was received before expiry of the time limit. This has also not been contested.
1.2 Rule 82(3) EPC stipulates that, if the acts required under Rule 82(2) EPC are not performed in due time, they may still be performed within two months of a communication concerning the failure to observe the time limit, provided that a surcharge is paid within this period. Otherwise, the patent shall be revoked.

28 Sep 2017

T 0060/13 - Oral proceedings not requested

Key points:

  • The Board finds that proprietor did not request oral proceedings, and revokes the patent since no auxiliary requests were on file. The Board finds the statement that "if an oral hearing is to take place we wish to attend" does not constitute such a request. In the same way, the statement regarding the language used in "possible oral proceedings" and the request to use Swedish in oral proceedings, after having first stated that "we find it unnecessary to attend an oral proceeding" are considered to concern the modalities of oral proceedings, should these be appointed, and are therefore not seen to constitute a clear and unconditional request for oral proceedings.

EPO T 0060/13 -  link

4. For the above reasons the Board holds that contrary to the finding of the decision under appeal at least one ground for opposition prejudices the maintenance of the European patent.
4.1 The respondent has not filed alternative requests nor requested a hearing before the Board issues an adverse decision. In this regard, the Board does not consider the respondent's statement in their response dated 2 August 2013 that "if an oral hearing is to take place we wish to attend" to constitute such a request. That statement merely states an intention to attend if oral proceedings prove necessary, i.e. if the Board is unlikely to accede to the main request of the appellant, who had for that eventuality requested oral proceedings. The indication in their later response (dated 30 March 2017) to the Board's communication of 3 February 2017 regarding the language used in "possible oral proceedings" and the request to use Swedish in oral proceedings, after having first stated that "we find it unnecessary to attend an oral proceeding" concerns the modalities of oral proceedings, should these be appointed, but is not seen to constitute a clear and unconditional request for oral proceedings.
4.2 The Board is further satisfied that by its communication the respondent was made aware of the central points underlying this decision and has also had sufficient opportunity to take a position thereon. It is thus satisfied that the requirements of Article 113(2) EPC have been met.
4.3 The Board thus revokes the patent pursuant to Article 101(2) EPC.
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The patent is revoked.

27 Sep 2017

T 1139/13 - Animal diet as second medical use

Key points

  • In this case, claim 1 was directed to a use of a food composition n the manufacture of a companion-animal diet composition for increasing blood antioxidant levels in a feline.
  • The Board accepts this as second medical use claim.
  • " If claim 1 had been directed to a method of using a diet to increase blood antioxidant levels in a feline, its subject-matter would have been excluded from patentability under Article 53(c) EPC, since it covers therapeutic treatments, such as improvements in conditions like diabetes as well as cardiovascular and gastrointestinal diseases, []. [If] in such a situation the claim is re-drafted in the Swiss-type format, it is to be considered a medical-use claim", citing T 1020/03.

EPO T 1139/13 -  link

XI. The only independent claim of the new main request reads as follows:
"1. Use of a food composition comprising a sulfur-containing antioxidant which is a mixture of cysteine and methionine in a total amount of from 1.0 wt% to 2.2 wt%, wherein the methionine is at a concentration of from 0.8 wt.% to 1.5 wt.% and the cysteine is in an amount of from 0.2 wt% to 0.7 wt% in the manufacture of a companion-animal diet composition for increasing blood antioxidant levels in a feline."

Reasons for the Decision
3.1.3 Claim 1 is drafted in the Swiss-type claim format, i.e. use of an active ingredient for the manufacture of a medicament for a therapeutic treatment. The food composition of claim 1 with the specific methionine/cysteine concentrations corresponds to the active ingredient, the diet represents the medicament and the increase in the blood antioxidant level in a feline corresponds to a therapeutic treatment.

26 Sep 2017

T 1104/14 - Deciding on withdrawn requests

Key points

  • Before the OD, the patentee had replaced the previous requests with a new request. The OD did not admit these request, in fact did not consider them, and decided on the patentability of the earlier requests.
  • This is, quite simply, a substantial procedural violation of Article 113(3) EPC, according to the Board. 
  • The remark of the OD, that the newly filed request were not admitted, without any debate, also provide a violation of the right to be heard. 

EPO T 1104/14 - link

1. Die Beschwerde ist zulässig.
2. Die Beschwerde ist begründet.
2.1 Dispositionsbefugnis
2.1.1 Artikel 113 (2) EPÜ schreibt vor, dass sich das Europäische Patentamt bei Entscheidungen über europäische Patentanmeldungen und Patente an die vom Anmelder oder Patentinhaber vorgelegte oder gebilligte Fassung zu halten hat. Es ist nämlich ein Grundprinzip des Europäischen Patentrechts, dass allein der Anmelder bzw. Patentinhaber die Verantwortung für die Formulierung der Patentansprüche und die damit verbundene Antragstellung hat. Ausgehend von der in Artikel 113 (2) EPÜ zum Ausdruck kommenden Dispositionsbefugnis des Patentinhabers, hat der Patentinhaber das Recht, selbst zu entscheiden, welche Anträge er in der mündlichen Verhandlung stellt. Hierzu benötigt er keine Erlaubnis der Einspruchsabteilung. Erst nachdem der Patentinhaber seine Anträge gestellt hat, werden diese Gegenstand des Verfahrens und bilden damit die Grundlage der zu treffenden Entscheidung.

25 Sep 2017

T 2036/12 - The CEO wishes to speak

Key points

  • The OD had not allowed the CEO of the patent proprietor, who was present during the oral proceedings in addition to the professional representative, to speak. The Board notes that a CEO of a company (with an office in Germany) "is entitled to be a signatory" (in translation) and therefore can at any time speak. Therefore, not allowing the CEO to speak was a substantial procedural violation, even though the OD had allowed the professional representative to speak. 

EPO T 2036/12 -  link

1. Die Beschwerde ist zulässig.
2. Rechtliches Gehör (Artikel 113(1) EPÜ).
2.1 Mit der Beschwerdebegründung hatte die Beschwerdeführerin gerügt, dass die Einspruchsabteilung ihr das rechtliche Gehör gemäß Artikel 113(1) EPÜ versagt habe, da Herrn Schneemelcher, der Geschäftsführer der Patentinhaberin sei, in der mündlichen Verhandlung vor der Einspruchsabteilung nicht erlaubt worden war, zur Frage der erfinderischen Tätigkeit vorzutragen. Die Einspruchsabteilung habe in unzutreffender Weise in diesem Zusammenhang auf die Entscheidung G 4/95 der Großen Beschwerdekammer verwiesen.

22 Sep 2017

T 2598/12 - Unsubstantiated request not admitted

EPO Headnote
There is no time bar to the requirement following from Article 12(2) and (4) RPBA that a request filed during appeal proceedings must be properly substantiated (cf. point 1.8 of the reasons). Consequently, this requirement applies, mutatis mutandis, to new requests filed in response to a communication of the board.

Key points

  • In this examination appeal, the applicant had filed a new claim 1 with the written submission. The new main request was "not accompanied with arguments explaining how the amendments overcome the objections leading to the decision to refuse the application, i.e. why the subject-matter of claim 1 involves an inventive step with regard to documents D3 and D4." 
  • The Board does  not admit the main request (also) for this reason. Also requests filed with the written submissions in advance of oral proceedings before the Board, should be substantiated, just as requests filed with the  Statement of grounds (or response) under Article 12(4) RPBA.
  • The applicant had also argued that the request should be admitted, because of the drop in quality of the first instance decision. " In respect of the alleged drop in quality of the first instance decisions, the board notes that the appellant has not alleged that this applies in the present case, and indeed, in the present case, the board finds no reason to criticise the quality of the examination, noting that the board in its preliminary opinion essentially agreed with the conclusions of the examining division. " 

EPO T 2598/12 - link

Reasons for the Decision
1. Main request - admissibility
1.1 Claim 1 of the main request, which was presented at the oral proceedings for the first time, is substantially amended as compared to claim 1 of either the main or first auxiliary request submitted with the statement of grounds of appeal. It is essentially based on claim 1 of the second auxiliary request as filed with the letter dated 10 July 2017 in response to the board's communication and includes features which had not been included in any claims submitted during in the examination procedure.
1.2 Amendments to a party's case after filing the statement of grounds of appeal are governed by Article 13 RPBA.
In accordance with Article 13(1) RPBA, any amendment to a party's case after it has filed its grounds of appeal may be admitted and considered at the board's discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. One of the criteria used by the boards when exercising their discretion is whether or not the new claims are prima facie allowable.
1.3 In addition to Article 13 RPBA, the board draws attention to the provisions of Articles 12(2) and (4) RPBA.
In accordance with Article 12(2) RPBA, the statement of grounds of appeal shall contain a party's complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts evidence and arguments relied on.

21 Sep 2017

J 0016/16 - Re-establishment twice

Key points

  • In this case, the applicant (represented by a two attorney firm) did not pay the third renewal fee and requested re-establishment. The request was refused (as being late filed, due to fax transmission problems). The applicant filed a Notice of appeal, but not timely a  Statement of grounds. Re-establishment also for that was likely possible, but was not requested.
  • " The Board readily concedes that the representative's medical condition as apparent from the medical certificate filed during oral proceedings could have been a valid reason for allowing a request for re-establishment of rights into the period for filing the grounds of appeal. Yet no such request was made, and no corresponding fee was paid." 
EPO J 0016/16 - link

Summary of Facts and Submissions
I. By decision of the examining division posted 18 February 2016, the appellant's request for re-establishment of rights into the period for payment of the renewal fee for the 3**(rd) year for the application no. 12860972.4 was refused.
II. Against this decision, an appeal was filed on 23 April 2016, and the appeal fee was paid on the same day. In the notice of appeal, oral proceedings were requested. The notice of appeal also mentioned that

20 Sep 2017

T 1401/14 - Comparative test results

Key points

  • The Boar comments on comparative tests results filed by opponent which differed in key features from the examples of the closest prior art D1. "The board agrees with the [proprietor] that the tests carried out by the [opponents] cannot provide any indication as to whether the claimed coating compositions exhibit better or worse properties than the coating compositions of D1. Indeed, the coating composition used in D25 has not been prepared in accordance with example 13 of D1 because, as admitted by [opponent] 01 itself, several components have been replaced for legal, health and/or availability reasons. " 

EPO T 1401/14 - link

1.4.6 According to established jurisprudence, if comparative tests are chosen to demonstrate inventive step on the basis of an improved effect, the nature of the comparison with the closest state of the art must be such that the alleged advantage or effect is convincingly shown to have its origin in the distinguishing feature of the invention compared with the closest state of the art (see Case Law of the Boards of Appeal of the EPO, 8th Edition 2016, Chapter I.D.10.9).
1.4.7 The board agrees with the [proprietor] that the tests carried out by the [opponents] cannot provide any indication as to whether the claimed coating compositions exhibit better or worse properties than the coating compositions of D1.

19 Sep 2017

T 0084/16 - Inadmissible appeal against patent specification

Key points

  • In this appeal against the grant of a patent, the B1 specification contained printing errors, compared to the Druckexemplar. For some reason, the patentee does not request a reprint of the patent specification, but files an appeal. The Board finds the appeal to be inadmissible.
  • "No legal effects are provided by the EPC with respect to the patent specification" "Accordingly, from the above the board considers that the decision under appeal was correct and the appellant was not adversely affected by it." 
  • " The board considers that the appropriate remedy in the present case, i.e. where the patent specification diverges from the text on which the grant decision is based, is outlined or in the Guidelines [] namely that the text of the patent specification be brought into conformity with the content of the grant decision. The Guidelines indicate that such mistakes in the patent specification may be corrected at any time." 

EPO T 084/16 -  link

Summary of Facts and Submissions
I. The patent proprietor (hereinafter "appellant") filed an appeal against the examining division's decision dated 2 July 2015 to grant, pursuant to Article 97(1) EPC, European patent No. 2 416 799 based on European patent application No. 10 762 578.2. The application had originally been filed as an international patent application and was published as WO 2010/118435 having the title "PAR-1 activation by Metalloproteinase-1 (MMP-1)". The appeal was based on the submission that the decision to grant the patent contained errors.

18 Sep 2017

T 1201/14 - Proof of tacit transfer of priority

Key points

  • The Board has to decide on validity of transfer a priority right. There is no assignment document signed before the filing of the European application. 
  • The particular issue is that priority application was a US provisional, filed in the name of the inventors, and the PCT application was filed not by the inventors or their employer, but by a legal entity (domiciled in the Virgin Islands). The Board finds that the priority right was transferred from the inventors to their employer, by operation of Taiwanese Law, but not from the employer company to the legal entity. 
  • The Board leaves open the choice of applicable law, because the transfer is not valid under any of the four national laws asserted by proprietor. As a comment, the Board does not indicate whether or not it agrees with T 205/14, that the applicable law is that the law that governs the legal relationship between the transferor and the transferee of the right of priority.
  • The retroactive assignment agreement signed after the filing date was not allowed under the Paris Convention, according to the Board, even if such retroactive assignment were allowable under US law.
  • For German law, the evidence of a transfer by company policy was considered to be insufficient. The Board applies as standard of proof “beyond reasonable doubt” (rather than "on the balance of probabilities" ) because practically all the evidence lies within the knowledge and power of proprietor and the opponents are not in a position to present counter-evidence. As a comment, since German allows for a tacit assignment, this meant that proof beyond reasonable doubt of a tacit (or implicit) assignment was required by the Board. 
  • Further for German law, the mere fact that a patent attorney receives instructions from a company to file patent applications, does not automatically demonstrate that the right to claim priority was already validly transferred. As a comment, this seems to be connected with the Board first finding that " that the "right of priority" derived from a given first application is in itself a substantive property right, which is to be distinguished from the property right to the first application". 
  • Therefore, " even if the above common filing policy, including the transfer of the right of priority, was indeed applicable to [the Patent in suit], it is not clear whether the transfer from [the employer] to the [legal entity] of the right to apply for a patent based on those applications did in fact include the transfer of the right to claim priority from them []. Given that the right to apply for a patent based on an application and the right to claim priority from that application are independent and thus separable rights [], the mere transfer of a pending application from one party to another does not necessarily mean that the associated right of priority is transferred between those parties too." 
  • As a comment, this reasoning of the Board is difficult to follow for me. Generally, the " right to apply for a patent" is based on the invention, not on a (filed) application as the Board states. If I invent something and I am only interested in the Dutch market, I can sell the right to (apply for) patents abroad to another firm, e.g. a German firm. If I have already filed a (priority founding) Dutch patent application, and if I agree with the German firm that they can file the German patent application with priority (because I am not interested in the German market), the "separability" of the priority right simply means that I can keep the Dutch patent application (and let it proceed to grant), even though the priority right (for Germany) is transferred to the German firm. I.e., the German firm does not need to buy the Dutch patent application in order to validly file the German patent application with priority. Obviously, in such a case we also need to transfer the "right to apply for a patent" (from me as inventor) to the German firm, because the German firm is clearly not a non-entitled applicant. Furthermore, clearly the "right to apply for a patent" and the priority right are different things (e.g. if I have only made the invention, not filed a Dutch patent application, I can still sell that " right to apply for a patent" to the German firm and they can (as entitled applicant) validly file a German patent application without priority). Nevertheless, if I authorise the German firm to file a German patent application for the invention, with priority of the Dutch application, then clearly both rights are intended to be transferred (by both parties). Arguably there is then an implicit agreement to transfer both rights and (presumably) a valid tacit (or implicit) transfer of both rights, i.e. both the priority right (for Germany) and the right apply for a patent (cf. article 61 EPC). The above analysis intentionally leaves out the EPC and PCT, because for analysis of the Paris Convention it is often easier to think of the patent world about 1930, i.e. only national patents.
  • As a further comment, patentee argued that German law would be applicable simply because Germany is one of the EPC states. There was no other link with Germany whatsoever. The OD's quite strongly indicated that German law was not applicable. The Board keeps this open. So, the present decision gives an argument to now always submit applicability of the law of any of the EPC States, including German law.
  • The argument based on Taiwanese law was not accepted into the procedure, as being late filed, and as having the same insufficient evidence as the German law argument. 
  • The fourth argument was based again on US law, based on a direct assignment from the inventors to the applicant / legal entity. This argument failed if only because the first transfer from the inventors (applicants of US provisional) to their employer (i.e. a different company) by operation of Taiwanese employment law, was deemed valid.

EPO T 1201/14 -  link (date 09.02.2017, online on 05.09.2017)

Reasons for the Decision
[] 3. Validity of priority claim (Article 87(1) EPC 1973) - appellant's entitlement as successor in title to claim priority
The outcome of this appeal depends in the first place on the question whether A4, considered by the opposition division to be novelty-destroying, belongs to the prior art within the meaning of Article 54(2) EPC 1973. Application P, from which priority was claimed, was filed on 28 July 2006 and thus before the publication date of A4 (i.e. August 2006). The opposition division correctly assumed that application P was filed by the inventor S.S. Jiang and that the non-identical appellant was only in a position to enjoy the right of priority from application P if it was the successor in title of ASUSTeK in respect of P at the filing date of European patent application D2. The board concurs with the opposition division and the appellant that the first transfer of the right of priority from inventor S.S. Jiang to ASUSTeK was validly performed (see appealed decision, Reasons 5.10 to 5.13). This conclusion is undisputed between the parties.
[As a comment, the OD's decision is very clearly written and deals in depth with the matter. The OD's considered that ASUSTeK was the applicant of the U.S. provisional application by operation of Taiwanese law, as employer of the inventor. ASUSTeK was (alternatively) considered to be successor in title due to a written assignment signed by the inventor the day before filing the U.S. provisional application. The OD's strongly rejected German law as possible applicable law based on a detailed analysis.]

Hence, in the present case, the formal validity of the opposed patent's priority claim hinges on the question whether the second transfer of the right of priority derived from application P from the then applicant ASUSTeK to the appellant was validly performed. That is, whether the appellant validly enjoys the right of priority arising from application P under Article 87(1) EPC 1973.

15 Sep 2017

T 0793/13 - Broader dependent claims and scope

Key points

  • In this opposition appeal, claim 1 as granted specified " less than 0.4 and more than 0.1" for a water activity parameter, claim 2 as granted specified "from 0.1 to 0.3". In opposition, the patent proprietor wanted amended claim 1 to specify the range of granted claim 2. The question is whether the amendment is allowable under Article 123(3) EPC, in view of the value of 0.1.
  • The Board finds that because the wording of the claims is contradicting, the skilled person would consult the description. The description indicated that the technical effect was also obtained for the value of 0.1. Hence, the amendment did not involve an extension of the scope of protection.

EPO T 0793/13 -  link

2. Erweiterung des Schutzbereichs (Artikel 123(3) EPÜ)
2.1 Im unabhängigen Anspruch 1 des Streitpatents ist angegeben, dass die Wasseraktivität der beanspruchten pharmazeutischen Zubereitung auf Werte "unter 0,4 und über 0,1" eingestellt ist.
2.2 Anspruch 2 des Streitpatents ist auf eine pharmazeutische Zubereitung "nach Anspruch 1" gerichtet, deren Wasseraktivität auf Werte "von 0,1 bis 0,3" eingestellt ist.
2.3 Vorliegend ist die Frage zu klären, ob Anspruch 1 von Hilfsantrag 1 mit der Angabe, dass die Wasseraktivität der Zubereitung auf Werte "von 0,1 bis 0,3" eingestellt ist, den Schutzumfang des Streitpatents erweitern würde.

14 Sep 2017

T 0557b/13 - After G 1/15 - Partial priority

Key points

  • This is the Board's decision in the case wherein questions were referred to the Enlarged Board, leading to G 1/15. The Board now finds that the claim (of the divisional application in suit) is entitled to partial priority for the embodiments disclosed in the priority application. Hence, the fact that the published parent application discloses the same embodiments, is not prejudicial to novelty.

EPO T 0557/13 -  link

Reasons for the Decision
1. The only novelty objections raised by the Opponent are based on the parent application D1. More particularly, the Opponent had argued that some specific examples of D1 disclosed uses falling within the ambit of Claim 1 at issue (notice of opposition, page 4, three first paragraphs).
2. According to G 1/15, entitlement to partial priority may not be refused for Claim 1 at issue to the extent that alternative subject-matter encompassed has been disclosed for the first time, directly, or at least implicitly, and unambiguously, and in an enabling manner, in the priority document (here D16).

13 Sep 2017

T 0195/12 - New requests in appeal

Key points

  • In this opposition appeal, the Board turns to what "could have been filed earlier"  means, for requests filed for the first time with the Statement of grounds and to be admitted (or not) under Article 12(4) RPBA, and discusses some of the important earlier decisions (and distinguishes the case over them).
  • In the cases underlying decisions T 23/10 and T 301/11, the patentee had to deal with an objection of added subject-matter during oral proceedings before the opposition division. The objection, however, was directed to a dependent claim, so that a way of overcoming it without affecting the independent claims, namely by deleting the dependent claim, was straightforward and did not require much further consideration. For this reason, withholding such an amended claim request in the proceedings before the opposition division precluded the patentee from having such a request subsequently considered by the board" 
  •  "In the case underlying decision T 1165/10 (see reasons 1.2), the patentee was informed by the opposition division with its summons to oral proceedings that the requests on file lacked novelty or added subject-matter. The patentee, however, neither reacted in writing nor attended oral proceedings. " 

EPO T 0195/12 -  link

Reasons for the Decision

[] 2. Admission of the main request (i.e. auxiliary request 1 filed with the statement of grounds of appeal) and of auxiliary request 2 - Article 12(4) RPBA
2.1 Under Article 12(4) RPBA, the board has the power to hold inadmissible facts, evidence or requests that could have been presented in the opposition proceedings.
2.2 The claim requests under consideration were filed by the appellant with the statement of grounds of appeal and in the board's view they constitute a proper reaction to the opposition division's decision, which considered the subject-matter of the granted independent claims to lack novelty, following the conclusion that the feature "cardio-selective" was not limiting.
[] 2.3 The respondent argued against the admission of these requests on the basis that, in accordance with decisions T 23/10, T 872/09, T 1165/10 and T 301/11, they could and should have been filed during the opposition proceedings. As to this argument, the board notes that the circumstances that led to those decisions differ substantially from those of the present case, and that their conclusions cannot be extended to the appeal at issue.

12 Sep 2017

T 0556/15 - The meaning of "grounds" for a decision

Key points

  • In this examination appeal, the Board finds a substantial procedural violation, for violation of the right to be heard. The ED had rejected the claims for lacking basis under Article 123(2) EPC, and had objected to the claims under Article 123(2) EPC in two earlier communications. However, the refusal decision was in fact based on new Article 123(2) EPC issues, which had not been raised in the two earlier communications. The ED had stated in its decision that the decision could been taken, because the applicant was given numerous opportunities to file amended claims complying with Article 123(2) EPC. 
  • The Board explains that "grounds" in Article 113(1) EPC (and on which the party must have had an opportunity to comments) means not simply the legal ground, in the sense of Article 123(2) EPC in general, but to the essential legal reasons that justify the refusal, as already hold in T951/92. 

EPO T 0556/15 - link

Motifs de la décision
1. Vice substantiel de procédure
1.1 Conformément à l'article 113(1) CBE, les décisions de l'Office européen des brevets ne peuvent être fondées que sur des motifs ou des éléments de preuve sur lesquels les parties concernées ont eu l'occasion de présenter leurs observations. Selon une jurisprudence constante, le terme "motifs" doit être interprété comme se référant au raisonnement essentiel, à la fois légal et factuel, sur lequel la décision est fondée (voir, par exemple, T 951/92, JO 1996, 53, point 3 v) des motifs). En cas de refus de la demande, il permet au demandeur, avant qu'une décision ne soit rendue, de commenter le motif essentiel du refus.
1.2 La décision attaquée repose entièrement sur l'absence de conformité avec l'article 123(2) CBE.

11 Sep 2017

T 1674/16 - Taken by surprise by the ED

Key points

  • In this examination appeal, the Board finds a substantial procedural violation. In the summons for oral proceedings before the ED, claim 8 was objected to for lack of inventive step. In a response filed 10 months before the oral proceedings. The oral proceedings were maintained,  the applicant did not attend them. The application was refused for lack of novelty over an (already cited) document.
  • The Board does not approve of this. " In the more than 10 months that elapsed between the timely receipt of the amended claims and the date planned for the oral proceedings, the Examining Division's only reaction to those claims was a brief communication informing the appellant that the date fixed for oral proceedings remained unchanged. No further objections were raised, even after the appellant had said it would not be attending the oral proceedings. Under these circumstances the appellant could not have reasonably expected that a new objection of lack of novelty against the then pending claim 1 would be raised, either during oral proceedings held in its absence or, for the first time, in the written decision. Rather, this new objection caught it completely by surprise and deprived it of any opportunity to comment on the ground for the refusal of the application, in contravention of Article 113(1) EPC. This constitutes a substantial procedural violation."
  • The Board also doubts whether oral proceedings actually took place. "The Board also notes that, [] there is nothing in the file to indicate whether these oral proceedings really took place. In particular, there are neither minutes according to Rule 124(1) EPC nor is there any reference to those oral proceedings in the impugned decision. This amounts to a further procedural violation, as it prejudices the necessary transparency of examination proceedings before the EPO." 
 EPO T 1674/16 -  link

Reasons for the Decision
1. The appeal is admissible.
2. As the appellant argued, the subject-matter of claim 1 of the claims labelled "Main Request", which corresponds to claim 1 of the request on which the impugned decision was based, comprises the features of claims 1 and 8 pending when the Examining Division issued the summons to oral proceedings.
3. Before issuing the impugned decision, the Examining Division had raised only an objection of lack of inventive step against that claim 8, under point 4 of the communication accompanying the summons, which reads:
"4. As regards the additional features of claim 8, they are considered conventional in the context of surgical forceps, as exemplified by Dl (US2007/173814), fig.1A, § [0063] or D2 (US2007/213708), fig.1A and §[0053] thereof. A modification of the D5 apparatus so as to employ a single movable handle is obvious for the one skilled in the art and will be carried out according to requirements and preferences. Claim 8 thus lacks an inventive step in view of D5 and Dl or D5 and D2 and, therefore is not patentable under Art.52(1) EPC."

8 Sep 2017

T 1538/12 - Boilerplate is no basis

Key point

  • The proprietor submitted that the final paragraph of the application provided support for the combination of features as claimed. The paragraph included"other variations and modifications of the exemplary embo­di­ments described above may be made". The Board does not accept this. 
  • The general state­ments at the end of the description are furthermore open ended and attempt to burden the skilled reader with having to work out which combinations of features from the detailed embodiments might be claimed toge­ther, while the applicant is supposedly dispensed from having to present his invention in terms more general than mere detailed description of parti­cular embodi­ments." 

EPO T 1538/12 - link
1.1 [] The combination of features "a front wall (161)" and the above projecting features of claim 1 as granted (main request) thus constitutes an intermediate generalisa­tion [] 
General statements at the end of the description (e.g. paragraph [0128], application as published: "other variations and modifications of the exemplary embo­di­ments described above may be made" or "other embodi­ments will be apparent to those skilled in the art") do not constitute, and thus cannot replace, a direct and unambiguous disclosure of the particular genera­lisa­tion included in claim 1 as granted. The general state­ments at the end of the description are furthermore open ended and attempt to burden the skilled reader with having to work out which combinations of features from the detailed embodiments might be claimed toge­ther, while the applicant is supposedly dispensed from having to present his invention in terms more general than mere detailed description of parti­cular embodi­ments.
1.2 In consequence, the subject-matter of claim 1 as gran­ted (main request) comprises added subject-matter con­tra­ry to Article 100(c) EPC 1973.

7 Sep 2017

T 1817/14 - The purpose of Article 84

Key point

  • This examination appeal concerns a claim 1 for a " A method for analyzing of a patent's [] over at least one document[]", i.e. software for (semi) automating patent examination. The inventor (and effectively sole applicant) appears to be a retired German professor of informatics. Although not relevant for the decision, the application claims priority of 31 US provisionals. 
  • The Board finds a substantial procedural violation because the reasons of the Examining Division for not admitting the 2nd auxiliary request are only contained in the minutes, not in the written decision. The Board however does not remit the case, and admits that request, also because it finds the claim to lack inventive step.
  • The Board gives, obiter, some general remarks on the relation between Artilce 69 and 84 EPC.
    " By virtue of Article 84 EPC, an examining division can and shall examine the clarity of the claims before it. A clarity objection obliges the applicant to consider amending the claims in the light of the patent specification. That is, even if it is possible to interpret a claim in the light of the patent specification, Article 84 EPC may oblige the applicant to make that interpretation explicit in the claim language. When a claim has been clarified, it becomes easier and more predictable to determine its scope in examination (e.g. when assessing inventive step) or its extent of protection in post-grant procedures (according to Article 69 EPC). In the board's view, this is a main purpose of Article 84 EPC." 
  • The claim was rejected for lack of inventive step, essentially because " Following T 49/99, the board considers this procedure of information modelling to be an intellectual activity (effectively a method for performing mental acts, Article 52(2)(c) EPC) which does not, per se, contribute to the technical character of an invention). For this conclusion it is immaterial that the present application does not even relate to the modelling (let alone simulation) of a physical system but to the modelling of what a given set of documents discloses and how they relate to each other." 

Reasons for the Decision
The alleged procedural violation, Article 11 RPBA
1. During the oral proceedings before the examining division, a set of claims according to a second auxiliary request was filed but not admitted (see the minutes, points 74, 80 and 90). However, the decision under appeal does not mention the existence of a second auxiliary request, let alone give reasons why it was not admitted.

6 Sep 2017

T 1477/15 - Clear vs concise

Key points

  • This is the third appeal in this opposition, after T0468/09 and T0801/13. The decision contains numerous interesting aspects.
  • The Board gives a useful general remark about Article 84 : " Clarity and conciseness requirements can conflict to some extent, because where clarity would demand additional explanations, conciseness requires that the claims be as short as possible. The Board considers that it is not desirable to unnecessarily overload a claim in pursuit of an unattainable absolute clarity of wording." 
  • The Board found the claims of Aux Req 3 to be allowable. The opponents objected to the adaption of the description, in particular that further the description should be further adapted to the claims. The Board does not agree, the description (of the patent as granted) needs to be adapted only to the amendments of the claims made during opposition. " The grant of a patent marks a cut-off point (T 1149/97, OJ EPO 2000, 259) defining the rights of third parties and the protection enjoyed by the patent proprietor. []The case law has therefore justifiably limited the amendments possible during opposition or opposition appeal proceedings to those rendered necessary as a result of such proceedings, in particular due to amendments made to the claims. This implies in particular that possible "mistakes", inconsistencies or amendments "forgotten" during the grant proceedings and present in the granted patent are not to be corrected unless they result from opposition and/or opposition appeal proceedings." 
  • During the oral proceedings, the proprietor had withdrawn Aux Reqs 1 and 2. The opponents objected, and requested a written decision regarding these requests. The Board does  not agree. " The Board fails to see any basis in the EPC for not allowing the patent proprietor to withdraw its auxiliary requests 1 and 2." " In other words, if a patent proprietor withdraws or no longer agrees to a text (two auxiliary requests, in this case), this principle prevents the Board of appeal from deciding on these issues." 

EPO T 1477/15 - link

11. New auxiliary request 3 - clarity
[] The Board notes that Article 84 EPC requires that the claims be clear and concise and supported by the description. Clarity and conciseness requirements can conflict to some extent, because where clarity would demand additional explanations, conciseness requires that the claims be as short as possible. The Board considers that it is not desirable to unnecessarily overload a claim in pursuit of an unattainable absolute clarity of wording. It is therefore in line with established jurisprudence, according to which the reference reader for clarity purposes should be the skilled person who has read the patent as a whole with a mind willing to understand rather than desirous to misunderstand (T 0190/99 (point 2.2.5.); T 0012/11 (point 4 of the reasons); T 1192/02 (point 2 of the reasons)).

5 Sep 2017

T 1028/14 - Spam filter is technical

Key points

  • In this examination appeal, claim 1 is directed to a method of filtering (email) messages for spam. The Examining Division had refused the claim for lack of inventive step, disregarding most features of the claims as being non-technical because they would merely relate to "a scheme for processing data". The Board finds the ED's analysis flawed. The Board considers the filtering of spam messages to be a technical problem, such that the related method steps are technical. 
  • The Board finds that the method steps" are indeed "part of the functional computer system" and do not merely relate to a "scheme for processing data" (which is in any event not mentioned in the list of non-inventions in Article 52(2)(a) to (d) EPC). " 

EPO T 1028/14 - link

Claim 1 of the present set of claims reads as follows:

"A method of determining a likelihood that a received message is an undesired message, comprising the steps of:
(i) receiving a message at a messaging system;
(ii) forwarding to a reputation engine a pre-selected set of identifiers relating to the origin of the message, the pre-selected set of identifiers including an IP address from which the received message originated, a tuple of a domain at which the received message allegedly originated and the IP address from which the received message originated, and a tuple of a user who allegedly originated the message and the IP address from which the received message originated;
(iii) checking databases at the reputation engine to determine previously determined reputation metrics for the forwarded identifiers and returning any previously determined reputation metrics to the messaging system;
(iv) making a first determination at the messaging system of a likelihood as to whether the received message is undesired using a first set of criteria including the returned reputation metrics; and
(v) marking the message as being either desired or undesired in accordance with the first determination."
Reasons for the Decision
1. Allowability of the appeal
1.1 Assessment of inventive step in the appealed decision
1.1.1 The board understands the statement in point 2.12 of the communication of 30 August 2013 to which the appealed decision makes reference (cf. point I above) to imply that features (i) to (iv) of claim 1, leaving aside the terms "messaging system", "reputation engine" and "IP address", represented non-technical features merely relating to "a scheme for processing data". This is confirmed by points 2.13 and 2.14 of that communication, addressing the assessment of inventive step according to the problem-solution approach. The board does not agree with this finding for the reasons set out below.

4 Sep 2017

T 1162/12 - Abuse of procedure

Key points

  • With the summons, the Board expressed new concerns about the claims being possible not sufficiently disclosed over the whole scope of the claims of the main request, in addition to a preliminary opinion that the main request was not novel. The proprietor then filed a new main request, and argued that this request must be admitted by the Board. The Board does not agree, firstly because the new main request was filed before the Board had refused the earlier main request for insufficient disclosure. Moreover, the new main request also addressed - perhaps not coincidentally, and late - an objection of lack of novelty that was already made by the OD. 
  • The Board does not like the new main request prevents the Board from deciding on the earlier main request, and considers the filing of the main request an abuse of procedure. " Damit hat sie [patentee] sich aber unter dem Vorwand der Verfahrensökonomie in unzulässiger Weise an die Stelle der Kammer gesetzt und die Kammer daran gehindert, tatsächlich selbst zu dieser Frage [about sufficiency of disclosure] Stellung zu nehmen. Dieses Vorgehen, gekoppelt mit der Darstellung der neuen Anträge als Reaktion auf die völlig hypothetische Zurückweisung des vorherigen Hauptantrags, führt dazu, dass der Kammer die Zulassung der neuen Anträge gewissermaßen aufgezwungen wird. Die Kammer erachtet dieses Vorgehen der Beschwerdeführerin als Verfahrensmissbrauch." 

 EPO T 1162/12

1. Zulässigkeit der Anträge
Der Hauptantrag und die Hilfsanträge I bis V wurden nach der Ladung zur mündlichen Verhandlung vor der Kammer eingereicht. Ihre Zulassung liegt gemäß Artikel 13 (1) VOBK im Ermessen der Kammer.
Die Beschwerdeführerin hat dies mit dem Hinweis darauf bestritten, dass die Anträge eine Reaktion auf einen erstmals im Ladungsbescheid der Kammer erhobenen Einwand darstellen. Die Kammer müsse der Beschwerdeführerin Gelegenheit zur Reaktion geben und habe daher kein Ermessen, die Anträge nicht in das Verfahren zuzulassen.

1 Sep 2017

Comments on Mr Shibata's article in EPI information 2/2017

The article " Reconsideration of G3/93 “Priority Interval” from the Perspective of G1/15 “Partial Priority”" of Mr Shibata in EPI Information 2/2017 deserves some comments.

The article points to paragraph 23 of the FICPI Memorandum about partial priority. Here the case is considered wherein (simplified) the priority document discloses chlorine, the application claims halogen, and public prior use of the chlorine has occurred in the priority interval. Now, with partial priority, the claim is said to be "valid in its entirety". However, the public prior use of chlorine renders the alternative with bromine obvious (that this alternative is obvious, follows from paragraph 8 of the Memo). Furthermore, the Memorandum indicates that if the public prior use was also of the bromine embodiment, then the claim would be invalid for the bromine embodiment (paragraph 24).
See by the way this comment of kaz-xmas on another blog.

Hence, the FICPI memorandum seems to assume the shield effect of the priority for chlorine for publication of that embodiment in the priority interval, i.e. such publications can not be cited, also not for the embodiments with bromine. On the other hand, any publication of the bromine embodiment can be cited. Hence, the priority of the chlorine embodiment does not extend to the bromine embodiment, renders the chlorine publication uncitable even for the bromine embodiment lacking priority.

Mr Shibata then proposes (as I understand it) that in case of partial priority, the part of the claim not covered by the partial priority, should benefit from the "shield effect" of the priority document. 

Mr Shibata's argument is interesting, but in my opinion not fully convincing. Article 89 EPC quite simply states that the effect of priority is the date of priority "shall count as the date of filing".  The FICPI Memorandum provides the legislative intent of Article 88(2) and (3), which are about the requirements (and limits) for claiming priority. In particular paragraphs 1-32 of the Memorandum are specifically about Article 88(2), second sentence "multiple priorities may be claimed for any one claim". The Memorandum does not engage with the quite clear statement of the effect of priority, even though the "shall count as the date of filing" wording was used from the outset of the drafting, see e.g. IV/5569/1/61-D in the travaux and the Avant-Project draft version (VE 1965; edit: possible link; page 17). 
Therefore, I do not think that it can be said that the FICPI Memorandum is clear enough to establish that it was the legislative intent to have a shield effect in case of OR claims.

In particular, for the shield effect, it should not matter if "halogen"  was claimed or simply "bromine" alone. There is also no logical ground why the shield effect would depend on whether an equivalent is claimed (such as bromine), or "chlorine + obvious feature B). However, then priority would provide protection for AND claims, and that is (unambiguously) rejected in the Memorandum (page 2, top). 

Finally, Mr Shibata is not entirely accurate where he says that "scope of the referral in G3/93 was "AND"-claim". The scope of the referral (by the President) was an application that  "comprises subject-matter not disclosed in the priority document". G 3/93 uses the example of an AND claim in point 3, but the following analysis is not so restricted and refers to priority that is invalid because the application "claims subject-matter not disclosed in the priority document". That clearly encompasses not only AND claims, but also equivalent (chlorine vs. bromine), and irrespective of whether a claim is entirely directed to such undisclosed subject-matter or only in part (a claim for chlorine OR bromine, or a claim for halogen).

Of course, one can maintain that G 3/93 is wrong in the sense that the shield effect of priority ought to be recognized by the EPO. Of course, priority needs to give not only the shield effect, but also the redate effect to protect against publications of equivalent embodiments during the priority interval), and for the redate effect there needs to be a limit on the protected subject-matter. Furthermore, the redate effect alone is sufficient to implement Article 4B of the Paris Convention, if one assumes that the effect of priority extends only to the same subject-matter in the later application. Mr Shibata challenges also that - citing Wieczorek, page 156. However, I do not find the remark of Wieczorek very convincing: the fact that some subject-matter does not form a second invention (but an obvious equivalent), does not mean that it is the same invention. Hence, Article 89 EPC and the redate approach are not irreconcilable with the Paris Convention.

Addendum 04.04.2020: see also T680/08, T665/00 and T1443/05 mentioned by Bremi in Singer/Stauder/Luginbuhl 8th ed. (2019) Art.89 rdn. 9 fn.11 and Mitt. 2006 p.490 (these decisions appear to actually deal with partial priority, G1/15).