31 May 2018

T 0355/15 - Implicit Main Request

Key points

  • The OD had decided to revoke the patent for insufficient disclosure.
  • The Main Request filed with the Statement of grounds is: " It is requested to set aside the decision of the opposition division to revoke the patent and to remit the case back to the opposition division for further examination."
  • According to the Board, the appeal is admissible despite this Main Request.
  • " the Board concludes that the Appellant [proprietor] implicitly requested, both in its notice of appeal and in its statement of grounds, that the revocation decision be set aside and the proceedings be continued on the basis of the highest-ranking request that had ultimately been pending before the Opposition Division" .



III. In the decision under appeal, the Opposition Division came inter alia to the following conclusions:
- The modified version of the patent in suit according to the Main Request filed with letter dated 7 November 2014 was not objectionable on formal grounds.- However, the patent in suit did not sufficiently disclose how the "reducing" step g) of Claim 1 was to be carried out in order to achieve the "claimed improvement".Thus, the person skilled in the art seeking to carry out the claimed reduction step "would indeed need to embark on a research program, in particular in as far as reductant, further components and operating conditions are concerned".
IV. With its statement setting out the grounds of appeal the Appellant (Patent Proprietor) submitted four sets of amended claims as Auxiliary Requests 1 to 4. It rebutted the reasoning given by the Opposition Division as regards the finding of insufficiency of the disclosure, referring also to newly filed documents supposed to illustrate common general knowledge regarding the FT process.

Reasons for the Decision
1. Admissibility of the appeal
1.1 In the decision under appeal, the Opposition Division concluded that the patent had to be revoked since it was objectionable under Article 100(b)/83 EPC, both in the amended version according to the then pending Main Request, and in the amended version according to the then pending Auxiliary Request 1.
1.2 In its notice of appeal dated 13 February 2015, the Appellant requested "that the decision of the Opposition Division be withdrawn and the subject European patent be maintained".
For the Board, this is an at least implicit request to set aside the decision under appeal, which "defin[es] the subject of the appeal" pursuant to Article 108, Rule 99(1)(c) EPC.
1.3 As pointed out by the Respondent, neither of notice of appeal and statement of grounds of appeal contains an express request for the maintenance of the patent in a particular version (claims, description pages and figures).
1.3.1 In the present case this does not, for the Board, mean that the requirement stipulated in Rule 99(2) EPC is not met, according to which "the extent to which [the decision] is to be amended" must be indicated in the statement setting out the grounds of appeal.
1.3.2 In particular, the Appellant's statement setting out the grounds of appeal (point 2.1) contains inter alia the following requests:
"Main request
It is requested to set aside the decision of the opposition division to revoke the patent and to remit the case back to the opposition division for further examination."
Should the appeal board not allow our main request already based on our written submission, oral proceedings (Art.116 EPC) are requested".
1.4 Considering also
- that no new set of claims labeled Main Request was filed together with the statement of grounds,
- that the claims of the patent as granted are not mentioned, let alone considered further in the statement,
- that the statement contains no further indications as regards the version (claims, description pages, figures) of the patent to be considered in the first place,
the Board concludes that the Appellant implicitly requested, both in its notice of appeal and in its statement of grounds, that the revocation decision be set aside and the proceedings be continued on the basis of the highest-ranking request that had ultimately been pending before the Opposition Division, i.e. on the basis of the amended version according to the then pending Main Request (comprising Claim 1 as granted and amended dependent claims 2 to 11).
1.5 In the board's judgement, the appeal is, therefore, admissible (Article 108, Rules 99(1)c) and 99(2) EPC)

30 May 2018

T 1819/13 - Claim for injecting antibiotic

Key points

  • Claim 1 is in Swiss-type format and includes the feature " for use in treating or preventing a bacterial infection in an animal by injection of the medicament subcutaneously at the junction of a pinna with the cranium of the animal" . The Board decides that this feature of injection at a specific site does not make that the claim violates Article 53(c) EPC. 
  • Furthermore, the feature provides for novelty.
  • As a comment, note that the claim refers to "an antibiotic"  in general. I am not sure if that is a substance or composition in the sense of Article 54(4) EPC.


EPO T 1819/13 - link

X. With letter of 21 December 2017, the respondent filed amended sets of claims: auxiliary requests 1 to 9.
Auxiliary request 1 consists of fourteen claims. Claim 1 reads as follows:
"1. Use of an antibiotic for the manufacture of a medicament for use in treating or preventing a bacterial infection in an animal by injection of the medicament subcutaneously at the junction of a pinna with the cranium of the animal, wherein the animal is selected from cattle, swine, sheep and goats."

2. Exception to patentability (Article 53(c) EPC)
2.1 From 13 December 2007, Article 52(4) EPC 1973 (see point II above) was superseded by Article 53(c) EPC 2000 which also applies to European patent applications pending at the time of its entry into force and to European patents already granted at that time (see Article 1 of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the EPC of 29 November 2000). Hence, Article 53(c) EPC 2000 (hereinbelow: Article 53(c) EPC) applies to the patent in suit (see point I above).

29 May 2018

T 1409/16 - Novelty and extrinsic characteristics

Key points

  • The Board decides that the phrase " either ... or"  in the claim means an inclusive or (both also being allowed). "The Board holds that the "either ... or" wording could only be considered as expressing an exclusive or in cases where the two situations referred to are, due to their very nature, mutually exclusive, i.e. incompatible with each other." 
  • About novelty based on a prior use: the opponent submitted that claim 1 was not novel becuase D1 to D3 described compositions containing the polymer Finnfix® BDA, and the opponent had fractionated the polymer to show that it included a polymer fraction having a degree of substitution and degree of blockiness as specified in claim 1. 
  • " The Board does not find these arguments convincing for the following reasons. Polymeric components (here: substituted celluloses), usually comprise individual molecules differing in terms of e.g. chain length and molar mass. A physical property measured and expressed as a single discrete value attributed to a polymeric component is thus often an average value determined over the totality of the individual polymeric molecules present. Therefore, the Board holds that when a polymer (CMC in Finnfix® BDA) is known to be a component of a prior art composition, intellectually splitting said polymeric component into fractions and attributing to one of these fractions (necessarily composed of individual molecules differing in terms of e.g. chain length and molar mass) a physical property (discrete numerical value) distinguishing this fraction from other such fractions, is an artificial approach based on hindsight." 
  • " In the present case, the Board regards the fractionation of Finnfix® BDA as carried out by the Appellant as a kind of reverse engineering based on hindsight and revealing a particular ("extrinsic" within the meaning of G 1/92) property of the Finnfix® BDA containing compositions: In the knowledge of the invention, "deliberate choices" were made "with specifically chosen outside conditions" in order to obtain "a particular result" in terms of DS and DB values. Information revealed by following this procedure does, however, not correspond to what can be considered to having been made available to the public by an analysis of the chemical composition of Finnfix® BDA in the sense of G 1/92." 
  • As a comment, fractionating polymers is usually not an intellectual exercise but a laboratory procedure.


EPO T 1409/16  - link

Reasons for the Decision
Main request - the meaning of "either ... or" in claim 1 as granted
1. The parties disagreed as regards the meaning to be given to the feature of claim 1 at issue expressed by the sentence "either DS+DB is of at least 1.00 or DB+2DS-DS**(2) is of at least 1.20" (emphasis added by the Board; complete wording of the claim under II, supra).
[...]
1.3 For the following reasons, the Board holds that in the context of claim 1 at issue the "either ... or" wording expresses an inclusive or.
1.3.1 Document D19 clearly shows, by means of example sentences taken from everyday language that both "exclusive disjunctions" and "inclusive disjunctions" may be expressed by the "either ... or" wording.
Claim 1 is, therefore, ambiguous and needs to be construed in this respect, taking into account the entire patent in suit.

28 May 2018

T 1668/14 - Amended claims in appeal

Key points

  • The Board recalls that according to established case law, " it is not an absolute requirement for admissibility that the appellant should attack the opposition division's decision as flawed. Where amended claims have been filed, an appeal may also be admissible if sufficient reasons are given in the statement of grounds why the amendments are considered apt to remedy the deficiencies identified by the opposition division".
  • " Hence, contrary to the position of the opponent in the response to the statement of grounds, an appeal is not necessarily rendered inadmissible by an appellant-proprietor filing amended claims, and defending the claims as amended in the grounds of appeal."

EPO T 1668/14 - link



2. Admissibility of the appeal
2.1 For the appeal to be admissible, a statement of grounds of appeal shall be filed (Article 108 EPC, third sentence) in which:
"the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based" (Rule 99(2) EPC).
2.2 The Boards have developed a consistent body of jurisprudence on the conditions under which an appeal may be rejected as inadmissible for lack of adequate substantiation. This includes the following principles:
(a) If the admissibility requirements are fulfilled in respect of at least one request, the appeal as a whole is admissible, even if this request is subsequently withdrawn (Case Law of the Boards of Appeal, 8th Edition 2016, IV.E.2.6.3, second paragraph).
(b) It is not an absolute requirement for admissibility that the appellant should attack the opposition division's decision as flawed. Where amended claims have been filed, an appeal may also be admissible if sufficient reasons are given in the statement of grounds why the amendments are considered apt to remedy the deficiencies identified by the opposition division (Case Law of the Boards of Appeal, 8th Edition 2016, IV.E.2.6.5(b)).
(c) Whether the appellant's arguments are convincing or likely to be successful is irrelevant for the purposes of determining the admissibility of the appeal (Case Law of the Boards of Appeal, 8th Edition 2016, IV.E.2.6.2, first paragraph, final sentence and 2.6.6).

25 May 2018

T 2330/13 - Parallel processing is technical

Key points
  • " The Board therefore considers that, as in decision T 1321/11, the features supporting parallel processing [of data using a bit matrix] contribute to the technical character of the claim." 

EPO T 2330/13 - link

5.5 It thus has to be determined whether and to what extent the features of claim 1 of the main request - which defines a computer-implemented method for evaluation of selection conditions for consistency - provide a technical contribution. Two main lines of argument may be distinguished here, namely (i) that the task performed by the method and its overall purpose are of a technical nature, and (ii) that the features of the claimed invention specifically take the functioning of a computer into account and result in technical effects such as improved processing speed. [...]
5.6.8 It can be concluded from the above that the task performed by the claimed method, namely verification of the consistency of the selection conditions, i.e. a system of rules, is not of a technical, but of a logical nature. Thus, it does not contribute to the technical character of the invention. [...]
5.7.3 The Examining Division did not find the second line of argument convincing with respect to the then pending requests (which did not contain features which specifically related to parallel processing). It considered that the matrices, bit strings and logical operations were mathematical constructs from the field of Boolean algebra which did not contribute to the technical character of the invention.  [...]
5.7.4 The Board is not fully persuaded by the above reasoning for refusing the requests pending before the Examining Division. However, this point need not be decided, since the appellant amended its requests in a way which, as set out below, overcomes the objections raised in the contested decision.

24 May 2018

T 0278/14 - Comprising kills technical effect

Key points
  • Claim 1 is for a method of preparing the medicine drospirenone using TEMPO (an organic compound) as catalyst rather than a Ru metal catalyst as in the prior art.
  • The  [patentee] considered that the objective technical problem to be solved lay in the provision of a process for the production of drospirenone which did not require the use of heavy or toxic metals, such that there was no need for chromatographic purification at the end of the process.
  • The Board: "Given that claim 1 does not exclude the use of heavy or toxic metals as suitable oxidants, co-oxidants or catalysts, and that the patent even cites a heavy metal salt within one of its preferred oxidising systems (see CuCl in paragraph [0017]), claim 1 encompasses processes that would require subsequent chromatographic purification. Hence, the technical problem as formulated by the respondent is not solved by claim 1 across its whole scope and needs to be reformulated in a less ambitious manner." 
  • Therefore, the objective technical problem is providing an alternative preparation method. The claimed method is found to be an obvious alternative.


EPO T 0278/14 -  link


Claim 1 of the patent as granted (main request) reads as follows:
1. Process for the preparation of drospirenone, comprising the oxidation of 17alpha-(3-hydroxypropyl)-6beta,7beta,15beta,16beta-dimethylene-5beta-androstane-3beta,5,17beta-triol of formula (VIII) with a suitable oxidising agent in an organic solvent in the presence of a catalytic amount of the [TEMPO]  radical or a derivative thereof, said oxidation being followed by the addition of a protic acid directly into the same container in which the oxidation took place, to obtain the drospirenone of formula (I)

3.3 Objective technical problem
The respondent [patentee] considered that the objective technical problem to be solved lay in the provision of a process for the production of drospirenone which did not require the use of heavy or toxic metals, such that there was no need for chromatographic purification at the end of the process.
Given that claim 1 does not exclude the use of heavy or toxic metals as suitable oxidants, co-oxidants or catalysts, and that the patent even cites a heavy metal salt within one of its preferred oxidising systems (see CuCl in paragraph [0017]), claim 1 encompasses processes that would require subsequent chromatographic purification. Hence, the technical problem as formulated by the respondent is not solved by claim 1 across its whole scope and needs to be reformulated in a less ambitious manner.
Considering that there is no evidence on file that the process in claim 1 provides any advantage over the process of the closest prior art, the board concludes, in agreement with the opposition division and the appellant, that the problem to be solved is the provision of an alternative process for the preparation of drospirenone by oxidation/dehydration of the compound of formula (VIII) defined in claim 1.
3.5 Obviousness
Another of the respondent's arguments was that the need to combine three pieces of prior art, namely the invention of document (3), the teaching of document (1) and the previous knowledge depicted in document (3), in order to arrive at the claimed process confirmed the presence an inventive step.

23 May 2018

T 2070/13 - Comprising kills patent

Key point

  • Claim 1 of the Main Request is directed to a composition comprising an anti-adherant material selected from a list.
  • The Board: " It is firstly noted that materials known to exhibit adherent rather than anti-adherent properties are included within the listed anti-adherent materials in claim 1" 
  • " Hence, the skilled person is unable to identify suitable materials displaying anti-adherence due to the large number of potential materials listed" 
  • "In summary therefore the invention according to claim 1 is not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, contrary to the requirements of Article 83 EPC 1973. " 
  • In AR-9, the feature is added that " the anti-adherent material comprises a material selected from the group consisting of inulin". This does not save the patent.
  • The Board: " The anti-adherent material must thus at least include inulin but may, through the use of the expression 'comprises', include an unspecified number of further materials in addition to inulin. As a consequence, as was the case for the main request, the skilled person is again presented with an extensive number of potential materials which should meet the anti-adherent material requirement for which no guidance is included in the patent." 
  • " Claim 1 states that 'the anti-adherent material comprises a material selected from the group consisting of inulin' i.e. any number and amount of further materials in addition to inulin may be included as the anti-adherent material. The skilled person is thus placed in the same quandary as existed in at least the main request, only still worse since no limit whatsoever is placed on which materials are included in the possible anti-adherent materials." 


T 2070/13 - link


VII. Claim 1 of the main request reads as follows:
"A topical viscoelastic fluid modifying composition for topical application to the skin and hair in the perianal and/or labial areas comprising at least one viscoelastant material and an anti-adherent material, wherein the viscoelastant material comprises a material selected from the group consisting of enzymes, linked enzymes, alkyl polyglycosides having 8-10 carbon atoms in the alkyl chain, bovine lipid extract surfactant, dextrans and dextran derivative; and wherein the anti-adherent material comprises a material selected from the group consisting of casein, farnesol, flavones, fucans, galactolipid, kininogen, inulin, iridoid glycosides, perlecan, poloxamer 407, sulphated exopolysaccharides, and combinations thereof."

22 May 2018

T 1746/15 - Intervention not admitted

Key points

  • An admissible intervention of an accused infringer in opposition, requires that "proceedings for infringement" have been instituted.
  • The Board decides in this case that "selbstständiges Beweisverfahren" under German law are not such proceedings. Therefore, the intervention is not admissible. The German procedure is similar to "saisie" procedures as they exist e.g. in France, and "saisie" procedures do not make an intervention admissible according to existing case law.



Headnote
Independent evidentiary proceedings under § 485 of the German Code of Civil Procedure ("selbstständiges Beweisverfahren", also known under "Beweissicherungsverfahren" or "Düsseldorfer Verfahren") do not qualify as proceedings for infringement under Article 105(1)(a) EPC (see reasons, point 1).
T 1746/15 - link

Summary of Facts and Submissions
VII. The appellant argued essentially as follows:
Admissibility of opponent/respondent II's intervention
The independent evidentiary proceedings to which respondent II is currently subject in Germany ("selbstständiges Verfahren", also known as "Beweissicherungsverfahren" or "Düsseldorfer Verfahren"), hereafter referred to as "BSV proceedings", do not qualify as proceedings for infringement pursuant to Article 105(1)(a) EPC.
Proceedings initiated by the patent proprietor are deemed to be "proceedings for infringement" pursuant to Article 105(1)(a) EPC only where a court is called upon to establish by a ruling "whether a third party is commercially active in an area that falls within patentee's right to exclude".
This is not the case in BSV proceedings, since no facts are established by a court in the sense that the opinion provided by the expert inspecting the alleged infringing product or process is not binding for the subsequent distinct infringement proceedings to be initiated by an action.
There is no automatic or procedural link between BSV proceedings and subsequent infringement proceedings. There is no time limit for bringing the case to infringement proceedings, so that opponent/respondent II in the present case may not even be faced with an actual accusation of infringement.
Respondents in BSV proceedings are not faced with injunctions, contrary to the order in the Belgian proceedings discussed in T 188/97 (not published in OJ EPO), in which the assumed infringer is unambiguously prohibited from "releasing or alienating" in any way the infringing articles described by the expert.
In BSV proceedings, the assumed infringer is not left without any means of defence, since, according to § 494a German Code of Civil Procedure (Zivilprozessordnung, hereafter "ZPO"), it can force the patent proprietor to bring the case to infringement proceedings.
According to the Case Law of the Boards of Appeal (see T 1713/11 and T 305/08, neither published in OJ EPO), "saisie-contrefaçon" in France or "descrizione" in Italy, which are proceedings comparable to BSV proceedings, do not qualify as "proceedings for infringement" pursuant to Article 105(1)(a) EPC.
As a consequence, BSV proceedings under German law cannot be considered as proceedings for infringement within the meaning of Article 105(1)(a) EPC. Therefore, the intervention of opponent/respondent II should not be admitted.


Reasons for the Decision
1. Admissibility of opponent/respondent II's intervention
1.1 The present intervention of respondent II was filed pursuant to Article 105(1)(a) EPC, which states the following (emphasis added by the Board):
"(1) Any third party may, in accordance with the Implementing Regulations, intervene in opposition proceedings after the opposition period has expired, if the third party proves that
(a) proceedings for infringement of the same patent have been instituted against him, or..."
Hence, for an intervention to be admissible and treated as an opposition pursuant to Article 105(2) EPC, "proceedings for infringement" must have been initiated against the intervener, i.e. respondent II in the present case.

21 May 2018

T 2571/12 - Plausibility strikes again (depression treatment)

Key points
  • " Although depression is listed in the patent as one of the possible neuropsychiatric disorders that could be treated with glutathione precursors, there is no evidence at all, either in the patent or in the available prior art, that makes it plausible that glutathione precursors may have a therapeutic effect in depression." 
  • The Board: " It is the patent that has to demonstrate the suitability of the claimed treatment for the claimed therapeutic indication. As explained, for example, in decision T609/02 supra, a simple verbal statement that compound X may be used to treat disease Y is not enough to ensure sufficiency of disclosure: rather, it is required that the patent provides some information in the form of, for example, experimental tests, to the avail that the claimed compound has a direct effect on a metabolic mechanism specifically involved in the disease, this mechanism being either known from the prior art or demonstrated in the patent per se."
  • Therefore, the claimed subject-matter is insufficiently disclosed. 


EPO T 2571/12 -  link

5. Auxiliary request 1 - Article 83 EPC
5.1 In claim 1 of auxiliary request 1 the therapeutical indication has been restricted to the neuropsychiatric disorder depression.
5.2 By definition, attaining the claimed therapeutic effect is a functional technical feature of claims directed to medical uses (G 2/88, OJ EPO 1990, 93, reasons 10.3). As a consequence, under Article 83 EPC, unless this is already known to the skilled person at the priority date, the application must disclose the suitability of the product to be used for the claimed therapeutic application (see also T 609/02, reasons 9).
5.3 Although depression is listed in the patent as one of the possible neuropsychiatric disorders that could be treated with glutathione precursors, there is no evidence at all, either in the patent or in the available prior art, that makes it plausible that glutathione precursors may have a therapeutic effect in depression. In fact, there is no hint that the underlying mechanism which is extensively disclosed in the patent for schizophrenia, namely reduction of glutathione levels in the central nervous system and consequent oxidative stress, is also present in depression. Hence the board concludes that the patent does not disclose the suitability of the product to be used for the claimed therapeutic application.
5.4 The board thus disagrees with the conclusions of the opposition division that because "no evidence has been provided by O to show that any neuropsychiatric disorder cannot effectively been [sic] treated using a glutathione precursor such as N-acetyl-cysteine (...) the patent in suit is considered as disclosing the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art" (decision of the opposition division, page 7, second paragraph). It is the patent that has to demonstrate the suitability of the claimed treatment for the claimed therapeutic indication. As explained, for example, in decision T 609/02 supra, a simple verbal statement that compound X may be used to treat disease Y is not enough to ensure sufficiency of disclosure: rather, it is required that the patent provides some information in the form of, for example, experimental tests, to the avail that the claimed compound has a direct effect on a metabolic mechanism specifically involved in the disease, this mechanism being either known from the prior art or demonstrated in the patent per se.
5.5 Decision T 609/02 moreover clarified that post-published evidence may be taken into account for sufficiency of disclosure, but only to back up the findings in the patent application in relation to the use of the ingredient as a pharmaceutical, and not to establish sufficiency of disclosure on its own. Accordingly, post-published document D13, submitted by the appellant with the statement of grounds of appeal as evidence for a role of glutathione precursors in the context of depression, cannot be taken into account in the present context.
5.6 The subject-matter of claim 1 of auxiliary request 1 is thus not sufficiently disclosed in the application. Auxiliary request 1 is not allowable for lack of compliance with Article 83 EPC.

18 May 2018

T 1003/15 - Re-examination or review?

Key points

  • In this opposition appeal, the opponent filed new documents D4 and D5 with the Notice of appeal. In response, patentee restricted the claims. 
  • However, the first question is admissibility of the appeal. The opponent did not attack the finding of the OD that the claims at issue were novel and inventive over D1-D3. According to the Board, the appeal is admissible because the opponent had maintained in appeal that ", in view of the absence of this essential feature from claim 1 of the allowed claims, the problem addressed by the patent was not solved across the whole breadth of the claims", therefore the claims lacked inventive step. This line of argument is not further discussed in the appeal, in fact the Board only decides to admit D4 and D5 and the case is remitted to the OD.
  • In my view, it is not very satisfying that admissibility of the appeal is based on an argument that is not further discussed. If the Boards are strictly a review instance, then D4 and D5 should  not be admitted. If the Boards are more of a re-examination panel, then D4 and D5 should themselves make the appeal admissible. The reason for the requirement that the Statement of grounds contains at least one reason for setting aside the impugned decision, as required by Rule 99(2) EPC, is that otherwise the appeal makes no sense. In this decision, the OD's decision is set aside based on D4 and D5, therefore the filing of those documents with the Statement of grounds should be sufficient for admissibility. 



EPO T 1003/15 -  link

Reasons for the Decision
1. Admissibility of the appeal
The appellant [opponent] did not make any comment in its statement of grounds of appeal as regards the decision of the opposition division over the relevance of documents D1-D3 which were discussed in the decision of the opposition as regards novelty (D1, D3) and inventive step (D2).
The appellant however maintained its objections as to the breadth of the claims and the absence of an essential feature in claim 1 of the claims maintained by the opposition division, namely the absence of a surfactant. According to the appellant, in view of the absence of this essential feature from claim 1 of the allowed claims, the problem addressed by the patent was not solved across the whole breadth of the claims, which failed to meet the requirements of Article 56 EPC.
An appeal by an opponent is admissible if the grounds of appeal contain at least one reason for setting aside the impugned decision, as required by Rule 99(2) EPC. This is the case with the present appeal with objections already presented during the opposition proceedings as regards the resolution of the problem over the whole scope of the claims. The statement of grounds of appeal of the opponent appears thus to constitute an answer to the decision of the opposition division and the appeal appears to be admissible.
2. Admission of documents D4 and D5 into the proceedings
Documents D4 and D5 are new documents, that were filed in the appeal proceedings by the appellant with its statement of grounds of appeal. Said new evidences D4 and D5 were therefore not present and discussed during the opposition proceedings.
According to Article 12(4) RPBA, a board of appeal has the power to hold inadmissible facts, evidence or requests which inter alia could have been presented in the opposition proceedings, which is obviously the case of D4 and D5.
However, in the present case, and in response to the statement of grounds of appeal and of the submissions of the new documents D4 and D5, the respondent submitted also new sets of claims, as main and auxiliary requests. The subject-matter of said new requests is substantially modified and more restricted that the subject-matter of auxiliary request 1 which was considered to meet the requirements of the EPC by the opposition division. The submission of these new requests constitutes an explicit response to the new documents, and a implicit recognition of their prima facie relevance for the claims which were found to meet the requirements of the EPC during the opposition proceedings.
In parallel to the submissions of the new main and auxiliary requests, the respondent did also not object the admission of the new documents D4 and D5 into the appeal proceedings.
It appears also immediately obvious that said documents D4 and D5 are indeed prima facie relevant, not only for the claims which were found to meet the requirements of the EPC during the opposition proceedings, but also at least for the claims of the main request submitted in the appeal proceedings, as regards novelty and/or inventive step.
The Board exerts thus its discretionary power and decides to admit documents D4 and D5 into the proceedings (Article 12(4) RPBA).
3. Remittal to the opposition division
The discussion on novelty and inventive step of the new main request over the newly submitted documents D4 and D5 constitutes a new case which was not discussed during the opposition proceedings.
Although Article 111(1) EPC does not guarantee a party an absolute right to have all the issues in the case considered by two instances, it is well recognised that any party should, whenever possible, be given the opportunity to said consideration by two instances of the important elements of the case. The essential function of an appeal proceedings is to consider whether the decision under appeal is correct. Hence, a case is normally remitted if further criteria of patentability have not yet been examined and decided in the proceedings leading to the decision under appeal, or as in the present new documents and new requests have been filed.
Hence, the Board considers it appropriate to remit the case to the examining division for further prosecution on the basis of the main request.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the Oppposition division for further prosecution.

17 May 2018

T 1266/16 - Declaration inventors not credible

Key points

  • In this opposition appeal the Board decides about novelty of a method claim which requires that thiourea is used with less than 1.0 wt.% Calcium.
  • " The appellant [patent proprietor] submitted two declarations (D29, D30) by the inventors of the patent in suit stating that "during the development of the invention, thiourea was obtained from a number of different commercial suppliers. The Ca content in the commercially available industrial thiourea from some of these suppliers was found to be more than 1.0 wt%"."
  • | Notwithstanding that both declarations are word-for-word identical regarding thiourea purity, they do not contain any specific detail with respect to the suppliers they refer to, let alone any data regarding purchase or analysis performed. As such, these statements, devoid of any corroborating evidence, cannot be considered as proof of the appellant's argument." 



EPO T 1266/16 - link


10.1 Commercially available thiourea
There is no evidence on file which could show that thiourea with a higher content of calcium than [the maximum content specified in] claim 1 was commercially available at the filing date of D1.
The appellant [patent proprietor] submitted two declarations (D29, D30) by the inventors of the patent in suit stating that "during the development of the invention, thiourea was obtained from a number of different commercial suppliers. The Ca content in the commercially available industrial thiourea from some of these suppliers was found to be more than 1.0 wt%".
Notwithstanding that both declarations are word-for-word identical regarding thiourea purity, they do not contain any specific detail with respect to the suppliers they refer to, let alone any data regarding purchase or analysis performed. As such, these statements, devoid of any corroborating evidence, cannot be considered as proof of the appellant's argument.
In contrast, the respondents have submitted ample evidence that thiourea having a very low calcium content was not only available but standard before the filing date of D1. D4 refers to 98.0% pure thiourea having an ignition residue (sulfate) of 0.01% of lower, which includes not only calcium, but also sulfate conterions and other cationic impurities; D5 and D6 also refer to 99% pure thiourea (see partial translations); D10 relates to 99.7% pure thiourea having less than 0.1% sulfate-ash; D14 discloses 99.0% pure thiourea having less than 0.10% ash.
This argument of the appellant is thus not convincing.

16 May 2018

T 2135/15 - Board spells out what the ED should do

Key points

  • In this examination appeal, the Board finds that claim 1 does not lack essential features, as the ED had decided. Furthermore, "[t]he Board is unable to concur with the reasoning of the examining division with respect to inventive step" because "the reasoning ignores the presence in claim 1 of the feature that the modified sugar beet pectin contains a water-insoluble component". 
  • " Hence, none of the objections raised by the examining division against claim 1 are found to be convincing." 
  • However, the Board then gives very detailed instructions for the further examination of the case after remittal.
  • " Contrary to D1 and D2 relied upon in the contested decision as starting point for assessing inventive step, other documents cited in paragraph [0004] of the present application, in particular [patent numbers], which were also cited in the written opinion of the ISA, appear to disclose a [the key feature of claim 1]."
  • The Board then notes that there are multiple independent claims, and clarity issues in claim 1, as well as a product-by-process claim that might be unclear.



EPO T 2135/15 - link





Reasons for the Decision
1. Claim 1 of the main request, which was found by the examining division to contravene the requirements of Articles 84 and 56 EPC, is based on a combination of claims 1, 3 and 4 as filed. The Board is therefore satisfied that claim 1 of the main request meets the requirements of Article 123(2) EPC.
Lack of essential features (Article 84 EPC)
2. Article 84 EPC requires that the claims are clear, concise and supported by the description. According to established case law of the boards, Article 84 EPC is to be interpreted as requiring that an independent claim must recite all the essential features which are necessary for clearly and completely defining a particular invention (see opinion of the Enlarged Board of Appeal G 1/04, point 6.2.4 for the reasons). All features which are necessary for solving the technical problem with which the application is concerned have to be regarded as essential features (see Case Law of the Boards of Appeal, 8**(th) edition 2016, II.A.3.2). Hence, if the claims do not comprise a feature which is described in the application as essential, or which is disclosed in the description as being indispensable for solving the problem defined in the application, then an objection under Article 84 EPC may properly arise (see decision T 2001/12 of 29 January 2015, point 4.2 of the reasons).
2.1 Claim 1 of the pending main request is directed to a modified sugar beet pectin. According to paragraph [0006] of the application as filed, in line with paragraphs [0001] and [0004] the present invention aims at providing a modified sugar beet pectin that can provide an emulsion with excellent properties, particularly emulsion stability, compared to known generally available sugar beet pectin.
The claim does not contain the definition of the heating step at 60 to 100°C of the aqueous dispersion of sugar beet pectin, a step which was considered to be essential by the examining division.

15 May 2018

T 2154/13 - Not attending OP before OD

Key points

  • The patent proprietor did not attend oral proceedings before the OD, and then filed new auxiliary requests in appeal. The Board does not admit the requests.
  • " The Board considers that non-attendance at oral proceedings before the opposition division does not in itself justify the submission of new requests in appeal proceedings as a (presumed) reaction to the course of the oral proceedings in which the submitting party deliberately did not participate." 
  • "Following the principle according to which the appellant should be prevented from seeking unjustified procedural advantages in disregard of procedural economy and to the disadvantage of other parties (nemo auditur propriam turpitudinem allegans), the Board therefore decides not to admit auxiliary requests 1-3 into the appeal proceedings."
  • As a comment, " nemo auditur propriam turpitudinem allegans"  can be translated as "no one can be heard to invoke his own turpitude (=depraved behavior)". That seems different from what the Board states in English.  



EPO T 2154/13 -  link


3. Auxiliary requests - Admittance into the proceedings
3.1 Both respondents argued that none of these auxiliary requests should be admitted, because they could and should have been filed before the opposition division.
No argument on the admissibility of these requests has been submitted by the appellants.
3.2 The Board notes that the patent was revoked for lack of novelty in view of the disclosure of D6, and that this objection was raised and discussed only at the oral proceedings before the opposition division in the absence of the appellants.
The procedural conduct of the appellants raises the issue whether this party, exercising due care in its procedural actions, should have submitted these requests during the opposition proceedings. This question is strictly related to the application of Article 12(4) RPBA, which states that the Board has the discretionary power not to admit requests which could have been presented in the proceedings leading to the decision under appeal.

The Board considers that non-attendance at oral proceedings before the opposition division does not in itself justify the submission of new requests in appeal proceedings as a (presumed) reaction to the course of the oral proceedings in which the submitting party deliberately did not participate.
In addition, as also noted in the appealed decision (see point 4.3 of the reasons), the appellants were - or should have been - well aware of the fact that respondent 2 had raised an objection of lack of inventive step based on D6 as the closest prior art. Hence, auxiliary requests aimed at overcoming these objections could and should have been submitted during the opposition proceedings.
Following the principle according to which the appellant should be prevented from seeking unjustified procedural advantages in disregard of procedural economy and to the disadvantage of other parties (nemo auditur propriam turpitudinem allegans), the Board therefore decides not to admit auxiliary requests 1-3 into the appeal proceedings.

14 May 2018

T 2026/15 - Not admitting or refusing a request?

Key points

  • In this examination appeal, the applicant argues that the Board should admit a request, because even though the Examining Division had stated that the request was not admitted under Rule 137(3) EPC,  the ED had in fact considered the request in substance and had rejected it. Therefore, Article 12(4) RPBA does not apply. 
  • The Board agrees. " In its decision, the examining division gave extensive reasons why claim 1 of the auxiliary request was unclear []. Only two of these were qualified as merely "prima facie". At least the other, fully reasoned, objections establish in substance why, according to the examining division, a European patent could not be granted on the basis of the auxiliary request. Therefore, the board agrees with the appellant that the examining division has "considered" and "taken into account" the auxiliary request." 
  • "The board hence also finds that the examining division implicitly admitted the auxiliary request and, equivalently, gave its consent under Rule 137(3) EPC. In other words, the examining division wrongly exercised its discretion because, having implicitly admitted the request, it no longer had a discretion not to admit it" 
  • See also T 2301/12


EPO T 2026/15 - link



1.1 The appellant challenged the non-admission decision, arguing as follows (see the grounds of appeal, page 5, paragraph 1). In "the decision the auxiliary request is discussed in detail, in particular with regard to Article 84 EPC. Hence, it is believed that the auxil­iary request is regarded as introduced during examining and has to be regarded during appeal proceedings." Furthermore, it was requested to "regard the auxiliary request as already admitted to the appeal proceedings".
1.2 In this request the appellant made implicit reference to Articles 12(1) and (4) RPBA and effectively argued that the board had no discretion to "hold inadmissible" the auxiliary request, which was filed with the grounds of appeal, even though it was, on the face of it, not admitted by the examining division. In other words, the appellant argued that the board was obliged to decide on the auxiliary request in substance and could not, instead, limit itself to a formal decision confirming the non-admission decision.
2. The board agrees with the appellant's arguments.
2.1 Article 12(1)(a) and (4) RPBA states inter alia that "everything presented by the" appellant with the grounds of appeal "shall be taken into account by the Board", except that it has "the power [...] to hold inadmissible" in particular requests which were "not admitted in the first instance proceedings". This language implies that that which is "h[e]ld inadmissible" is not "taken into account".

11 May 2018

T 0417/13 - Particle size difficulties

Key points

  • In this opposition appeal, the opponent alleges that claim 1 violates Article 83 because of the feature that the claimed paint comprises "solid [PCV] extender particles having an average particle size in a range from 20 to 60 microns", because of the particle size feature.
  • The Board considers it a notorious fact about particle size measurements that "variations of the order of several magnitudes in the values obtained as results of the various methods are possible." 
  • " The description of the application provides only very limited information that could lead to the selection of a particular method of measurement.  [...] The person skilled in the art has thus to rely on his common general knowledge for the selection of an appropriate method of measurement. [...]   
  • However in this case patentee a way out. "The [patentee] has submitted ISO standard 1624 relating to sieving as a method of measurement for determining the size of PVC particles. [] The common general knowledge [] thus points towards sieving as the method of choice for determining the particle size of PVC particles." 
  • The Board also sees a difference with T 225/93: " In the case underlying decision T 225/93 the prior art contained no indication of which method of measurement was suitable in particular for the calcium carbonate particles under consideration []. Unlike the situation in T 225/93, in the present case it has been determined that one particular method of measurement would have been chosen by the skilled person." 



EPO T 0417/13 -  link

3. Particle size measurements
In the board's judgment, the following physical and mathematical facts about particle size measurements are notorious, i.e. they were so well established in the art at the priority date that they cannot reasonably be disputed. First, there are different methods of measurement that are based on different physical properties of the particles to be characterised. Second, to a large extent the type of average used (e.g. type of mathematical average or type of base (number average versus weight average)) influences the results obtained. Variations of the order of several magnitudes in the values obtained as results of the various methods are possible. Since this knowledge is notorious, there is no need to discuss documents (2) (including (2a)), (3) and (4), all filed in order to establish the above facts.

10 May 2018

T 1050/12 - Abstract and library

Key points

  • This opposition appeal is about whether the abstract of a conference presentation was public before the priority date of 1 May 1998. The conference was on 30 May to 4 June. The abstracts were included in a supplementary issue (on paper) of a scientific journal. The cover of the issue refers to May 1998. However, three libraries had received and date-stamped the issue in April 1998. The opponent furthermore had filed declarations of the librarians confirming that in 1998, journals were available to the public shortly after the date stamping.  
  • The Board: " There is no evidence on file supporting the alleged possibility, raised by the [patentee], that the journal supplement, disclosing meeting abstracts for a future conference, was not to be disseminated freely; nor is there any evidence that journal supplements publishing meeting abstracts are not to be made publicly available as soon as they are distributed to libraries and subscribers. Hence, regardless of whether or not the librarian is considered a member of the public (as was the issue in decision T 834/09), the board considers that there is persuasive evidence that [the supplements] were made available to the public before the priority date of the present patent. Whether or not the supplement can be found on the website of the Journal of Urology does not alter the fact that copies of the journal [] were available to library users." 



EPO Headnote
Meeting abstracts published in a supplement to a regular volume of a scientific journal found to be publicly available before the priority date of the patent on the basis of library date-stamps and accompanying declarations of the librarians.

EPO T 1050/12 - link


Reasons for the Decision
1. The appeal is admissible.
2. Referral of a question to the Enlarged Board of Appeal
2.1 According to Article 112(1)(a) EPC, a board of appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the Enlarged Board of Appeal if it considers that a decision is required in order to ensure uniform application of the law or to clarify a point of law of fundamental importance.
2.2 The respondent based its request for a referral to the Enlarged Board of Appeal on the fact that decision T 834/09, cited by the appellant in support of arguments concerning the public availability of documents D3 and D7, had reached conclusions which were divergent from the earlier case law and represented a conceptual shift by promoting the librarian to a member of the public.

9 May 2018

T 1931/14 - Preamble of method claim

EPO Headnote
In the context of a method it is important to differentiate between different types of stated purpose, namely those that define the application or use of a method, and those that define an effect arising from the steps of the method.
Where the stated purpose defines the specific application of the method, in fact it requires certain additional steps which are not implicit in the remaining features, and without which the claimed process would not achieve the stated purpose.
On the other hand, where the purpose merely states a technical effect which inevitably arises when carrying out the other remaining steps of the claimed method and is thus inherent in those steps, such a technical effect has no limiting effect because it is not suitable for distinguishing the claimed method from a known one.

Comments
  • The Board indicates that the holding of T 848/93, that the feature "for remelting" was a distinguishing feature, does not contradict the finding in T 304/08, that the feature "for reducing malodor" was not limiting a method claim. In T 304/08, the "for" feature indicated a technical effect. In T 848/93, the "for" feature "required that the method actually be carried out by melting a galvanic layer on a circuit board."
  • Compare the different approach in recent decision T 2170/13

EPO T 1931/14 -  link


Reasons for the Decision
1. The appeal is admissible.
2. Main request - Novelty
2.1 Claim 1 as granted defines a process for producing oxygen to fuel an integrated gasifier combined cycle power generation system. Thus the process concerns the production of oxygen for the purpose of fuelling a power generation system of the integrated gasifier combined cycle type, commonly referred to by its acronym IGCC.
The impugned decision concluded that the process defined in claim 1 lacked novelty on the consideration that claim 1 is merely related to a "process for producing oxygen" that is restricted to the production of oxygen in a cryogenic air separation system, while the stated use "for fuelling an IGCC plant" did not limit the claimed method but merely indicated its suitability for that purpose.
2.2 Claim 1 explicitly refers to a process and therefore belongs to the category of method claims that define their subject-matter in terms of physical activities (cf. G 2/88, OJ EPO 1990, 93, Reasons 2.2).

8 May 2018

T 1539/14 - Citrate cleaning benefit

Key points

  • This case is about novelty of a second non-medical use claim. The claim is for using citric acid in a (clainging) composition for treating a hard surface to provide a "next time cleaning benenefit". The prior art teaches a composition comprising citric acid that is used for the same purpose. However, the prior art does not identify citric acid as being the component responsible for the "next time cleaning benefit" .
  • According to the Board, this does not provide for novelty.
  • The Board cites T 892/94: " it can be inferred from decision G 2/88 that no novelty exists, if the claim is directed to the use of a known substance for a known non-medical purpose, even if a newly discovered technical effect underlying said known use is indicated in that claim".
  • Regarding the present case: "  the newly discovered technical effect of citric acid is not the purpose of the claimed use. [The] claimed use comprises the (activity of) treating a hard surface with a composition as defined in claim 1, whereby the citric acid ingredient of the composition provides (or contributes to providing) the treated surface with Next Time Cleaning Benefit. Thus, the actual purpose of the claimed use (activity) is that of providing NTCB to a hard surface. This is exactly the same purpose that is disclosed in D12 "



EPO T 1539/14 -  link

Reasons for the Decision
Main Request of the Proprietor
1. Interpretation of claim 1
1.1 As explicitly stated in the Proprietor's reply of 26 January 2015 (see page 1, paragraph "Interpretation of claim 1"), its interpretation of claim 1 (full wording under III, supra) is the one adopted by the Opposition Division (see IV, supra), namely that this claim defines
- the use of citric acid in a composition comprising a surfactant and citric acid
- in which a hard surface is treated with the composition
- to provide an NTCB [next time cleaning benefit] (i.e. to facilitate the removal of soil deposited on the surface previously treated with the composition).
In other words, the claimed use (activity) comprises treating a hard surface with a composition as defined in claim 1, whereby the citric acid ingredient of the composition provides (or contributes to provide) the treated surface with an NTCB.
1.2 The Board holds that this interpretation is correct. Considering that based on this interpretation also adopted by the Proprietor, the Board reached a negative conclusion as regards the novelty of the claimed subject-matter, no further details regarding the reasons for adopting this interpretation need to be given.
2. Lack of novelty - claim 1
2.1 The Board notes preliminarily that the wording of claim 1 at stake implies the ability of citric acid to provide a certain technical effect. Said effect is that when a hard surface is treated with a composition containing surfactants and citric acid, this latter ingredient provides (or at least contributes to provide) an NTCB to the treated surface.
2.1.1 It is undisputed among the Parties that the prior art does not disclose as such that citric acid may provide or contribute to providing this technical effect.

7 May 2018

T 0360/13 - German law from 1925

Key points

  • In this opposition appeal, the patentee filed a new auxiliary request just after the break for deliberation of the Board and just before the Board announced its decision (about clarity of the pending requests).
  •  The Board does not admit the request, which does not seem very surprising under Article 15(5) RPBA. However, for some reason the Board supports this decision with quoating a German book about procedural law published in 1925. I don't know the book, but it is described as "a classic monograph on German procedural law". 
  • As a comment, Article 125 EPC refers to the "principles of procedural law generally recognised in the Contracting States", not to German procedural law. Furthermore, the book does not seem to be in the EPO file, and I personally would be a bit surprised if a book about national law is quoted for the first time in the written decision (though of course perhaps the book was discussed earlier in the case at issue). 



EPO T 0360/13 - link

2.5 Den Stand des Verfahrens betreffend kommt im vorlie­gen­den Fall erschwerend hinzu, dass der neue Hilfs­antrag in der mündlichen Verhandlung vor der Kammer erst nach Beendigung der sachlichen Debatte eingereicht wurde, als die Sache bereits entscheidungsreif war.
2.5.1 Der Vorsitzende der Kammer hatte nämlich nach der De­batte über die Klarheit des Merkmals (i) die Antrags­lage festgestellt und erklärt, dass sowohl Anspruch 1 des Hauptantrages als auch Anspruch 1 des damals vor­lie­gen­den Hilfsantrages dieses Merkmal enthielten. Daher wären beide Anträge nicht gewährbar, falls die Kammer zu dem Schluss käme, dass das Merkmal nicht klar wäre. Je nach Beratungsergebnis könnte es somit zu einer Endentscheidung kommen. Erst nach der Beratungs­pause, jedoch vor der Verkündung einer Entscheidung erklärte die Beschwerdeführerin, dass sie den damaligen Hilfs­antrag dahingehend ändern wolle, das diskutierte Merk­mal (i) zu streichen.

4 May 2018

T 0976/11 - Surprise in OP before ED

Key points

  • During oral proceedings before the ED, the ED took another document as closest prior art.
  • "The [applicant] challenged the [examining] division's new inventive step objection, presented for the first time at the oral proceedings, by arguing that a high number of features of claim 1 [] such as "use of digital TV, [etc.]"  were not disclosed in the new closest prior art D7." " The examining division thereupon gave a break after which they announced that the division concluded that all features not explicitly mentioned in D7 were [considered trivial]"
  • " Thus, at this point in time, the examining division already closed the discussion on all requests then on file, without hearing the [applicant]'s comments as to which feature[] established an inventive step over D7 and how. [] Therefore the examining division has committed a substantial procedural violation through the violation of the appellant's right to be heard. " 



EPO T 0976/11 - link

Reasons for the Decision
1. Substantial procedural violation
1.1 The appellant submits in the statement setting out the grounds of appeal that it was not expecting the examining division to change at the oral proceedings the closest prior art from D1 to D7[]
1.2 The board however does not agree that the change of the closest prior art alone can constitute a substantial procedural violation. An examining division has the procedural discretion to revise its objection of inventive step, including the choice of the closest prior art, at any stage of the examination proceedings including the oral proceedings. Furthermore, even if one were to assume for the sake of argument that the division's reading of D7 is incorrect, misinterpretation of a document does not constitute a procedural violation (see "Case Law of the Boards of Appeal", Eighth Edition, IV.E.8.4.5, pages 1196 and 1197 of the English version).
1.3 It is however a different matter whether the change of the closest prior art was followed by actions safeguarding the appellant's right to be heard under Article 113(1) EPC, i.e. whether the appellant was given an opportunity to present its comments on the examining division's revised inventive step objection.
1.3.1 The board understands from the minutes of the oral proceedings that the appellant challenged the division's new inventive step objection, presented for the first time at the oral proceedings, by arguing that a high number of features of claim 1 of the then main request such as "use of digital TV, a data content delivery system, a plurality of TV servers, use of a single fast Ethernet, a firewall, a headend, content streaming" (see the minutes of the oral proceedings, page 1, last paragraph) were not disclosed in the new closest prior art D7.

3 May 2018

J 0013/16 - Restoration of priority by dO

EPO Headnote

1. If, in the international phase, a receiving Office (RO) has restored a right of priority under the "unintentional" criterion of Rule 26bis.3(a)(ii) PCT, the restoration is not effective in proceedings before the EPO acting as designated Office, since the EPO applies the "due care" criterion (Rule 49ter.1(b) PCT). In such cases [] the applicant must file a (new) request for restoration of a right of priority under Rule 49ter.2 PCT with the EPO acting as designated Office [within the period specified in Rule 49ter.2(b)(i) PCT] [i.e. within one month from the 31-month time limit or from the date of early entry]. For the purposes of Rule 49ter.2 PCT, the request filed with the RO under Rule 26bis.3(b) PCT cannot be taken into account in the proceedings before the EPO acting as designated Office.

2. In proceedings before the EPO, re-establishment of rights under Article 122 EPC is ruled out in respect of the period under Rule 49ter.2(b)(i) PCT for filing a request for restoration of a right of priority.

Key points

  • Rule 49ter.2 PCT allows for the filing of a request fo restoration of priority with the dO within 1 month from the 31-month time limit (for EPO) or from the date of early entry; independently of whether restoration of priority was requested with the rO during the international phase. The Board considers this to be analogous to RE (for the priority periond, Rule 136(1), second sentence, EPC , and because Rule 136 EPC rules out RE for the period for RE, the same applies to Rule 49ter.2 (following G 5/93, 1.1.3). 

EPO J 0013/16 (J 13/16) - link






3. Restoration of the right of priority claimed in the present application
3.1 An international application for which the EPO acts as designated Office and which has been accorded an international filing date is equivalent to a regular European application and is referred to as "Euro-PCT application" (Article 11(3) PCT and Article 153(2) EPC). However, this principle of equal treatment between a regular European application and a Euro-PCT application has to be applied in the light of Article 150(2) EPC. This provision stipulates that international applications filed under the PCT may be subject to proceedings before the EPO (first sentence) and that in such proceedings, the provisions of the PCT and its Regulations are to be applied, supplemented by the provisions of the EPC (second sentence). However, in the case of conflict, the provisions of the PCT and its Regulations prevail over the provisions of the EPC (Article 150(2), third sentence EPC).
3.2 Where the international application was not filed within the period of 12 months from the date of filing of the priority application, Rule 26bis.3 PCT stipulates that the applicant may file a request for restoration of the right of priority up to two months after expiry of the priority period.
In the international phase, restoration of the right of priority can be granted under both the "due care" and "unintentional" criteria (Rule 26bis.3(a)). This means that the receiving Office (RO) ascertains whether the failure to file the international application within the priority period
- occurred in spite of due care required by the circumstances having been taken ("due care" criterion), or
- was unintentional ("unintentional" criterion).
Rule 49ter.1 PCT foresees in its paragraph (a) that, where the RO has restored a right of priority under the "due care" criterion, that restoration must, subject to its paragraph (c), be effective in each designated State. However, in accordance with Rule 49ter.1(b) PCT), a decision by a RO to restore a right of priority based on the "unintentional" criterion is effective only in those designated States the applicable laws of which provide for restoration of the right of priority based on that criterion or on a criterion which, from the viewpoint of applicants, is more favorable than that criterion.