11 Nov 2019

T 2824/18 - Rule 137(5) and unity

Key points

  • In this appeal against a refusal, claim 1 as pending corresponds to claim 16 as originally filed. Claim 16 was not searched, claims 1-15 had been searched. The application was refused because the request did not meet the requirement of Rule 137(5) EPC according to the Examining Division.
  • The Board finds that claim 16 as filed has unity of invention with claims 4 and 5 as filed, which were searched. 
  • " Es ist nun für die Kammer nicht erkennbar, warum eine Getriebeeinrichtung, mit einer variablen Übersetzung (nach Anspruch 5), die gemäß Anspruch 16 mit einem Umlaufgetriebe realisiert werden soll, eine weitere Erfindung darstellen soll. Nach Ansicht der Kammer wird mit Anspruch 16 (wie ursprünglich eingereicht) lediglich eine besondere Ausführungsform einer Getriebeeinrichtung beansprucht." 
  • The Board does not comment on whether Rule 137(5) EPC is the relevant legal basis at all. To cite the Guidelines, H-II 7.2 "If the application is restricted to an unsearched but originally claimed invention, it can be refused under Rule 64 in line with G 2/92 [...] Rule 137(5) cannot be invoked. It does not apply when the applicant has not paid the search fee in respect of a non-unitary invention relating to the originally filed claims." (see also my article in epi Information 2018/2).



EPO T 2824/18 -  link



Sachverhalt und Anträge
I. Die Beschwerde richtet sich gegen die Entscheidung der Prüfungsabteilung des Europäischen Patentamts, die am 6. Juli 2018 zur Post gegeben wurde und mit der die europäische Patentanmeldung Nr. 11708194.3 aufgrund des Artikels 97 (2) EPÜ zurückgewiesen worden ist.
II. Die Prüfungsabteilung hat im Wesentlichen festgestellt, dass mit den Änderungen des Anspruchs 1 gemäß Hauptantrag und Hilfsantrag 1 auf einen nicht recherchierten Gegenstand gewechselt wurde, insbesondere dass die Merkmale des Anspruchs 16 wie ursprünglich eingereicht zu einer weiteren - nicht recherchierten -Erfindung gehören und die dem geltenden Anspruch 1 gemäß Hauptantrag und Hilfsantrag 1 hinzugefügten Merkmale zweifelsfrei der Erfindung des ursprünglichen Anspruchs 16 zuzuordnen sind, siehe Punkt 32 der Entscheidung. Daher waren die Anträge gemäß Regel 137 (5) EPÜ nicht zuzulassen.


Entscheidungsgründe
1. Die Prüfungsabteilung hat im Wesentlichen festgestellt, dass die Merkmale des geltenden Anspruchs 1 zur Erfindung des ursprünglichen Anspruchs 16 gehören und damit zu der weiteren, nicht recherchierten Erfindung (Punkt 32 der Entscheidung).

8 Nov 2019

T 0377/17 - Everybody has a secret recipe

Key points

  • The patent is directed to a composition comprising concrete, which can be used as construction material. The patent does not contain a detailed example; the question is whether the patent provides a sufficient disclosure.
  • The patentee argues that the skilled person who wants to reduce the claimed invention to practice would start from the recipe that is used in 'his' plant. 
  • The patentee submits, in rough translation, that each manufacturer of concrete has his own recipe, which is known to the respective skilled person. These recipes form know-how, which is not publicly available and should also not made public, accordingly the patentee had refrained from giving a specific recipe in the patent at issue.
  • The Board is not persuaded. "Ein solcher Ansatz steht jedoch nicht im Einklang mit der ständigen Rechtsprechung der Beschwerdekammern und insbesondere nicht mit den oben zitierten Entscheidungen, wonach die Offenbarung der Erfindung den Fachmann, allenfalls unter Zuhilfenahme des allgemeinen Fachwissens, in die Lage versetzen muss, die Erfindung nachzuarbeiten. Die Rezepturen der verschiedenen Porenbetonhersteller und insbesondere die Wirkstoffgehalte und Reaktivitäten der verwendeten Rohstoffe gehören jedoch gerade nicht zum allgemeinen Fachwissen, da, wie die Beschwerdeführerin vorträgt, diese Informationen nicht öffentlich zugänglich sind; sie sind vielmehr geheimes Knowhow der jeweiligen Unternehmen." 
  • I recall this scenario from another case (about biotechnology). Each manufacturer in the field at issue had his own well-guarded bacteria for making the compound X with a high yield, but none of them was publicly available.

EPO T 0377/17 -  link

II. Anspruch 1 in seiner erteilten Fassung (Hauptantrag im Beschwerdeverfahren) hat folgenden Wortlaut:
"1. Hydrothermal gehärtetes Porenbetonmaterial in Form von als geschnittene Formkörper vorliegenden Porenbetonsteinen, aufweisend ein Feststoffsteggerüst, das Mikroporen aufweist und aus einem Schaum resultierende oder durch einen Treibprozess erzeugte Poren umgibt, wobei das Feststoffsteggerüst aus Calziumsilikathydrat-Phasen ausgebildet ist, über 50 Masse-% 11 Å-Tobermorit aufweist und bis zu 10 Masse-% Restquarzkörner enthält, wobei das Porenbetonmaterial eine Steindruckfestigkeit von mindestens 2,5 N/mm**(2)und eine Wärmeleitfähigkeit von höchstens 0,09 W/mK aufweist und die Rohdichte zwischen 300 und 400 kg/m**(3) beträgt."

7 Nov 2019

T 2300/16 - Rule 137(5) case

Key points

  • The Examining Division had refused the application on the ground that the amended claims did not comply with Rule 137(5) EPC. The Board does not agree.
  • " According to [Rule 137(5) EPC], amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept." The Board focuses on the "single general inventive concept" part of Rule 137(5) EPC.
  • The Board: "It follows from the above that the [added] "road selection feature" combines with the [...] "forecasting feature" [of the original claims] to form a single general inventive concept. In fact, rather than introducing a different general inventive concept, the amendment made aims at restricting the invention to a particular aspect of said general inventive concept, namely using the reliable forecasting for selecting a road to be followed which allows making a more efficient use of the automotive vehicle (e.g. by allowing an optimized fuel consumption) during a journey." 
  • "In view of the above and since the Examining Division has not given other grounds for the refusal apart from the non compliance with Rule 137(5) EPC, the contested decision must be set aside." 
  • The Board's decision seems entirely correct to me. 



EPO T 2300/16 -  link

Reasons for the Decision
1. Rule 137 was amended by decision of the Administrative Council of 25 March 2009 and the amended Rule applies to European patent applications for which the European search report or the supplementary European search report was drawn up on or after 1 April 2010 (see OJ EPO 2009, 299, in particular Article 1, point 7, and Article 2(2) of the decision). In the present case the International Search Report (which takes the place of the European search report, see Article 153(6) EPC) was drawn up on 24 February 2010, and therefore the amended Rule does not apply. It is thus the text of Rule 137 EPC in force before the above-mentioned decision of the Administrative Council that applies. Paragraph (4) of this Rule contains the same provisions of amended Rule 137(5) EPC, and therefore the correct legal basis for the Examining Division's refusal is Rule 137(4) EPC in force before the decision of the Administrative Council.

2. According to Rule 137(4) EPC, amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept.

3. The Examining Division's objection is exclusively concerned with the feature added to the characterizing portion of claim 1, according to which a road to be followed is selected by onboard computation means based on the forecasting of the magnitude of the data associated to a given journey. According to the Examining Division, the originally claimed invention was concerned with providing reliable forecasting, whilst the added feature is concerned with selecting a road to be followed (see point 2.5 of the contested decision).

4. The Board does not agree with the Examining Division's conclusions for the following reasons.

It is clear from the wording of the claim that the added feature concerning the selection of a road to be followed is not to be taken in isolation from the forecasting of the magnitude of the data associated to a given journey, since the selection of the road is based thereupon. Therefore, the "road selection feature" combines with the "forecasting feature". The question is whether they combine to form a single general inventive concept.

Turning to the disclosure of the application as filed, it is apparent that the originally claimed invention relates to a method for forecasting the evolution of the magnitude of a data associated to a journey of an automotive vehicle via a mathematical model. The method of originally filed claim 1 foresees, inter alia, running the vehicle on a reference trip (feature b of claim 1) and adjusting a mathematical function based on measurements made during the reference trip (feature e of claim 1). Accordingly, the Examining Division is correct in stating that the originally claimed invention is concerned with "reliable forecasting", since the "adjusting" feature results in a reliable, or rather a more accurate, forecasting, see also page 2, lines 23 to 26 of the description of the application as filed.

The further question that arises is what is the purpose of said reliable forecasting. In accordance with the disclosure of the application as filed, the reliable forecasting serves to "efficiently use computerized systems in order to select the best running conditions for a vehicle" (page 2, lines 3 to 5). The "best running conditions" are, in particular, those that allow optimizing fuel consumption by forecasting the fuel consumption (see page 2, lines 26 to 28; see the examples 1 to 3): an accurate forecasting of the fuel consumption enables the onboard computation means to efficiently select a road to be followed and/or a gear to be used during a given journey (see page 2, lines 26 to 28).

Although in accordance with the disclosure of the application as filed the "forecasting feature" and the "best running conditions" are not exclusively related to fuel consumption (see page 9, lines 13 to 17: forecasting of engine load or pollutant emissions being other possibilities), and fuel consumption is not exclusively related to the selection of a road to be followed (see page 2, line 28 and page 9, lines 18 to 20: a gear to be used or a driving strategy can instead be selected for a given journey), it is apparent that the general inventive concept is to use the reliable forecasting in order to make a more efficient use of the automotive vehicle during a journey.

It follows from the above that the "road selection feature" combines with the "forecasting feature" to form a single general inventive concept.

In fact, rather than introducing a different general inventive concept, the amendment made aims at restricting the invention to a particular aspect of said general inventive concept, namely using the reliable forecasting for selecting a road to be followed which allows making a more efficient use of the automotive vehicle (e.g. by allowing an optimized fuel consumption) during a journey.

5. In view of the above and since the Examining Division has not given other grounds for the refusal apart from the non compliance with Rule 137(5) EPC, the contested decision must be set aside.

6. Since, however, novelty and inventive step (in particular) were not addressed in the decision under appeal, the board exercises its discretion under Article 111 (1) EPC to remit the case to the Examining Division for further prosecution.| |

Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the Examining Division for further prosecution.

6 Nov 2019

T 1662/14 - Article 54(3) doc claims priority from CIP

Key points

  • This opposition appeal deals with priority and Art.54(3) in a situation that is suitable for as inspiration for EQE Paper D.
  • D2 is an Article 54(3) document if it's priority to D3 is valid. D3 is, however, a continuation in part from D11; D3 was also granted.
  • The question is if D2 is the 'first filing' or not. D11 is a non-published US application of the predecessor in title of the applicant of D2 and has the same technical content as the original application from which the opposed European patent is granted. D11 as said is also the parent of D3. 
  • " Hence, D11 has left some rights outstanding within the meaning of Article 87(4) EPC. This was not in dispute between the parties. It follows that D11 - not D3 - is the first application within the meaning Article 87(1) EPC in respect of the invention it discloses. As a consequence, D2 cannot validly claim priority from D3 for that invention." 
  • The Board  "the disclosure of D2 contains more specific elements in that respect. In other words, D2 discloses a system comprising additional technical features not disclosed in D11"  
  • " Hence, the priority claim of D2 is valid in respect of such a system [with additional features', for which D3 is the first application [and not D11]. That specific system belongs to the state of the art for the patent in suit according to Article 54(3) EPC." 
  • " The main request is not allowable for lack of novelty of the subject-matter of claim 1 over D2 (Article 52(1) EPC in conjunction with Article 54(1) and (3) EPC)." 
  • " Claim 1 of the fifth auxiliary request comprises an undisclosed disclaimer. The criteria to be fulfilled for an undisclosed disclaimer to be allowable under Article 123(2) EPC are set out in decision G 1/03 (point 2.1 of the Order), as confirmed in decision G 1/16 (Order). As far as the present case is concerned, such a disclaimer may be allowable to restore novelty by delimiting a claim against the state of the art under Article 54(3) EPC."
  • " The disclaimer of the fifth auxiliary request, however, does not restore novelty over D2. [...] Since the undisclosed disclaimer does not restore novelty over D2, it does not fulfil the criteria set out in G1/03. Hence, the fifth auxiliary request is not allowable either for non-compliance with Article 123(2) EPC." 
  • The Art.54(3) document D2 entered the EP phase as EP1519767 and became deemed withdraw in 2006 due to non-payment of the renewal fee. 
  • For the aficionados, the Board actually applies Article 54(3) EPC 1973, as the Board states that "D2 is an international application which entered the European phase with publication No. EP-A-1 519 767, designating all contracting states designated in the patent in suit." See also my explanation of  Article 54(3) EPC 1973 in the post about T2333/15.

EPO T 1662/14 -  link

4. The state of the art
4.1 The assessment of novelty hinges on the question of whether D2, or at least part of its subject-matter, is state of the art according to Article 54(3) EPC for the patent in suit.
4.2 D2 is an international application which entered the European phase with publication No. EP-A-1 519 767, designating all contracting states designated in the patent in suit.
D2 has a publication and a filing date both after the date of filing of the patent in suit. However, it claims priority from D3, a US application of the predecessor in title of the applicant of D2 with the same technical content as D2, which was filed before the date of filing of the patent in suit.

5 Nov 2019

T 1248/12 - Data privacy is not a technical problem

Key points
  • This examination appeal concerns a patent application for a computer-implemented "privacy-preserving data mining protocol". This involves collecting data from sources, e.g. patient records, and aggregating the data together, as well as removing individually identifiable information. For details, I must refer to the - somewhat unusual - claim 1 below ("the Board had doubts whether claim 1 defined the data processing performed by the various processors in a sufficiently clear manner").
  • Turning to inventive step, "it is established case law that non-technical features cannot contribute to inventive step. Therefore, non-technical features may legitimately be part of the problem to be solved (T 641/00 - Two identities/COMVIK), for example in the form of a requirement specification given to the skilled person to implement."  
  • According to the Board, "de-identifying data, by removing individually identifiable information, and by aggregating data from a plurality of sources, is not technical. It aims to protect data privacy, which is not a technical problem. The problem of data privacy is not synonymous with data security. Data privacy concerns what information to share and not to share (and making sure that only the information that is to be shared is shared), whereas data security is about how to prevent unauthorised access to information."
  • As a comment, a feature is indeed excluded under the Comvik approach if it "contributes only to the solution of a non-technical problem, e.g. a problem in a field excluded from patentability" (GL G-VII,5.4). However, I'm as of yet not convinced that features which are more elegant than "removing individually identifiable information" (e.g. adding carefully calibrated noise data) should be excluded for inventive step. 
  • As a further comment, the Board could have explained in more detail why data privacy is not a technical problem. The Board's observation that it is not synonymous with data security, is, of course, correct as such but does not fully exclude that it is a technical problem; clearly, data security is not the only technical problem. In the same way, the observation that "data privacy concerns what information to share and not to share" does not seem to provide fully conclusive reasoning, in particular, it seems to assume some rule or case law stating that considerations about sharing information are never technical (i.e. the major premise in the syllogism is stated at least not explicitly). 
EPO T 1248/12 -  link


VI. Claim 1 of the main request reads:
A Privacy Preserving Data-Mining Protocol, operating between a secure "aggregator" data processor and at least one of "source-entity" data processor, wherein the "aggregator" and the "source-entity" processors are interconnected via an electronic data-communications topology, and the protocol includes the steps of:
A) on the side of the "aggregator" processor:
(i) from a user interface--accepting a query against a plurality of the predetermined attributes and therewith forming a parameter list,
(ii) via the topology--transmitting the parameter list to each of the "source-entity" processors,
(iii) via the topology--receiving a respective file from each of the "source-entity" processors,
(iv) aggregating the plurality of files into a data-warehouse,
(iv[sic]) using the parameter list, extracting query relevant data from the data-warehouse,
(vi) agglomerating the extract, and
(vii) to a user interface--reporting the agglomerated extract; and
B) on the side of each processor of the at least one "source-entity" processors:
(i) accumulating data-items wherein some of the data-items have privacy sensitive micro-data,
(ii) organizing the data-items using the plurality of predetermined attributes,
(iii) via the topology--receiving a parameter list from the "aggregator" processor,
(iv) forming a file by "crunching together" the data-items according to the parameter list,
(v) filtering out portions of the file which characterize details particular to less than a predetermined quantity of micro-data-specific data-items, and
(vi) via the topology--transmitting the file to the "aggregator" processor.
IX. Claim 1 of the third auxiliary request adds to the second auxiliary request:
"which may include specific individuals' names or IDs" at the end of feature A)(i);
"including de-identified results" after the word "file" in feature A)(iii);
"wherein 'crunching together' includes de-identifying results by aggregating results to a tabular report" at the end of feature B)(iv).


3. Main request, inventive step
3.1 The examining division found that the data mining protocol in claim 1 was an administrative scheme, which, when considered on its own, constituted excluded subject-matter according to Article 52(2) and (3) EPC. The examining division could not identify any technical problem solved by the data mining. In the examining division's opinion, the aim of the data processing was rather to comply with legal requirements.
3.2 The Board shares the examining division's view that de-identifying data, by removing individually identifiable information, and by aggregating data from a plurality of sources, is not technical. It aims to protect data privacy, which is not a technical problem. The problem of data privacy is not synonymous with data security. Data privacy concerns what information to share and not to share (and making sure that only the information that is to be shared is shared), whereas data security is about how to prevent unauthorised access to information.
3.3 It is established case law that non-technical features cannot contribute to inventive step. Therefore, non-technical features may legitimately be part of the problem to be solved (T 641/00 - Two identities/COMVIK), for example in the form of a requirement specification given to the skilled person to implement.

4 Nov 2019

T 1082/13 - Tax calculation via a network

Key points

  • This examination appeal deals with a "computer-implemented method for applying tax legislation to a transaction". The method steps have nothing to do with tax legislation but are directed to sending a calculation request to an available server. Unavailable servers are skipped based on a 'timeout'. 
  • The Board: " the notional business person cannot be assumed to be so blind that he does not even know about the existence of computers or the Internet. The notional business person, as introduced in T 1463/11 [CardinalCommerce], is to be interpreted within the framework of the well established COMVIK-approach of T 641/00 (see T 1463/11, [] "... in line with the Comvik principle..."). Consequently, the notional business person knows all about the business-related requirements specification and knows about the fact that such business-related concepts can be implemented on a computer system (stand-alone or networked, including the Internet). What the notional business person does not know, however, is how exactly it can be implemented on a computer system. This is in the sphere of the technical expert and subject to the assessment of inventive step." (hyphens added)


EPO Headnote
1. The assessment of technical character of a claim does not require a reference to the prior art following the established "whole contents approach" (see reasons, point 1.1).
2. A "timeout" condition claimed in general and broad terms that cover non-technical interpretations is in the domain of the non-technical person and part of the requirements specification given to the technical expert for implementation on a computer system (see reasons, point 2.4).
3. The "notional business person", as introduced in T1463/11 [CardinalCommerce], is to be interpreted within the framework of the well established COMVIK-approach according to T0641/00. Consequently, the notional business person knows all about the business related requirements specification and knows about the fact that such business related concepts can be implemented on a computer system. The choice of where to do a calculation in a distributed system is not necessarily technical, but can also be driven by administrative considerations. What the notional business person does not know, however, is how exactly it can be implemented on a computer system. This is in the sphere of the technical expert and subject to the assessment of inventive step.
4. When referring to prejudices, it has to be carefully analysed, whether it is actually a technical prejudice or, in fact, a business prejudice (e.g. just a new way of organising a business transaction that goes against traditional ways of organising it - see reasons, point 4.8).


T 1082/13 -   link

"3. A computer implemented method for applying tax legislation to a transaction comprising:
- receiving a request (118; 318) for performing a tax calculation via a network, the request carrying a first mark-up language document (108) containing transaction data,
- performing the tax calculation,
- generating a response (144; 344'), the response carrying the first mark-up language document and a result of the tax calculation,
- forwarding the request to a replacement system (304', 336') via the network, if the means for performing the tax calculation and/or the means for generating the response are unavailable,
wherein the replacement system is determined by:
- submitting a predefined UDDI query to a UDDI registry (700) via the network;
- receiving a response to the UDDI query, the response comprising an indication of a plurality of potential replacement web services (702);
- calculating a ranking value for each web service of the plurality of potential replacement web services (704);
- sorting the plurality of potential replacement web services (706) by ranking value to provide a sorted table (660);
- storing the sorted table (708);
- determining the replacement system as the highest ranking web service in the sorted table (710),
- determining whether a response to the forwarding of the request to the replacement system is received before a timeout condition is met, wherein in case of meeting the timeout condition the highest ranking web service is deleted from the sorted table and said steps of
- determining the replacement system as the highest ranking webservice in the sorted table (710) and
- determining whether a response to the forwarding of the request to the replacement system is received before a timeout condition is met are repeatedly carried out."


Reasons for the Decision
4.7 During oral proceedings the appellant referred to decision T 1463/11 (CardinalCommerce) and argued that the present invention was comparable to the centralisation of individual authentication initiative plug-ins in a separate server that can be accessed by several merchant servers, which was held to be technical and non-obvious (see reasons, point 21). However, in T 1463/11 the alleged non-technical idea (centralising authentication services) only arose in connection with technical aspects (avoiding maintenance of software plug-ins in merchant computers). In the present case, as explained above, the idea of the timeout functionality comes from the business requirements that do not involve any technical knowledge.
4.8 The appellant also argued that a distributed computer system is a complete black-box for the non-technical person so that he would not be able to conceive of any aspects of the invention that would subsequently have to be implemented in the computer, such as a timeout. However, what has been referred to above as the quasi-technical term "timeout" really originates from the business person as the requirement of not waiting too long for a response. The technically skilled person translates this requirement into a "timeout" involving a timer element as a matter of routine design as mentioned above.
Moreover, the notional business person cannot be assumed to be so blind that he does not even know about the existence of computers or the Internet. The notional business person, as introduced in T 1463/11, is to be interpreted within the framework of the well established COMVIK-approach of T 641/00 (see T 1463/11, reasons of the decision, point 16 "... in line with the Comvik principle..."). Consequently, the notional business person knows all about the business related requirements specification and knows about the fact that such business related concepts can be implemented on a computer system (stand-alone or networked, including the Internet). What the notional business person does not know, however, is how exactly it can be implemented on a computer system. This is in the sphere of the technical expert and subject to the assessment of inventive step.
The choice of where to do a calculation in a distributed system is not necessarily technical, but can also be driven by administrative considerations (e.g. where the data is needed, collected or to be presented etc. following the business requirements specification). When referring to prejudices, it has to be carefully analysed, whether it is actually a technical prejudice or, in fact, a business prejudice (e.g. just a new way of organising a business transaction that goes against traditional ways of organising it etc.). In the present case and in view of the subject-matter according to claim 3, the Board does not see any such technical prejudice, which might have had to be overcome in a non-obvious way similar to what was decided in decision T 1463/11.
4.9 The appellant's arguments provided with the statement setting out the grounds of appeal, with letter dated 22 November 2018 and during oral proceedings do not convince for the aforementioned reasons.
4.10 Accordingly, the Board judges that in the absence of any technical contribution beyond the straight-forward computer-implementation, the subject-matter of claim 3 does not involve an inventive step (Article 56 EPC) over the teaching of D3 combined with the skilled person's common general knowledge.

1 Nov 2019

T 2049/12 - Functional data is not always technical

Key points
  • This is an examination appeal concerning a patent application directed to software. 
  • The Board: " A common misconception regarding the PHILPS decision [T 1194/97] is that there are only two kinds of data - cognitive and functional - and that functional (i.e. non-cognitive) data is always technical. The relevant question for assessing whether a data structure has technical character is rather whether it produces a technical effect. In the present case, the Board considers that there is no technical effect. Therefore, the claimed data structure does not provide an inventive step (Article 56 EPC)." 
  • " Furthermore, the activity of programming is also excluded under Article 52(2)(c) and (3) EPC, because it is a mental act []. The choice of program structure, including the choice of data structures, belongs to the activity of programming. Well structured code helps the programmer in performing this activity, because the code is easier to understand, maintain, and adjust, but, since programming is not technical, this is not a technical effect." 

T 2049/12 (Data structure for defining transformations / MICROSOFT) - link

Reasons for the Decision
5. Inventive step (Article 56 EPC)
5.1 In the oral proceedings, inventive step was discussed starting from the prior art described in the application, from paragraphs [001] to [004]. As mentioned above, it was known to provide multiple services in a sequence, and to transform data provided from one service to another. In the prior art, those transformations (i.e. from "latitude" to "lat" and from "longitude" to "long") were implemented using "specific dedicated code" for each of the transformation. The dedicated code was, of course, stored on some computer-readable medium.
5.2 The prior art and the invention achieve the same transformations. The difference lies in how those transformations are defined. In the prior art, they are defined in "dedicated code", whereas in the invention, they are defined in a data structure having service identification fields, a transformation class field and transformation parameter fields.

31 Oct 2019

T 0697/17 - Technical features, contributions, considerations and decisions

Key points

  • This examination appeal relates to a software patent application directed to a method for 'updating values' in a database, in particular, a database with a "complex structured type column". The question is which features are technical for inventive step. Preliminary, the Board overrules the Examining Division's rejection based on Art. 52(2)(a) EPC.
  • For patentability: "Claim 1 therefore defines a method performed in a relational database system. In principle, the terms used in a claim should be given the common meaning they have in the relevant technical field. In computer science, the term "relational database system" relates to a software system implemented in one or more computers for storing, controlling and processing data. Carrying out a method performed in a relational database system involves the use of a computer system." In line with G3/08, the computer-implemented method is not excluded.
  • On to inventive step and the identification of the technical features. "in practice it may be difficult to distinguish between features making a technical contribution and those not contributing, especially in cases in which the non-technical aspects are tightly intermingled with the technical features" 
  •  "From none of the above cited decisions can it be concluded that execution time, processing speed, latency, amount of memory required or other such program performance measurements are per se non-technical measurements which cannot play a role in establishing a technical effect and determining whether a technical contribution is present. The above cited decisions merely teach that an improvement with regard to one of those performance measurements alone ("the sole", "not sufficient", "in itself"), is insufficient to establish technical character. In order to decide whether such an improvement is a technical effect it has to be further determined how the improvement is achieved, for instance whether it is the result of technical considerations" 
  • " In other words, features make a technical contribution if they result from technical considerations on how to for instance improve processing speed, reduce the amount of memory required, improve availability or scalability, or reduce network traffic, when compared with the prior art or once added to the other features of the invention, and contribute in combination with technical features to achieve such an effect" (question for the readers with more experience in this field: does the word 'and'  indicates two cumulative or alternative requirements here?)
  • " On the other hand, such effects and the respective features are non-technical if the effects are achieved by non-technical modifications to the underlying non-technical method or scheme (for example, a change of the business model, or a "pure algorithmic scheme", i.e. an algorithmic scheme not based on technical considerations)." 
  • " A possible test for determining whether non-technical features are based on technical considerations is to consider whether the non-technical features would have been formulated by a technical or by a non-technical expert (T 817/16, reasons 3.12 [see recent post, link to be added]). Since computer programming involves technical and non-technical aspects (G 3/08, reasons 13.5.1; T 1463/11 of 29 November 2016, reasons 21), it is difficult to apply that test to distinguish abstract algorithmic aspects from "technical programming" aspects. In that case, the test would have to be whether the features were determined by a "programmer as such" or by a "technical programmer". It may therefore be preferable to directly determine whether the decision to adopt the non-technical features is a technical one (T 1463/11, reasons 21) or whether it required "technical considerations beyond 'merely' finding a computer algorithm to carry out some procedure" (G 3/08, reasons 13.5)." 


EPO T 0697/17 -  link


VII. Claim 1 of the main request reads as follows:
"A method of updating values in a complex structured type column having a hierarchical structure in a relational database system, wherein the complex structured type consists of a set of fields, properties and methods and wherein each field or property is one of a scalar type, a complex structured type itself or a multiset in which each element is a complex structured type, the method comprising the steps of:
parsing by a parser a database modification statement and producing a description of changes to the database proposed by the database modification statement;
producing by a query optimizer an execution algorithm that will implement the database modification;
computing by a query execution engine that uses the execution algorithm a data structure of the database modification statement to determine which values within a complex structured type column are to be updated, wherein the data structure represents values in the complex structured type column as an aggregation of changes to the values at any level of the hierarchical structure of the complex structured type column; and
applying by the query execution engine the changes to the values in the complex structured type column that are to be updated."


Reasons for the Decision


1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

Invention

2. The invention concerns a relational database system and a corresponding method for updating values in a complex-structured-type column. According to the description, the purpose of the invention is to achieve complex and partial updates efficiently (see paragraph [0001] of the international publication).

30 Oct 2019

T 2575/19 - Debit order in annotations field was valid!

Key points

  • "On 19 June 2019 the applicant filed a notice of appeal using EPO form F1038E, which contained a debit order of the full amount of the appeal fee" ... " Whereas the field "Fees" of the form was duly filled with the indication of the amount to be paid, the field "method of payment" was left unspecified and the "annotations" field of the form was used instead to indicate the number of the deposit account." ... " The appeal fee was not debited from said account." (as a comment, the current EPO Online Filing Software makes it very easy to make this mistake, it also allows the filing of such 'invalid' debit order without giving any clear warning).
  • The Board: " In the case at hand, the debit order was made using form F1038E, that is to say via an expressly allowed form in a electronically processable format." 
  • " In this respect, the board considers that a debit order made using an allowed format cannot be construed as being in a "different" and thus invalid "format such as a PDF attachment", pursuant to point 5.1.3 ADA (2017), even if it was made in an incorrect field of form F1038E." 
  • " The board thus concludes that under the ADA (2017), there is no legal basis for holding invalid a debit order given in the annotation tabs of form F1038E, despite the mentioned EPO practice or the fact that it was published"
  • However, this applies only until 1 October 2019 because "the board notes that the revised version of the ADA, as amended by decision of the President dated 20 August 2019 (Supplementary publication 4, OJ EPO 2019) and in force since 1 October 2019, seems to confirm this finding, as it now expressly codifies the pertinent EPO practice. New point 5.1.3 now explicitly specifies that "Debit orders submitted in any other way [...] or using a different format such as a PDF attachment or the annotation field in the online forms, are invalid and thus will not be carried out"
  • As a comment (added 30.10.2019), this holding, of course, applies equally to all fees paid "in the annotations field" in the first instance proceedings, in particular, further processing fees. If the notice of loss of rights was issued less than 2 months ago, one may still request a decision under Rule 112(2) EPC. If a request for re-establishment has already been filed, the question arises what the effect of the present decision is. 
  • One minor quibble, the Board's order  is that "The appeal fee is deemed to have been paid on 19 June 2019." In my view, "The appeal fee was paid on 19 June 2019" would have been more precise because the verb "deem" is used in law " to establish a legal fiction either positively by "deeming" something to be what it is not or negatively by "deeming" something not to be what it is" (wiki)



EPO T 2575/19 - link


Summary of Facts and Submissions

I. By a decision despatched with reasons on 30 April 2019, the Examining Division refused European patent application No. 12 005325.1.
II. On 19 June 2019 the applicant filed a notice of appeal using EPO form F1038E, which contained a debit order of the full amount of the appeal fee from deposit account 28000837.
Whereas the field "Fees" of the form was duly filled with the indication of the amount to be paid, the field "method of payment" was left unspecified and the "annotations" field of the form was used instead to indicate the number of the deposit account.
III. The appeal fee was not debited from said account.
[...]

Reasons for the Decision
1. The only purpose of this interlocutory decision is to determine whether the appeal fee should be deemed to have been paid in time, even though it was not debited by the EPO.
2. Under Article 108 EPC, notice of appeal shall be filed within two months of the notification of the decision. Notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid.

T 2360/13 - Coriolis flow meter software

Key points

  • In this somewhat older decision (issued 26.11.2018) the Board finds claim 1 to be inventive. Claim 1 is directed to " a method for providing ordering and configuring of flowmeters, comprising: in a server, receiving ...".
  •  " the claimed method comprises two distinct phases, namely a first phase involving the selection and ordering of the flowmeter, and a second phase involving the configuration of the flowmeter after the user has received the selected flowmeter." 
  • "the first phase of the claimed method does not go beyond the obvious application of the disclosure of document A1 to a remote ordering client-server system and the subsequent transmission of an order for the selected flowmeter."
  • " In the board's view, however, the claimed configuration step goes [of the second phase], in the technical context of the claimed method, beyond a mere communicating with other devices, and in particular with a server, in a network, and requires, as submitted by the appellant, the installation of a configuration application in the flowmeter and therefore the adjustment of the operational characteristics of the flowmeter." 
  • " claim 1 has been amended during the appeal proceedings to require that the flowmeter is remotely configured over the network by connecting the remote computer connected to the server to the flowmeter. Neither document D5, nor the remaining documents on file, disclose or suggest remotely configuring a flowmeter, not within the communications network in which the flowmeter might, in operation, be integrated, but by specifically connecting the flowmeter connected to the remote computer to the same server and over the same network previously used for carrying out the operations of selecting and subsequently ordering the flowmeter."


1. A method for providing ordering and configuring of flowmeters, comprising:
in a server (205),
receiving (415) input flow stream parameters over a network (220) from a computer (210) that is remotely located from said server;
determining (420) flowmeter parameters from said input flow stream parameters;
determining (425) whether at least one flowmeter is suitable for said flowmeter parameters;
transmitting (435) information on said at least one flowmeter to said computer over said network for display to a user;
receiving (440) a selection of one of said at least one flowmeter displayed to said user from said computer over said network;
transmitting (475) an order for said selected flowmeter; and
after said user receives said selected flowmeter, remotely configuring said selected flowmeter (477) over said network (220), by connecting the remote computer (210) connected to said server (250) to said selected flowmeter.


EPO T 2360/13 -  link


3.2 Claim 1 is directed to a method allowing a user to select and order a flowmeter and, upon reception of the flowmeter, to configure the flowmeter, using a computer connected to a server over a network and remotely located from the server. Therefore, as held by the examining division in the contested decision in respect of the independent method claim of the requests then on file, the claimed method comprises two distinct phases, namely a first phase involving the selection and ordering of the flowmeter, and a second phase involving the configuration of the flowmeter after the user has received the selected flowmeter.
3.2.1 As regards the first phase, in its decision the examining division essentially held in respect of the independent method claim of the requests then on file that
- the features relating to the selection and ordering of the flowmeter (see the claimed steps of receiving input flow stream parameters, determining the corresponding flowmeter parameters, determining flowmeters suitable for the flowmeter parameters, transmitting to a user information on the suitable flowmeters, receiving a selection by the user of one of the suitable flowmeters, and transmitting an order for the selected flowmeter) pertained to an administrative method, and the ordering phase carried out general purpose administrative data processing;
- having regard to the structural elements of the claimed method (i.e. the server, the network, and the remote computer), the closest state of the art was a notoriously known general purpose computer system such as a client-server system;
- remote order placing mechanisms for different products, such as cars, mobile phones, etc., on the basis of parameters set by a user were already known in the state of the art (see document D1, abstract, together with column 1, line 3 to column 8, line 27; and document D3, abstract), and
- it was obvious for the skilled person to implement the administrative method of remotely allowing the selection and then the ordering of a flowmeter into an appropriate general purpose computer system as claimed (Article 56 EPC 1973).

29 Oct 2019

T 1046/14 - Dragging icons on touch screen


Key point

  • In this somewhat older decision (26.11.2018), the Board finds claim 1 to be inventive. The claim is directed to "a method of displaying an icon attributed to an executable function in a terminal having a touchscreen".
  • " D1 discloses control means for manipulating an object displayed on a touch screen." 
  • "  the appellant has convincingly argued that the objects in D1 are not icons in the sense of claims 1 and 8. " 
  • " an icon in D1 [is] a symbolic representation of a computer function which is used for manipulating an object. Furthermore, the entire teaching and the different manipulations described in document D1 solely relate to an object, never to the icon. An object is described as having an "object type", specifying the shape and physical properties of the object (see column 8, lines 21 to 25: "weight", "hardness", "frictional resistance", "center of gravity")." 
  • " the objective technical problem may indeed be formulated, as argued by the appellant, as how to improve the system so that an icon of D1 associated with an executable function, not an object, can be moved on the touchscreen while at the same time preventing unintentional displacement of the icon.
  • The skilled person will not find in D1 any hint at the possible manipulation of an icon. They would not consider applying the mechanisms for moving objects on the touchscreen to moving the icons, since there are fundamental differences between an icon and an object, such as the above-mentioned types and physical properties (e.g. gravity, friction). " 




EPO T 1046/14 -  link

VI. Claim 1 according to the main request reads as follows:
"A method of displaying an icon attributed to an executable function in a terminal having a touchscreen (140), the method including:
- displaying the icon (141) and fixing the icon to a first position on the touchscreen such that the icon can not be moved away from the first position by a touch-and-drag action;
characterized by:
- if the icon is touched for a predetermined time, releasing (S27) the position fixation of the icon such that the whole icon can be moved away from the first position to a second position by a touch-and-drag action; and
- displaying a first indication to visually inform a user that the position fixation of the icon is released, wherein the displayed first indication includes at least one of a graphical indication, an animation, and a text message,
wherein the fixed icon is available to a user before the fixed icon is released."


3. Main request - inventive step
3.1 Prior art D1
D1 discloses control means for manipulating an object displayed on a touch screen.
[...]
 D1 thus discloses a manipulation of an object which is similar, in terms of the movement and display of images on the screen, to the touch-and-drag and fixing actions described in the application.

28 Oct 2019

T 0064/16 - Considerations that are typical for a graphical designer

Key points
  • " Claim 1 relates to a computer-implemented method for navigating modelled objects and relations between the objects that are stored in a relational database of a [ "product lifecycle management" ] PLM system."
  • " Features (d), (e), (f) and (g) specify how the objects returned by a navigation step are presented to the user. They therefore relate to a presentation of information, which contributes to inventive step only to the extent that it interacts with the technical features of the claim to achieve a technical effect."
  • The Board is not convinced. Even if it were accepted that the claimed disk layout distinguishes itself from arbitrary layouts by achieving a particularly compact display of information, this effect would be the result not of technical considerations, but of considerations that are typical for a graphical designer. It would therefore not be a technical effect but rather an effect that is inherent in the presentation of information (see decisions [...] T 817/16 of 10 January 2019,  [ Document scoring/GOOGLE] reasons 3.12 ).
  • There was also a discussion about the meaning of the closest prior art. The Board: "Hence, the existence of document D3 cannot invalidate document D1 as a suitable starting point for assessing inventive step." 


EPO T 0064/16 -  link


3. The invention as defined by claim 1
3.1 Claim 1 relates to a computer-implemented method for navigating modelled objects and relations between the objects that are stored in a relational database of a [ "product lifecycle management" ] PLM system. 
The claimed method includes steps that essentially describe two steps of navigation.
3.2 In the first navigation step, the user selects a first object, a first relation and a first layout.
[...]
3.4 The claim specifies that the selected first and second layouts are a "circular layout, with objects represented in exploded perspective distributed on a disk" and that "the disk links objects which belong to a same level in the hierarchy, and the intersection of two disks defines a cue representative of a hierarchy of the displayed object and its displayed descendants in the hierarchy".
4. Inventive step - Article 56 EPC
4.1 Document D1 discloses an information management system comprising a database which contains types of products, attributes associated with these products, and the processes that govern their lifecycles (page 5, lines 1 to 6 and 26 to 32), which thus falls within the scope of the term "product lifecycle management system". Document D1 is therefore a suitable starting point for assessing inventive step.

25 Oct 2019

T 1924/17 - When are mathematical features technical?

Key points


  • This is an examination appeal relating to a software invention with mixed technical and non-technical features. There is also a mathematical formula recited. 
  • r.15: " In the present case, a further issue that may have led the Examining Division to wrong conclusions when it identified technical and non-technical features is that claim 1 refers, in the context of its ranking feature, to a linear combination, i.e. a mathematical formula (see features E3a and E3b of claim 1). The Examining Division considered the ranking feature as an abstract procedural step, which is non-technical. '
  • " In view of the above analysis, the Board has no doubts that methods relating to pure mathematics are excluded from patentability by their very nature. This interpretation is consistent with the context given by Article 52(1) EPC, as inventions in all fields of technology always concern the real world and are not merely theoretical, abstract subject-matter or activities. This interpretation is also consistent with the object and purpose of the relevant provisions in Article 52 EPC, as the legislative history clearly shows the aim to exclude "mathematical theories" from patentability, and as the Board considers that the expression mathematical theories at least encompasses pure mathematics." 
  • " In the Board's view, the context provided in Article 52(1) EPC, i.e. the limitation of inventions to all fields of technology, makes it clear that methods applying mathematics in a non-technical field are generally excluded from patentability (unless they use technical means, see decision T 258/03, EPO OJ 2004, 575, headnote I, according to which a method involving technical means is an invention within the meaning of Article 52(1) EPC). However, where mathematical features of an invention contribute to the solution of a technical problem, such mathematical features cannot be ignored when assessing inventive step." 
  • " For the avoidance of doubt, the Board notes that a method consisting solely of a mental act, even if it involves mathematical steps directed to solve a technical problem, remains a method for performing a mental act as such (not using particular technical means) and is excluded from patentability under Article 52(2)(c) and (3) EPC, i.e. all exclusions from patentability have to be overcome by a claimed activity or subject-matter." 
  • " In the present case, as the mathematical features concerning the linear combination, E3a and E3b of claim 1, contribute to the automatic determination of which data tables are to be managed by which type of database management system, they play an essential role in the technical functioning of the system and consequently serve the overall technical purpose of claim 1. Furthermore, these features are based on technical considerations concerning the functioning of the database technology used. Hence, they contribute to the solution of a technical problem and have to be taken into account when assessing inventive step." 




EPO T 1924/17 - link


Reasons for the Decision
1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.
The invention
2. The invention relates to data consistency management. It aims at achieving scaling using cloud computing for applications relying on a relational database as the data tier to provide transaction support and to ensure data consistency (originally filed description, paragraph [0001]).
[...]
Main request
3. Claim 1 of the main request relates to a data consistency management system determining whether to forward a query to a NoSQL data store or to a relational database management system (RDBMS) by monitoring database queries issued by an application, and identifying data tables with query patterns that are suitable to be managed by the NoSQL data store. The system comprises the following features itemised by the Board (with reference signs removed):
A a query identification module for monitoring and parsing queries to identify all queries of a data table, and calculating how many of the identified queries are read queries, and how many of the identified queries match the query patterns
B a data table ranking module for ranking data tables with a linear combination of a percentage of read queries and a percentage of the query patterns
C a data table determination module for automatically determining which data tables are to be managed using the NoSQL data store
D a query translation module for automatically translating queries targeting the determined data tables to NoSQL API calls

24 Oct 2019

T 0817/16 - Knowledge only a technical person could possess

Key points

  • A bit older case (11.04.2019) about software patents, in particular for a method of scoring results for a search engine. The question is if a feature is technical or non-technical. A further question is, if the feature is non-technical, whether it nevertheless provides for a technical effect. If that is the case, it is not included in the problem statement under the Comvik approach.
  • "The appellant also argued that the method of claim 1 achieved a technical effect by implementing the task of assigning a score to a document based on the frequency and the amount of changes to the document in a particularly resource-efficient manner. Instead of storing the current version of a document in its entirety to allow the amount of changes in the next version of the document to be determined, the method of claim 1 only stored a "signature" and determined the amount of changes by comparing the signatures of the previous and new versions." 
  • The Board first reviews existing case law: "More generally, the Board considers that if non-technical claim features interact with technical claim features to cause a physical effect over the prior art, [...]  the physical effect is to be regarded as a technical effect for the purpose of assessing inventive step if the non-technical features are based on technical considerations aimed at controlling that physical effect" (emphasis added, internal citations omitted throughout)
  • The Board: "A useful test for determining whether such technical considerations are present is to ask whether the non-technical features would have been formulated by a technical person rather than by a non-technical person or persons" 
  • "This is not an enquiry into the actual state of technical or non-technical knowledge at the effective filing date; the question is rather whether the knowledge required for coming up with the non-technical features in the particular case is of a kind that only a technical person, i.e. a person not working exclusively in areas falling under Article 52(2) EPC, could possess." 
  • "In the present case the Board need not make a judgment as to the technicality of the use of term vectors in the context of claim 1, as the outcome of the inventive-step assessment does not depend on it." (i.e., the feature, if assumed to be technical, is obvious).
  • This decision was favourably discussed in the President's Comments in pending referral G1/19 (para. 25). 



T 0817/16 (Document scoring/GOOGLE) - link



Reasons for the Decision
1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.
2. The invention
2.1 The application relates to search engines. Its background section explains that, ideally, a search engine provides the user with the results most relevant to the user's query. Relevant documents are typically identified on the basis of a comparison of the search-query terms to the words contained in the documents and other factors such as the existence of links to or from the documents. The detailed description discloses a number of techniques for scoring documents, which may be used to improve the search results returned in response to a search query.
2.2 The claimed invention is directed to the embodiment described on page 6, second full paragraph, to page 7, third full paragraph, of the published application. It proposes scoring a document on the basis of "history data" that reflects the frequency at and the amount by which the content of the document changes over time. This history data is obtained by "monitoring signatures of the document".

3. Main request - inventive step
3.1 Unlike claim 1 of the first and second auxiliary requests, claim 1 of the main request is not worded as a "computer-implemented" method and therefore arguably encompasses mental acts as such, which are excluded from patentability under Article 52(2) and (3) EPC. But since the appellant at the oral proceedings expressed its willingness to limit the claim to a "computer-implemented" method, the Board will, for the purpose of assessing inventive step, interpret claim 1 accordingly.
3.2 Since the method of claim 1 can be performed on a general-purpose computer, the Board considers such a computer to be a suitable starting point for assessing inventive step. The subject-matter of claim 1 differs from this prior art in the steps listed in claim 1.

23 Oct 2019

T 2132/14 - Not addressing all grounds

Key points

  • The Board holds this examination appeal inadmissible because not all the grounds for refusal were addressed in the Statement of Grounds. The appellant did address the objections of lack of novelty and inventive step, especially for claim 1. However, "the examining division found inter alia that claims 7 and 19 [contravened Art.123(2)]" (r.II).
  • "The board further observes that the independent claim 15 of the set of claims filed with the statement of grounds of appeal, which substantially corresponds to former claim 7, still comprises the feature which had been objected to [...] in unamended form. No comments were provided by the appellant in this regard either. The board concludes that the appellant did not address the corresponding ground for refusal under Article 123(2) EPC, either implicitly by filing amendments, or explicitly by filing comments on this point."
  • "The board further notes that the conditions under Rule 99(2) EPC, i.e. an adequate statement of grounds of appeal, must be satisfied within the time limit for filing the statement of grounds of appeal laid down in the third sentence of Article 108 EPC so that deficiencies in this respect cannot be overcome by filing a new set of claims one day prior to the oral proceedings."



T 2132/14 - link

Reasons for the Decision
1. Admissibility of the appeal (Article 108 and Rule 99(2) EPC)
1.1 The appeal is not admissible, since the conditions for an adequate statement of grounds of appeal are not fulfilled. From the third sentence of Article 108 EPC in conjunction with Rule 99(2) EPC it follows that the statement of grounds of appeal must state the grounds on which the decision is to be set aside. Accordingly, it is settled case law of the Boards of Appeal that a statement of grounds must address all the main reasons given for the decision under appeal (see Case Law of the Boards of Appeal, 8th Edition 2016, IV.E. 2.6.3.b)).
1.2 In the reasoning of the decision under appeal, the examining division concluded that the subject-matter of claims 7 and 19 of the main request, on which the main request filed with the statement of grounds of appeal was substantially based, did not seem to meet the requirements of Article 123(2) EPC (see point 1.5 of the reasons for the decision under appeal). This must therefore be interpreted as being one of the main grounds on which the application was refused.
1.3 The appellant did not address this ground for refusal under Article 123(2) EPC in the statement of grounds of appeal at all. Claim 31 of the set of claims filed with the statement of grounds of appeal, which is based on the former claim 19 which had been objected to, has indeed been amended. The appellant however did not provide any comment as to why the amendments should be considered to be suitable to overcome the examining division's objections with respect to Article 123(2) EPC. The mere filing of an amended claim without any comment cannot be considered as a sufficient reasoning that would establish compliance of the statement of grounds of appeal with Article 108 EPC (see Case Law of the Boards of Appeal, 8th Edition 2016, IV.E.2.6.5.b)).

22 Oct 2019

T 2343/13 - Review of R137(3) decision

Key points

  • In this examination appeal, the Board has to decide on the admissibility of an Auxiliary Request which had been refused under Rule 137(3) by the ED.
  • " The Examining Division refused to admit the second auxiliary request into the first-instance proceedings under Rule 137(3) EPC in view of the time of its filing [after the oral proceedings] and because it prima facie did not meet the requirements of Article 84 EPC." 
  • The ED had hold oral proceedings and had issued a Rule 71(3) Communication based on the 3rd AR. The applicant then disapproved the proposed text, maintained its main request and filed an amended AR-3. The ED then refused the application. 
  • The Board: " The question then arises whether the non-acceptance by the appellant of the text proposed by the Examining Division is a factor weighing against admission of the new request. In this respect, the Board notes first that the appellant was fully entitled to maintain its higher-ranking requests and thus to disapprove of the text proposed in the communication under [Rule 71(3) (*)]. And it cannot be held against the appellant that, in the course of the first-instance proceedings, it submitted, as an auxiliary request, a text that was found to meet the requirements of the EPC. If it had not filed that text, the Examining Division would have refused the application at the oral proceedings, and it would have been open to the appellant - within the normal limits of Article 12(4) RPBA - to submit, on appeal, amended requests in reaction to the refusal." 
  • The Board considers that G 7/93 (amendments after Rule 71(3) EPC) does not apply. "The situation before the Board now is therefore fundamentally different from that considered in decision G 7/93, provided that the filing of the second auxiliary request is to be regarded as a reaction to the negative opinion expressed by the Examining Division on one of the higher-ranking requests considered in the oral proceedings rather than as an amendment of the claims that had been found allowable at the end of those oral proceedings. This is indeed the case: the second auxiliary request corresponds to the then main request with an amendment that seeks to overcome the Examining Division's inventive-step objection." 
  • " As to the Examining Division's second reason for non-admission of the second auxiliary request, namely a prima facie lack of clarity, the Board considers that a question relating directly to the compliance of a request with a provision of substantive patent law is to be assessed by the Board itself and that on such a point there is no latitude for deferring to the view of the department of first instance" 
  • * = the Board's decision appears to have a typographic error in the Rule number; see the full decision text below.




EPO T 2343/13 -  link
ECLI:EP:BA:2018:T234313.20180306



Second auxiliary request

7. Admission - Article 12(4) RPBA

7.1 The Examining Division refused to admit the second auxiliary request into the first-instance proceedings under Rule 137(3) EPC in view of the time of its filing and because it prima facie did not meet the requirements of Article 84 EPC.

7.2 Since the request was filed only after the completion of oral proceedings in which the examination proceedings had essentially been brought to a conclusion, in the absence of special circumstances the Examining Division's refusal to admit a newly filed request introducing new features does not amount to an abuse of discretion. Hence, the admission of the second auxiliary request into the proceedings is now at the Board's discretion under Article 12(4) RPBA.

7.3 Although the Board does not find fault with the Examining Division's discretionary decision not to admit the request, it also considers that the non-admission is in itself no reason to treat the second auxiliary request, in respect of its admission under Article 12(4) RPBA, more strictly than if it had been filed for the first time with the statement of grounds of appeal. It would run counter to procedural efficiency if an applicant could increase its chances of having a new request admitted by delaying the filing of that request until after the application has been refused.

21 Oct 2019

T 1159/13 - Appeal against R137(3) decision


Key points
  • This case is an appeal against the refusal of a patent application. The question at issue is whether the auxiliary requests are to be admitted.
  • " The reasons for not admitting the first, second and third auxiliary requests under Rule 137(3) EPC are given only in the "Facts and submissions" section of the written decision and not in the "Reasons for the decision" section. This possibly reflects an erroneous assumption by the examining division that the non-admission of a request is not part of the appealable decision. Nevertheless, reasons were given." 
  • The Board "since the examining division's reasons for non-admission of the first, second and third auxiliary requests are based exclusively on considerations relating directly to the compliance of the requests with a provision of substantive patent law, in the present case the board is in no way bound by the non-admission of these requests (see decisions T 1816/11, reasons 2.6; T 2343/13, reasons 7.7). Otherwise, the appellant would be deprived of a full judicial review of the examining division's assessment of substantive aspects of the case. The board therefore admits the (amended) first, second and third auxiliary requests into the appeal proceedings under Article 12(4) RPBA." 


EPO T 1159/13 - link
ECLI:EP:BA:2019:T115913.20190417



5. Admission into the appeal proceedings

5.1 The reasons for not admitting the first, second and third auxiliary requests under Rule 137(3) EPC are given only in the "Facts and submissions" section of the written decision and not in the "Reasons for the decision" section. This possibly reflects an erroneous assumption by the examining division that the non-admission of a request is not part of the appealable decision. Nevertheless, reasons were given.

5.2 The appellant argued that the examining division had incorrectly refused to admit the first, second and third auxiliary requests into the proceedings. The examining division had failed to take account of the guidance given in Guidelines for Examination, H-II, 2.3, which stated that the examiner should bear in mind the length of the proceedings to date and whether the applicant had already had sufficient opportunity to make amendments.

5.3 The examining division essentially argued that the first, second and third auxiliary requests did not overcome the inventive-step objection raised against the main request. That argument would have sufficed to conclude that the requests would not be allowable if they had been admitted, and it is independent of the length of the proceedings and of whether the appellant had already had sufficient opportunity for making amendments. This is therefore not a case where the examining division effectively cut short the appellant's attempts to claim allowable subject-matter. Since the applicability of Rule 137(3) EPC is not limited to late-filed amendments, the non-admission of the first, second and third auxiliary requests was not an abuse of discretion (see decision T 1816/11, reasons 2.5).

5.4 At the same time, since the examining division's reasons for non-admission of the first, second and third auxiliary requests are based exclusively on considerations relating directly to the compliance of the requests with a provision of substantive patent law, in the present case the board is in no way bound by the non-admission of these requests (see decisions T 1816/11, reasons 2.6; T 2343/13, reasons 7.7). Otherwise, the appellant would be deprived of a full judicial review of the examining division's assessment of substantive aspects of the case. The board therefore admits the (amended) first, second and third auxiliary requests into the appeal proceedings under Article 12(4) RPBA.