31 Jan 2019

T 0874/16 - Essential features

Key points

  • As already pointed out in the board's communication annexed to the summons to oral proceedings, claim 1 attempts to define the claimed subject-matter in terms of the result to be achieved, i.e. "to provide thermal compensation for output signals of said Coriolis flow meter", instead of defining it in terms of technical features responsible for achieving the claimed result (Article 84 EPC 1973). 
  • "[The steps specified in claim 1]  have such a broad scope that they are manifestly insufficient to guarantee a thermal compensation for a Coriolis flow meter over the whole scope of claim 1. In other words, essential features for achieving the claimed result are missing in claim 1." 
  • " This is contrary to the established jurisprudence of the boards of appeal according to which a claim "must define clearly the object of the invention, that is to say indicate all the essential features thereof. As essential features have to be regarded all features which are necessary to obtain the desired effect or, differently expressed, which are necessary to solve the technical problem with which the application is concerned" (see T 32/82)." (emphasis  added).
  • " According to the application as filed, the invention provides a method and an apparatus for temperature compensation for Coriolis flow meters which avoid the problematic use of thermal sensors (see page 3, lines 12 to 14). In order to achieve this result, a calibration of the Coriolis flow meter must be carried out to derive calibration constants according to equation 1.10. Once the calibration constants are derived, they are used in equation 1.5 to correct the measured flow rate to provide a thermally compensated flow rate. See page 14, line 9 to page 16, line 5; page 18, line 5 to page 19, line 5; figures 10 and 11. It follows that at least equations 1.5 and 1.10 are essential features missing in present claim 1." 
  • As a comment, the "technical problem with which the application is concerned" appears to be the subjective technical problem in the sense of T39/93 hn.II, not the objective technical problem.



EPO T 0874/16 - link

Reasons for the Decision
1. Main request
Claim 1 lacks clarity because it does not define all essential features of the claimed method for providing thermal compensation for a Coriolis flow meter (Article 84 EPC 1973).
1.1 As already pointed out in the board's communication annexed to the summons to oral proceedings, claim 1 attempts to define the claimed subject-matter in terms of the result to be achieved, i.e. "to provide thermal compensation for output signals of said Coriolis flow meter", instead of defining it in terms of technical features responsible for achieving the claimed result (Article 84 EPC 1973).

30 Jan 2019

T 0660/15 - Transfer of opposition

Key points

  • The opponent TCL submits that the opposition was transferred by way of universal succession.
  • " In order to accept that a transfer of opposition has taken place by way of universal succession, it must be sufficiently proven that all of TCL's business assets have been transferred to TCBV. Hereby, the principle of free evaluation of evidence applies. In decision T 2357/12 the Board stated that the concept of universal succession had to be interpreted autonomously, i.e. independently from national law. An essential point for accepting universal succession was that there was only one transferee possessing all the assets and the former opponent had ceased to exist, so that no legal uncertainty could arise about who the opponent was." 
  • TCL was an IP holding entity in the Tenaris group. TCL was registered in Saint Vincent and the Grenadines. TCBV is registered in The Netherlands and is the alleged successor opponent. 
  • "Due to a corporate restructuring, Tenaris had decided to transfer and assign the TCL business assets from TCL to TCBV and to liquidate and dissolve TCL. Prior to TCL's liquidation and dissolution, all of TCL's business assets were transferred to TCBV. This is corroborated by the declaration dated 12 April 2017 of Mr Bollers, a barrister at law and notary public, who acted as the liquidator and who stated therein, that all of TCL's intangible assets had been transferred and assigned to TCBV and not to any other legal entity." 
  • " Furthermore, the respondents were of the view that universal successorship cannot be acknowledged as long as it has not been proven that also the liabilities were taken over by TCBV. However, from point 3 of Mr Bollers's declaration of 12 April 2017, it follows that TCL's intangible assets, including any related duties and obligations were transferred to TCBV. Moreover, in his request to the financial services authorities dated 7 June 2017 he stated that after an advertisement in the relevant Government Gazette he had not received any claims and accordingly the requirements for a dissolution were complied with. This shows that there were no outstanding liabilities." 
  • " Accordingly, the Board considers it as sufficiently proven that TCBV is the universal successor of TCL, and on this basis, the Board accepts that the opponent's status was transferred from TCL to TCBV and that the procedure is to be conducted with TCBV as the appellant." 
  • This decision appears to be in line with T2357/12, hn.3. 


EPO T 0660/15 -  link

Reasons for the Decision
1. Admission of Mr Bollers's declaration dated 19 October 2018
Although this declaration was only filed one day before the oral proceedings, the Board admitted it into the proceedings because it did not raise any new issues but merely confirmed statements made earlier in the procedure. Thus, the respondents and the Board could be reasonably expected to deal with it without a postponement of the oral proceedings (Articles 13(1) and (3) RPBA).
2. Transfer of opposition
The status as an opponent cannot be freely transferred (G 2/04, OJ EPO 2005, 549). It can only be transferred in case of universal succession of the opponent, or when a relevant part of the opponent's business has been transferred (singular succession) (G 4/88, OJ EPO 1988, 480).
In order to accept that a transfer of opposition has taken place by way of universal succession, it must be sufficiently proven that all of TCL's [Tenaris Connections Limited (TCL) ] business assets have been transferred to TCBV [Tenaris Connections BV (TCBV)] . Hereby, the principle of free evaluation of evidence applies. In decision T 2357/12 the Board stated that the concept of universal succession had to be interpreted autonomously, i.e. independently from national law. An essential point for accepting universal succession was that there was only one transferee possessing all the assets and the former opponent had ceased to exist, so that no legal uncertainty could arise about who the opponent was.
From the declarations of Mr Lev and Mr Ramos, the former directors of TCL, it follows that TCL was a technology holding company and that TCL's business assets consisted of intangible assets including a worldwide patent portfolio, technical information, know how, trade and industrial secrets, licences and other agreements. In addition, TCL was only in the possession of some monetary assets to cover its costs and expenses. Due to a corporate restructuring, Tenaris had decided to transfer and assign the TCL business assets from TCL to TCBV and to liquidate and dissolve TCL. Prior to TCL's liquidation and dissolution, all of TCL's business assets were transferred to TCBV. This is corroborated by the declaration dated 12 April 2017 of Mr Bollers, a barrister at law and notary public, who acted as the liquidator and who stated therein, that all of TCL's intangible assets had been transferred and assigned to TCBV and not to any other legal entity. This was confirmed in his declaration of 19 October 2018.
The respondents argued that the European patents which had been transferred from TCL to TCBV, as exemplified by exhibit C, had already been transferred in June and July 2016 and thus before Mr Bollers had been appointed as liquidator in November 2016. At what point in time the European patents were transferred does not play a role in the present case. By this, the respondents seem to want to cast doubt on whether Mr Bollers was in a position to know what had happened before his appointment. However, even though the transfer had taken place before his appointment as liquidator, his role in this process was to make sure that the requirements for the liquidation had been fulfilled and to confirm that all assets had been transferred, even before his appointment, so that the company could be deleted from the register.
The respondents submitted Form 17 filed by TCL with the authorities of Saint Vincent and the Grenadines and argued that this showed that the object of TCL was not only the holding of technology but also other business, like e.g. bulk trading and wholesaling and the provision of services relating thereto. In the respondent's view this showed that TCL also carried out activities other than applying for patents and licensing patents and thus that not all the assets of TCL had been transferred to TCBV. The appellant, however, convincingly explained that it was usual practice that a business was broadly described when a company was registered in order not to be limited and that it did not necessarily mean that it performed all of this business. TCL acted exclusively as a technology holding company and did not conduct any other business. As set out above, this is clear from the declarations of Mr Lev and Mr Ramos and the Board sees no reason to doubt it.
Furthermore, the respondents were of the view that universal successorship cannot be acknowledged as long as it has not been proven that also the liabilities were taken over by TCBV. However, from point 3 of Mr Bollers's declaration of 12 April 2017, it follows that TCL's intangible assets, including any related duties and obligations were transferred to TCBV. Moreover, in his request to the financial services authorities dated 7 June 2017 he stated that after an advertisement in the relevant Government Gazette he had not received any claims and accordingly the requirements for a dissolution were complied with. This shows that there were no outstanding liabilities.
Thus, the appellant has convincingly demonstrated that all assets and liabilities were transferred from TCL to TCBV and not to anybody else. With effect from 7 June 2017, TCL was dissolved and ceased to exist, as is clear from the Certificate of Dissolution from the Company Register from Saint Vincent and the Grenadines (Exhibit E).
The respondents furthermore submitted that in case T 2357/12 the evidence presented was more conclusive and that the evidence in the present case was not as strong as the one in T 2357/12. However, each case has to be examined, and evidence has to be evaluated, on the basis of the facts of the particular case and therefore, reference to evidence in another case, which was based on different facts, is not useful.
Accordingly, the Board considers it as sufficiently proven that TCBV is the universal successor of TCL, and on this basis, the Board accepts that the opponent's status was transferred from TCL to TCBV and that the procedure is to be conducted with TCBV as the appellant.

29 Jan 2019

T 1085/13 - Novelty based on purity of compound

Key points

  • The Board departs from T 0990/96 which had found "that a document disclosing a low molecular chemical compound and its manufacture makes normally available this compound to the public in the sense of Article 54 EPC in all desired grades of purity" and T 728/98 which had held that " the general rule applies that the level of purity of that low molecular compound cannot entail novelty".
  • The present Board considers that a document only discloses (in the sense of Art. 54 and Art. 123 and G2/10) the purity degree as inevitably achieved by the described manufacturing method. 
  • Whether with other purification methods, a higher purity can be achieved (up to the now claimed level), and whether such purification methods are common general knowledge, are a matter to be considered in the assessment of inventive step, according to the present Board.
  • The interesting follow-up question is, taking into account that any degree of purity is a selection from a range of 0-100%, whether this decision means that the rules for selection inventions are to be reconsidered as well. 



EPO Headnote 
A claim defining a compound as having a certain purity lacks novelty over a prior-art disclosure describing the same compound only if the prior art discloses the claimed purity at least implicitly, for example by way of a method for preparing said compound, the method inevitably resulting in the purity as claimed.

Such a claim, however, does not lack novelty if the disclosure of the prior art needs to be supplemented, for example by suitable (further) purification methods allowing the skilled person to arrive at the claimed purity.

The question of whether such (further) purification methods for the prior-art compound are within the common general knowledge of those skilled in the art and, if applied, would result in the claimed purity, is not relevant to novelty, but is rather a matter to be considered in the assessment of inventive step


EPO T 1085/13 - link



3. Document D1
3.1 As set out above, it is undisputed that LH as prepared according to example 16 of D1 is amorphous and has a level of crystallinity as defined in claim 1 at issue. Example 16, however, does not mention the purity of the LH obtained. By reworking example 16 of D1 (Report #56, above), the LH obtained has a purity of 97.91%, which is below the lower limit required by claim 1 at issue.
Note: operative claim 1 is: "1. Amorphous Lercanidipine Hydrochloride having a purity of at least 99.5% determined by HPLC analysis and containing less than 0.5% of crystalline Lercanidipine Hydrochloride".

3.2 The board is aware that according to decision T 0990/96 (OJ 1998, 489; headnote 1 and 2 and reasons, 7 and 8), "a document disclosing a low molecular chemical compound and its manufacture makes normally available this compound to the public in the sense of Article 54 EPC in all desired grades of purity (emphasis added by the present board).
3.3 The entrusted board reached this conclusion on the basis that, particularly in the field of pharmaceutical compounds, it was "common practice for a person skilled in the art of preparative organic chemistry to (further) purify a compound obtained in a particular chemical manufacturing process according to the prevailing needs and requirements, e.g. in samples for analytical purposes. Conventional methods for the purification of low molecular organic reaction products such as recrystallisation, distillation, chromatography, etc., which normally can be successfully applied in purification steps, are within the common general knowledge of those skilled in the art" (loc. cit. emphasis added by the present board).
It was accepted by that board that exceptional situations may exist which could justify a different conclusion. For example "a situation where it was proved on the balance of probability that all prior attempts to achieve a particular degree of purity by conventional purification processes had failed". However, "the burden of proving the existence of such an extraordinary situation lies with the party alleging its existence" (loc. cit., emphasis added by the present board).

28 Jan 2019

T 1777/15 - Apportionment of costs

Key points


  • In this opposition appeal, the case is remitted based on an auxiliary request. The opponent (respondent) had requested that in the case of a remittal, "the costs it would incur in connection with the further prosecution before the first instance and any subsequent appeal proceedings be paid by the appellant".
  • The Board refuses this request.
  • "From the wording of Article 104(1) EPC ("costs [a party] has incurred" (underlining by the board)), Rule 88(2) EPC, which relates to a bill of costs, and Article 16(1) RPBA, it follows that a decision on an apportionment of costs cannot be made in respect of future costs"
  • As a first comment, Rule 88(2) is completely irrelevant here because it is about the procedure for the fixing of the costs, which is a distinct and separate procedure from the decision to give a different apportionment of the costs. The bill of costs (invoices and the like) can indeed by submitted for costs already incurred, but that is precisely why the fixing of the costs is in a separate procedure. I find it somewhat concerning that this Board confuses these two procedures.
  • Furthermore, there is an established line of case law (though a bit older) that in case of a remittal (for a newly filed document), the  "costs between the parties should be apportioned under Article 104 [...], in such a way that the late-filing party should normally bear all the additional costs caused by his tardiness" (T 326/87, hn, OJ 1992, 522, CLBA IV.C.6.3.3). As an example of a cost order for future costs after remittal: see T622/89: "The Opponent shall bear all the costs of the Patentee reasonably incurred in the course of the further prosecution of the opposition before the Opposition Division, and of any appeal therefrom." (which is cited in Singer/Stauder, 5th edition, Art.104 nr.32. 
  • As the Board does not engage with existing case law, I don't find the Board's reasoning convincing. In addition, for interpreting a legal provision, one can often not restrict oneself to the plain text, but needs to take into account the case law, purpose and system, and the travaux as well, unlike the Board in this case. 
  • The Board also appears to indicate that for the OD to hold inadmissible a request filed after the date for written submissions under Rule 116, the OD must give more reasons than the observation that the request is filed after that date. However, the Board states that "In the present case, no reasoning was given" and also that "Without any reasoning" , while at the same time acknowledging that the written decision of the OD includes the statement that the  opposition division did not admit this request "as it is late filed, Rule 116(2) EPC" and "for the reason of being late filed, according to Rule 116(1) EPC". The Board may find it grossly insufficient reasoning, I don't think the OD gave "no reasoning". 



EPO T 1777/15 - link

5. Auxiliary request 4: admissibility (Article 12(4) RPBA)
5.1 Claim 1 of auxiliary request 4 corresponds to claim 1 of auxiliary request 3, except that the first alternative referred to in point 4 above has been deleted.
5.2 The claims of auxiliary request 4 are identical to the claims of auxiliary request 6 filed before the opposition division at the oral proceedings. The opposition division did not admit this request "as it is late filed, Rule 116(2) EPC" and "for the reason of being late filed, according to Rule 116(1) EPC" (see points 1.17.18 and 2.8.1 of the decision under appeal and point 16.9 of the minutes). No further reasoning was given.
5.3 Article 12(4) RPBA gives the board the discretion to hold inadmissible requests which could have been presented or were not admitted in the first instance proceedings.

25 Jan 2019

Highlights EPO Case Law 2018

Highlights of the EPO Case Law 2018

Based on the online publication date (old decisions being republished or late published are not included).



  • T 1063/18 concluding that new Rule 28(2) EPC (excluding plants exclusively obtained by means of an essentially biological process) is void under Art164(2) EPC as being in conflict with Art. 53(b) EPC; however, the written decision was yet not published in 2018 (notice).
  • T 1914/12 suggesting that the Boards do not have the power to hold late filed arguments inadmissible. However, whether this will change the Board's practice remains to be seen, in particular, because new attacks can also be treated as new evidence (T 0221/13) or as new facts (T 0392/16).
  • T 1280/14 concluding that if there is a large number of divergent auxiliary request, restricting to only a few of them can be an inadmissible change of a party's case. 
  • On the plausibility front: a patent for a blockbuster medicine was revoked for lack of plausibility (T 1868/16; Everolimus), the same happened to a patent for a depression treatment medicine (T2571/12) and a patent application for an Alzheimer medicine (T 2500/12); though. another patent for Alzheimer treatment survived a plausibility attack (T1255/11). A curiosity is T 1045/13 about plausibility for a patent application based on "single patent studies". 
  • About expert opinions of former Board members on legal matters: these are not desired (T 0156/15). "if a Board were swayed on such a matter by the fact that submissions had been made by a former board member, however eminent that person might be, it would attach undue weight to the individual making the argument rather than focus on the argument itself".

  • T 2101/12 about an automated business method and concluding that  Article 54(2) EPC does not exclude non-technical disclosures from the prior art (although it is not clear to me why the Board in T2101/12 did not simply apply the Comvik approach).
  • T 0282/12 applying partial priority to the "first application" requirement. Of interest is also T 0969/14 concluding that a priority right can also be transferred in part for certain subject-matter only. 
  • Of interest is also T 0239/16 where a clinical trial hand-out document killed the patent. The legal requirement of transparency and informed consent for clinical trials is rather difficult to reconcile with the absolute 'state of the art' for novelty and inventive step under the EPC.
  • T 2057/12 about inventive step (or not) of transferring a teaching to a different technical field, and how to identify the closest prior art in such cases (a two-way test is proposed, both from the technical field of the claimed invention and from the different technical field of the prior art document).
  • R 8/17 suggesting that the Board does not need to deal with all inventives step attacks presented by the Opponent in the written procudure if these attacks are not discussed during the oral proceedings.
  • One successful petition for review, R 4/17, wherein the petitioner was respondent in appeal and there was no proof that it had received the EPO's notification of the Notice of appeal or Statement of grounds. 


24 Jan 2019

T 1890/15 - Experts oral proceedings Boards

Key points

  • The Board notes in an obiter paragraph that " Should oral submissions by an accompanying person be considered and intended to be oral evidence comparable to a written statement ("affidavit") of said person, the same criteria as for the admission of late filed facts and evidence should apply. Indeed, submissions by an accompanying person involving the presentation of oral evidence will by definition relate to factual circumstances which will require that the opposing party be given an adequate and proper opportunity to present facts, evidence and arguments in reply (Article 13(2) RPBA). In the absence of exceptional circumstances and of an agreement by the opposing party, a request for hearing an accompanying person on specific facts which is filed either shortly before the date appointed for oral proceedings, or at the oral proceedings, will therefore be refused. " 
  • This may possibly mean that the Board notes that where an affidavit filed during the oral proceedings to evidence a certain fact would not be admissible, an oral submission by an accompanying person evidencing such a fact should not be a way to circumvent this; also to safeguard the right of the other party to provide counter-evidence to any facts asserted during such oral submissions. Note that oral submissions by accompanying persons are, as a matter of law, entirely different from a formal witness hearing under Art. 117 EPC. 
  • The decision was taken on 19.12.2017, the written decision was issued on 30.11.2018 so the Board needed some time for drafting the decision (perhaps for one of the other paragraphs of the decision, or for the one discussed above).



EPO T 1890/15 -  link



2.6 Although not relevant for its decision, the Board notes that in decision G 4/95, the Enlarged Board did not accept that Article 117 EPC provides a legal basis for hearing oral submissions by an accompanying person involving the presentation of facts and evidence (G 4/95, OJ 1996, 412, point 8 of the Reasons). In view of the reference to Article 117 EPC in general, it is not entirely clear whether the Enlarged Board considered that an accompanying person, in particular a technical expert, gives oral evidence by way of making oral submissions at the oral proceedings, or merely presents (legal or technical) arguments in place of the presentation of the case (pleading) by the professional representative. Should oral submissions by an accompanying person be considered and intended to be oral evidence comparable to a written statement ("affidavit") of said person, the same criteria as for the admission of late filed facts and evidence should apply. Indeed, submissions by an accompanying person involving the presentation of oral evidence will by definition relate to factual circumstances which will require that the opposing party be given an adequate and proper opportunity to present facts, evidence and arguments in reply (Article 13(2) RPBA). In the absence of exceptional circumstances and of an agreement by the opposing party, a request for hearing an accompanying person on specific facts which is filed either shortly before the date appointed for oral proceedings, or at the oral proceedings, will therefore be refused. This is in line with the conclusions in point 10 of the Reasons of G 4/95.

23 Jan 2019

T 2707/16 - Slow examination is substantial procedural violation

Key points

  • In this appeal against a refusal, the Board sets aside the refusal and remits the case. The applicant had requested a refund of the appeal fee because of the excessive length of the first instance procedure. The application was filed in 2001 and was refused only in 2016.
  • After a detailed analysis, including case law of the European Court of Human Rights, the Board considers the excessive delay to be a substantial procedural violation. "The severe delays in the present case had the consequence that the first- instance decision was taken much later than it would have been without the procedural deficiencies. Thus, they had an impact on an essential element of the decision, namely its date ("justice delayed is justice denied"). This is sufficient to render the procedural violation a substantial one." 
  • However, the appeal fee is refuned because this would not be equitable.
  • "The Board is nevertheless of the opinion that a reimbursement of the appeal fee in view of unreasonable delays in first-instance proceedings should be regarded as equitable only where the applicant has made clear by some action that he did not tacitly agree with the stagnation of the proceedings. In the present case the appellant failed to provide any such signal for a very long period of time. Until August 2015, it neither enquired about the fate of the application nor submitted a request for acceleration."



EPO T 2707/16 -  link


Summary of Facts and Submissions
I. The applicant (appellant) appealed against the decision of the Examining Division refusing European patent application No. 01128655.6, filed on 30 November 2001 and published as EP 1 211 613 A2. The application claims a priority date of 30 November 2000.
[...]
IX. Oral proceedings took place as scheduled on 13 June 2016 in the absence of the appellant. In the oral proceedings, the Examining Division decided to refuse the application for lack of inventive step in the subject-matter of the independent claims of the main request, and of auxiliary requests 1 to 5, over notorious knowledge. The Examining Division considered most of the claimed features to be non-technical.
[...]

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 application relates to the storage and management of hierarchical data relationships. As an example, a resource could be the root node of a hierarchy, and all individuals having access to this resource could be the leaves of a hierarchical relationship tree (paragraph [0004] of the application as published).
[...]
Remittal
14. Considering the need for an additional search, the Board makes use of its powers under Article 111(1) EPC and remits the case to the department of first instance for further prosecution. In view of the substantial delays already experienced (see points 30 to 33 below), the Board has dealt with this appeal case out of order and expects the further proceedings to be accelerated by the Examining Division.
Reimbursement of the appeal fee
15. Where the board of appeal deems an appeal to be allowable, the appeal fee has to be reimbursed if such reimbursement is equitable by reason of a substantial procedural violation (Rule 103(1)(a) EPC). In order to justify its request to that effect, the appellant has put forward two lines of argument. The first focuses on the long delays which occurred in the first-instance proceedings, the second on the allegation that the Examining Division infringed the right to be heard by directly appointing oral proceedings after having fundamentally changed its opinion.
The delays in the first-instance proceedings
16. In a number of cases the boards of appeal have dealt with the question whether delays in first-instance proceedings might amount to a procedural violation. Some of these decisions concerned the particular situation where a long period of time elapsed between the oral proceedings before the examining or opposition division and the notification of the written decision (see T 243/87 of 30 August 1989, reasons 2; T 900/02 of 28 April 2004, reasons 3; T 358/10 of 12 July 2012, reasons 5.1). Such delays (which ranged from thirteen months and sixteen days in T 243/87 to three years and seven months in T 900/02) were found to constitute substantial procedural violations. The main reason for this conclusion appears to have been that the long delays increased the risk of errors in the decision (see T 900/02, reasons 3; T 358/10, reasons 5.1) or might lead to situations where the requirement that a decision has to be reasoned (Rule 111(2) EPC) cannot properly be complied with (see in this regard T 390/86, OJ EPO 1989, 30, reasons 8).

22 Jan 2019

T 1058/15 - Not admitted irrespective of relevance

Key points

  • The Board does not admit a late-filed request, as being late filed, irrespective of the (alleged) relevance of the document.
  • " Da die Beschwerdegegnerin der Zulassung des neuen Dokuments D8 nicht zugestimmt hat und in Anbetracht der sorgfaltswidrigen und sehr späten Vorlage dieses Dokuments sowie dem damit verbundenen, sehr späten Wiederaufgreifen des Neuheitseinwands, der bis dahin nicht Gegenstand des Beschwerdeverfahrens war, hat die Kammer - ungeachtet der Relevanz des neuen Dokuments - beschlossen, ihr Ermessen nach Artikel 13(1) VOBK dahingehend auszuüben, das Dokument D8 nicht in das Verfahren zuzulassen." 
  • The Board considers it relevant that D8 is used for a novelty attack. In the first instance proceedings, lack of novelty  was based only on D1, such that novelty is not a new ground for opposition. The Board however extends G 9/91 from not only new grounds of opposition, to also new attacks on the same ground.
  • " Bei dem im Beschwerdeverfahren geltend gemachten, auf D8 basierenden Neuheitseinwand handelt es sich zwar nicht um einen gänzlich neuen Einspruchsgrund, der im Beschwerdeverfahren nur mit Zustimmung des Patentinhabers eingeführt werden könnte (näher: G 9/91, []), weil die Neuheit vorliegend schon im Einspruchsverfahren auf Basis eines anderen Dokumentes (D1) beanstandet worden war. Gleichwohl ist die Sach- und Interessenlage ähnlich, weil der Patentinhaber in beiden Fällen nicht damit rechnen muss, dass erst im Verlauf des Beschwerdeverfahrens ein weiterer Einspruchsgrund zum Tragen kommt und das Verfahren verkomplizieren wird." 



EPO T 1058/15 - link

Entscheidungsgründe
1. Zulassung von verspätet eingereichten Beweismitteln (Artikel 13 VOBK)
1.1 Die Beschwerdekammern haben gemäß Artikel 114(2) EPÜ das Ermessen, verspätet eingereichte Beweismittel nicht zuzulassen. Dies gilt insbesondere für Beweismittel, die erst nach Einreichung der Beschwerdebegründung oder der Erwiderung (Artikel 13(1) VOBK) bzw. nach Anberaumung der mündlichen Verhandlung eingereicht werden (Artikel 13(3) VOBK).
1.2 Die Kriterien, die bei der Ausübung dieses Ermessens anzuwenden sind, variieren je nach dem Stand des Verfahrens, in dem die Beweise eingereicht werden.

21 Jan 2019

T 0500/15 - Admissibility late filed request


Key points

  • The OD had decided to not admit a request. The Board reviews this discretionary decision of the OD. The Board notes at the outset that there is no legal basis for not admitting a request merely becuase it is filed late. 
  • "Grundsätzlich ist eine Änderung des Patents im Einspruchsverfahren nach Regel 80 EPÜ für sich genommen nicht unzulässig, solange der Fall anhängig ist"
  • As a comment, I know that this view is often stated, but the EPO Notice explaining the then new rule 57a EPC (now Rule 80) "addresses the purely substantive aspects of the proprietor´s entitlement to amend his patent, and does not specify the point in time up to which amendment is allowed: here existing practice would remain unchanged." (emphasis added). OJ 1995, p.417. 
  • The Board follows: " Im Umkehrschluss sind Änderungen daher grundsätzlich solange zulässig, als das Verfahren anhängig ist. [...] Dies widerspricht wiederum nicht der Tatsache, dass die Einspruchsabteilung bei der Entscheidung über die tatsächliche Zulassung von Änderungen Ermessen hat, im vorliegenden Fall bereits unmittelbar nach Artikel 101(1) und Regel 79(1) EPÜ, auch über die allgemeinen Befugnisse hinaus, die durch Artikel 114 (2) EPÜ eingeräumt werden. Die grundsätzliche Zulässigkeit von Änderungen bedeutet nicht, dass Änderungen grundsätzlich immer zugelassen werden müssen."
    As a comment, I find this reasoning difficult to follow - the OD has a further ground for not admitting requests, beyond Article 114(2) EPC?
  • The Board: "Unstreitig ist auch, dass eine solche Ermessensentscheidung unter Anwendung der in der Praxis des EPA anerkannten Kriterien getroffen werden muss." The "must" is decisive here because the OD had merely stated that the amendment was complex without giving reasons. The Board finds this a reason for setting aside the decision, because the procedureal factors for admitting (or not a request) "niemals allein und losgelöst von dem zu prüfenden Streitstoff angewendet werden können, aber nur insoweit, als sie sich auf die zugrunde liegende materiellrechtliche Frage auswirken, im vorliegenden Fall auf die Prüfung der Patentierbarkeit der Ansprüche." 
  • The Board then considers that it can decide on the admissibility of the request itself, or remit the case to the OD. 
  • " Unter diesen Umständen entscheidet die Kammer, die Sache zur weiteren Entscheidung an die erste Instanz zurückzuverweisen. Nach Ansicht der Kammer muss die Zulassung der Anträge erneut entschieden werden, da die Umstände offensichtlich anders sind als die, die in der angefochtenen Entscheidung berücksichtigt wurden. In der Situation nach der Zurückverweisung kann mit Sicherheit davon ausgegangen werden, dass sowohl die Einsprechende als auch die Einspruchsabteilung genügend Zeit gehabt haben, sich mit dem Gegenstand der streitigen Anträge vertraut zu machen."
  • As a comment, I am not sure if it is fortunate that something which was filed late, can in effect become timely later in the procedure by virtue of an appeal. If sufficient time for preparation was the only reason for not admitting late-filed request, this would take away the basis for the rule of Art. 12(4) RPBA that requests not admitted in the first instance proceedings are not admitted in the appeal procedure even when refiled with the Statement of grounds. 
  • The  Board remits the case. 



EPO T 0500/15 -  link



Entscheidungsgründe
2. Begründetheit der Beschwerde
2.1 Nach ständiger Rechtsprechung sollte sich eine Beschwerdekammer über die Art und Weise, in der die erste Instanz bei einer Entscheidung in einer bestimmten Sache ihr Ermessen ausgeübt hat, nur dann hinwegsetzen, wenn sie zu dem Schluss gelangt, dass die erste Instanz ihr Ermessen nach Maßgabe der falschen Kriterien, unter Nichtbeachtung der richtigen Kriterien oder in willkürlicher Weise ausgeübt hat und damit ihr eingeräumtes Ermessen überschritten hat (siehe Rechtsprechung der Beschwerdekammern des EPA, 8. Auflage 2016,(RdBK) IV.C.1.2.2.a)). Dieser Grundsatz gilt auch für die Frage der (Nicht)Zulassung verspäteten Vorbringens durch die Einspruchsabteilung, und normalerweise ist es nicht Aufgabe der Beschwerdekammer, die Sachlage des Falls nochmals wie ein erstinstanzliches Organ zu prüfen, um zu entscheiden, ob sie das Ermessen in derselben Weise ausgeübt hätte. Somit hat die Kammer zu entscheiden, ob die Nichtzulassung des Hauptantrags seitens der Einspruchsabteilung nach den richtigen Kriterien erfolgte.

18 Jan 2019

T 1389/18 - Interruption of proceedings

Key points

  • The Board confirms that the Legal Division can also retroactively conclude that an interruption of proceedings took place under Rule 142 EPC (this was not contested by the parties). In this case, the LD had found an interruption of proceedings due to insolvency proceedings being opened against one of the parties. The difficulty of the case that the LD found this on 04.01.2018, with effect of 01.08.2017, wheres oral proceedings had taken place on 12.09.2017 wherein the OD had pronounced the (interlocutory) decision that the patent can be maintained in amended form. Notices of appeals were filed on 15.01.2018 and 16.01.2018. 
  • The Board concludes that any oral proceeding and any decision pronounced during such oral proceedings become non-existent if they take place during an interruption of proceedings.
  • Hence, in the present case, with a retroactively found interruption of proceedings, there is no valid decision of the OD. Hence, the appeal is moot ("gegenstandslos"), the appeal proceedings are terminated "without a decision on the matter".
  • As a comment, Rule 101(1) stipulates that an appeal is rejected as inadmissible if it does not comply with Article 106 EPC stating that "appeal shall lie from decisions".
  • The Board refunds the appeal fee. The Board distinguishes from J 12/16, wherein the Legal Board had also found the appeal to be moot ("gegenstandslos") but had not refunded the appeal fee, because in J12/16 the appeal (concerning a request for registration of a transfer of an application) became moot during the appeal procedure (by the publication of the mention of the grant). 
  • A further matter is that on the Legal Division had found on 31.07.2018 a further interruption of proceedings with effect of 01.06.2018 (again due to the insolvency of the patentee). The present Board finds that the Board needs to comply with this interruption, thereby distinguishing from T854/12 (r. 1.2.6.b; as a comment I think that there the reverse torpedo of the appeal procedure is meant). In T854/12, the Board found that it needs to decide itself on a possible interruption of proceedings in view of the devolutive effect of appeal. The present Board concludes that the devolutive effect is restricted for the case of a moot appeal, precisely in order to avoid that parties can "torpedo" the first instance proceedings simply by filing a  document called "appeal" thereby taking away the competence of the first instance departments. 



EPO T 1389/18 -  link


Headnote
1. Die Rechtsabteilung ist grundsätlich befugt, eine Unterbrechung des Verfahrens nach Regel 142(1)b EPÜ auch rückwirkend festzustellen (Gründe 4.).

2. Aus dem Wortlaut der geltenden Vorschrift "Unterbrechung des Verfahrens" und aus dem Gesamtzusammenhang der Regel 142 EPÜ kommt die Kammer zu dem Ergebnis, dass auch eine, während der Unterbrechung stattgefundene mündliche Verhandlung und eine in der Verhandlung verkündete Entscheidung der Einspruchsabteilung rückwirkend als nicht existent betrachtet werden müssen (Gründe 7.).

3. Dies bedeutet, dass es keine rechtswirksame Entscheidung der Einspruchsabteilung gibt. Folglich sind auch die Beschwerden vor der Kammer gegenstandslos, so dass das Beschwerdeverfahren ohne Entscheidung in der Sache beendet werden muss (Gründe 10.).


Sachverhalt und Anträge
I. Die vorliegenden Beschwerden betreffen die am 6. November 2017 zur Post gegebene Zwischenentscheidung der Einspruchsabteilung des Europäischen Patentamts betreffend die Aufrechterhaltung des Europäischen Patents Nr. 2220689 in geänderter Form.
II. Die für die Beschwerden relevanten Ereignisse lassen sich wie folgt zusammenfassen.
III. Am 12. September 2017 fand eine mündliche Verhandlung in Anwesenheit der Patentinhaberin und der Einsprechenden 1 und 4 statt. Am Ende der Verhandlung wurde die Zwischenentscheidung der Einspruchsabteilung verkündet. Die schriftliche Entscheidung wurde am 6. November 2017 zur Post gegeben, so dass die Beschwerdefrist am 16. Januar 2018 endete.
IV. Die Rechtsabteilung teilte den Parteien in einer Mitteilung vom 7. November 2017 mit, dass gegen eine der Patentinhaberinnen ein Insolvenzverfahren eingeleitet wurde. Damit musste die Rechtsabteilung prüfen, ob die Voraussetzungen für die Unterbrechung des Verfahrens nach Regel 142 (1) b) EPÜ vorlagen. Die Parteien erhielten Gelegenheit zur Stellungnahme, nach Aktenlage gingen jedoch keine Stellungnahmen beim EPA ein.

17 Jan 2019

T 0591/15 - Making remittal exceptional

Key points
  • " In the present case, since the situation principally arose out of an erroneous decision by the opposition division not to admit E15 into the proceedings, exceptionally the board considers it equitable not to apply Article 13(3) RPBA, but to admit the new requests into the proceedings and accede to the appellant's request that the case be remitted to the opposition division for further prosecution "

EPO T 0591/15 - link

2.6 Thus, the board is faced with two options: either not to admit the new requests under Article 13(3) RPBA since they raise new issues (in which case the respondent would be limited to defending the decision under appeal against being overturned), or to admit the requests and remit the case to the opposition division for further prosecution on the basis of the new requests.
In the present case, since the situation principally arose out of an erroneous decision by the opposition division not to admit E15 into the proceedings, exceptionally the board considers it equitable not to apply Article 13(3) RPBA, but to admit the new requests into the proceedings and accede to the appellant's request that the case be remitted to the opposition division for further prosecution (Article 111(1) EPC).

16 Jan 2019

T 0820/15 - Rule 137(5) and dependent claims

Key points

  • The Examining Division had refused the application under Rule 137(5) EPC. 
  • The Board: " To determine the compliance with Rule [137(5) EPC], it has to be first ascertained whether or not the amended claims relate to unsearched subject-matter and only in the event that the subject-matter is considered to be unsearched must it be further checked whether this subject-matter combines with the originally claimed invention to form a single general inventive concept, i.e. whether the respective subject-matters may be considered to be unitary".
    As a comment, in my view the applicant can free choose for which one of the two cumulative requirements of Rule 137(5) he wants to show that it doesn't apply in the case at hand, hence in my view, there is no prescribed order. (see my article in epi Information 2018/2).  
  • The Board: "In the present case, claim 1 of the main request differs from claim 1 as originally filed in that it now includes added features G) and H) and further specifies that the audio-visual information is broadcast to multiple receivers.  It is apparent to the board that the entire application relates to TV broadcast systems, i.e. inherently [...] in accordance with feature H) and that using dynamic amounts of training information within the meaning of feature G) had been appropriately reflected in dependent claims 3, 11, 19 and 27 as originally filed. It also appears from the file that those dependent claims were in fact searched according to the respective International Search Report dated 4 November 2009. The board, therefore, concludes that the above added features cannot objectively be considered to be unsearched within the meaning of [Rule 137(5) EPC]."
  • As a comment, Rule 137(5) EPC refers to "subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept". As held in T708/00, hn.1, unity of invention with one of the original claims is sufficient; hence, in this case, the Board could also have noted that feature G has unity of invention with e.g. original calm 3 specifying the same feature. As explained in T708/00, hn. 1, the question is, if the claim at issue had been added to the original set of claims, had a further search fee been payable.
  • Rule 137(5) is for features taken from the description; lack of unity between the original claims needs to be addressed under G2/92 which is a separate and distinct ground for not admitting claims (see my article and OJ 1995, p.420 which contains the EPO's explanation of the then-new rule). 
  • This decision takes a different course than I did in my article; of course, very well the Board can be right or perhaps there is no substantive difference.
  • I am always open to any insights about Rule 137(5) EPC, comments are welcome.


EPO T 0820/15 - link


3.1 Allowability of claim amendments (Rule 137(5) EPC)
3.1.1 The examining division found that present claim 1 did not comply with the requirements of Rule 137(5) EPC because its subject-matter as amended related to unsearched subject-matter and did not combine with the originally claimed invention to form a single general inventive concept (see Reasons 1 to 3). This was essentially because the originally filed independent claims did not comprise any feature pointing towards adapting the amount of training information within the meaning of feature G) of claim 1 (see appealed decision, Reasons 3.2.2).
3.1.2 As to the application of Rule 137(5) EPC, the board first points out that, in the present case, Rule 137(4) EPC - as in force from 13 December 2007 until 31 March 2010 - applies, since the respective International Search Report had been completed on 22 October 2009, i.e. before 1 April 2010 (cf. Decision of the Administrative Council of 25 March 2009, OJ EPO 2009, 299, Article 2).

15 Jan 2019

T 1593/15 - CPA and effective and efficient conduct of oral proceedings

Key points

  • In this opposition appeal, the Board gives important comments on the role of the CPA. There is also an intervention of an assumed infringer.
  • " the [opponent] argued that a procedural violation had occurred since it had been prevented by the Opposition Division at the oral proceedings from presenting its line of argument on inventive step starting from D2 as the closest prior art." 
  • " the Opposition Division applied the problem-solution approach stage by stage[]. Thus, in view of an effective and efficient conduct of oral proceedings, it systematically limited its decision-making process and accordingly the discussion with the parties to the determination of the closest prior art first, before discussing the other aspects of the inventive step of the claimed subject-matter. Such conduct of the oral proceedings was imposed in the present case by the numerous lack of inventive step objections raised by the opponents. " 
  • The OD had heard the parties on which document was the CPA. After the OD decided that D4 was the CPA, it gave the opponents sufficient time to make their case from D4 as CPA.
  • " In view of the above, the Board considers that the appellant's right to be heard was not violated and so no substantial procedural violation occurred. " 
  • As to the effects of the intervention, made during the appeal of Opponent I: the ground of Art. 100(c), not admitted by the OD as being late filed, is admitted because it was raised again by the intervener. The ground of Art.100(b) raised for the first time by the intervener is also admitted. For the ground of Art. 54, this ground was raised before the OD only by opponent II (who did not appeal and is no longer a party), but that opposition was found inadmissible. The intervener did not raise the ground. The appellant raised the ground for the first time in appeal, but the ground is not admitted because the patentee does not consent (G1/95). The Board finds the main request to be allowable, the appeal of Opponent I is dismissed. 


EPO T 1593/15 - link


Reasons for the Decision
1. Intervention
Notice of intervention was filed by "DE IULIIS MACCHINE S.P.A.".
As appears from document E1 ("Tribunale Civile Di Napoli - Sezione Specializzata In Materia Di Impresa") filed with the notice of intervention, proceedings for infringement of the contested patent have been instituted in Italy against the intervener (Article 105(1)(a) EPC).
The notice of intervention was filed on Monday, 15 May 2017, i.e. within three months of the date on which said proceedings were instituted (14 February 2017, Rules 131(4) and 134(1) EPC), together with a written reasoned statement and payment of the opposition fee. Thus, the requirements set out in Rule 89 EPC are fulfilled.
As a consequence, the intervention is admissible and is treated as an opposition (Article 105(2) EPC; see also G 3/04, OJ EPO 2006, 118, in particular Reasons 10 and 11).
The above was the Board's preliminary opinion as set out in the annex to the summons to oral proceedings, point 1.3. It has not been contested by the respondent, either in writing or orally at the oral proceedings; it is maintained by the Board in deciding the case at hand.

14 Jan 2019

T 0189/14 - Got Main Request, appeal inadmissible

Key points
  • The Board confirms that an appeal of a patent proprietor is not admissible if it is against a decision of the OD finding his main request (with amended claims) allowable, even if the decision of the OD was hence to maintain the patent in amended form i.e. in restricted form.
  •  "Im vorliegenden Fall hatte die Einspruchsabteilung jedoch dem Hauptantrag des Patentinhabers entsprochen und das Patent auf der Basis des damaligen Hauptantrages aufrechterhalten. Somit ist der Patentinhaber durch die Entscheidung der Einspruchsabteilung nicht beschwert."

EPO T 0189/14 - link


Entscheidungsgründe
1. Die Beschwerde der Beschwerdeführerin (Einsprechende) ist zulässig.
2. Zulässigkeit der Beschwerde des Patentinhabers
2.1 Während des Einspruchsverfahrens hatte sich der Patentinhaber auf den Gegenstand der erteilten Ansprüche 1 bis 6 zurückgezogen und diese eingeschränkte Version in der mündlichen Verhandlung vor der Einspruchsabteilung als seinen Hauptantrag weiterverfolgt (siehe Niederschrift der mündlichen Verhandlung vor der Einspruchsabteilung vom 7. November 2013, Annex II). In der angefochtenen Entscheidung hatte die Einspruchsabteilung das Streitpatent auf der Basis dieses damaligen Hauptantrages aufrechterhalten.

2.2 Gemäß Artikel 107 EPÜ kann jede Partei, die durch eine Entscheidung beschwert ist, Beschwerde einlegen.
2.3 Im vorliegenden Fall hatte die Einspruchsabteilung jedoch dem Hauptantrag des Patentinhabers entsprochen und das Patent auf der Basis des damaligen Hauptantrages aufrechterhalten. Somit ist der Patentinhaber durch die Entscheidung der Einspruchsabteilung nicht beschwert.
Das Argument des Patentinhabers, dass er durch die Entscheidung der Einspruchsabteilung auf Zurückweisung des ersten Hauptantrages beschwert sei (siehe Schriftsatz vom 3. September 2014, Seite 18) kann nicht überzeugen, da die Einspruchsabteilung in ihrer Entscheidung vom 20. Dezember 2013 (angefochtene Entscheidung) in korrekter Weise nur über den während der mündlichen Verhandlung eingereichten Hauptantrag entschieden hat.
Folglich ist die Beschwerde des Patentinhabers nicht zulässig ab initio im Sinne des Artikels 107 EPÜ.
2.4 Aus der Nichtzulässigkeit der Beschwerde des Patentinhabers folgt, dass im vorliegenden Fall nur eine einzige zulässige Beschwerde eingegangen ist, nämlich diejenige der vormaligen Einsprechenden, die durch die Entscheidung der Einspruchsabteilung als einzige der beiden Parteien im Sinne des Artikels 107 EPÜ beschwert war. Im Folgenden wird daher dem Patentinhaber die Stellung des Beschwerdegegners zugeteilt.

11 Jan 2019

T 0964/17 - No remittal for features from dependent claims

Key points

  • In this opposition appeal, the Board admits the new main request but does not remit the case as requested by the opponent.
  • The Board notes that claim 1 at issue concerns a combination of claims as granted. Moreover, the claim is restricted compared by the earlier main request by features which were already the topic of the auxiliary requests filed with the Statement of grounds. The impugned decision had not dealt with these features, but the parties had commented on inventive step provided by these features during the appeal procedure.



EPO T 0964/17 -  link

2. Keine Zurückverweisung
2.1 Die Beschwerdegegnerin beantragt die Zurückverweisung der Sache an die Einspruchsabteilung zur weiteren Entscheidung im Falle der Zulassung des Hauptantrags.
2.2 Die Zurückverweisung zur weiteren Entscheidung steht im Ermessen der Kammer (Artikel 111(1) EPÜ). Dabei besteht nach ständiger Rechtsprechung kein absoluter Anspruch auf Entscheidung einer Frage in zwei Instanzen und ist insbesondere der Grundsatz der Verfahrensökonomie zu berücksichtigen (Rechtsprechung, supra, IV.E.7.6).
2.3 Im vorliegenden Fall stellt Anspruch 1 eine Kombination von erteilten Ansprüchen dar (vgl. 1.3.2 oben) und ist gegenüber dem zuvor anhängigen Hauptantrag eingeschränkt mit einem Teil der Merkmale, die bereits in den nunmehr anhängigen Hilfsanträgen, welche mit der Beschwerdebegründung eingereicht worden waren, vorhanden sind.
2.4 Die angefochtene Entscheidung enthält zwar keine Begründung hinsichtlich der erfinderischen Tätigkeit, die Parteien haben im Beschwerdeverfahren jedoch auch zur erfinderischen Tätigkeit Stellung genommen. Insbesondere enthält bereits die Beschwerdeerwiderung einen diesbezüglichen Vortrag zu den jetzt im Anspruch 1 vorhandenen Merkmalen (siehe Punkt 2.1.2; Merkmale M8 und M10).
2.5 Aus den genannten Gründen wird die Sache nicht zur weiteren Entscheidung an die Einspruchsabteilung zurückverwiesen.
[...]
8. Der Hauptantrag der Beschwerdegegnerin ist somit gewährbar.

10 Jan 2019

T 2270/18 - Fast decision

Key points
  • In this examination appeal, the decision was taken (and issued) in writing on 12.11.2018 (i.e. the full written decision) while the statement of grounds was filed on 18.07.2018, so the appeal was concluded in less than 5 months!
  • The invention is about a packaging. The Board explains in detail why there is no problem of insufficient disclosure, and even goes into the underlying reasons for the ED's Art.83 objections.
  •  " For sake of completeness the Board wishes to address the issue which apparently underlies the objection of the examining division, that is that by using a sheet packaging material as defined in claim 1 a sealed package of generally parallelepipedal form [...] cannot be obtained" 
  • " It appears therefore possible to obtain a sealed package of the type shown in figures 6 and 7 of the application by making use of a sheet packaging material according to claim 1." 



EPO T 2270/18 - link



Reasons for the Decision
1. The decision is issued in written proceedings.
According to Article 12(3) RPBA, the Board may, subject to Article 113(1) and 116(1) EPC, decide the case at any time after the filing of the statement of grounds of appeal.
With regard to the findings and the order of the decision, the appellant's auxiliary request for oral proceedings in the event that the Board were minded not to allow the main request, is no longer relevant.

9 Jan 2019

T 2076/15 - Request refund search fee in appeal

Key points

  • In this examination appeal, the Boards finds the claims allowable. The Board then has to decide on the request for a refund of the paid additional search fee. The Board concludes that it is not competent to decide on the request, because it was made for the first time with the Statement of grounds in appeal. This follows from Rule 64(2) EPC, which refers to the Examining Division, according to the Board. 



EPO Headnote
Stellt der Beschwerdeführer im Prüfungsbeschwerdeverfahren erstmalig vor der Beschwerdekammer einen Antrag gemäß Regel 64 (2) EPÜ auf Rückzahlung einer gemäß Regel 64 (1) EPÜ zusätzlich entrichteten Recherchengebühr, so ist die Beschwerdekammer hierfür unzuständig und der Antrag daher unzulässig


EPO T 2076/15 - link



4.3 Der Gegenstand der unabhängigen Ansprüche 1 und 6 und der abhängigen Ansprüche 2 bis 5 und 7 beruht daher auf einer erfinderischen Tätigkeit (Artikel 56 EPÜ).
5. Nach Auffassung der Kammer genügen die Anmeldungsunterlagen gemäß dem vorliegenden Antrag der Beschwerdeführerin und die Erfindung, die sie zum Gegenstand haben, auch den übrigen Erfordernissen des EPÜ im Sinne von Artikel 97 (1) EPÜ. Somit kann die Erteilung eines Patents in dieser Fassung erfolgen (Artikel 111 (1) EPÜ).
6. Antrag auf Rückzahlung einer Recherchengebühr
6.1 Während der Recherche wurde durch die Beschwerdeführerin eine weitere Recherchengebühr entrichtet, nachdem die mit der Anmeldung eingereichten Ansprüche von der Recherchenabteilung als nicht einheitlich angesehen wurden (Regel 64 (1) EPÜ). Mit der Beschwerdebegründung hat die Beschwerdeführerin die Rückzahlung der zusätzlich bezahlten Recherchengebühr beantragt (Regel 64 (2) EPÜ).

8 Jan 2019

T 1608/14 - All inventive step attacks

Key points

  • In this opposition appeal, the Board concludes that claim 1 is novel, unlike the OD's decision. The Board then remits the case.
  • " the Opposition Division did not examine and decide the ground of inventive step. Though in appeal the respondent challenged inventive step starting from D1, in opposition they had contested inventive step in view of various other combinations of prior art not considered in the decision under appeal (D4 with D6 or D7 with D6 or D1)." 
  • " Remittal also appears equitable under the circumstances of the present case so that both parties can be in a position to argue on inventive step at the least in view of all attacks presented in opposition." (emphasis added).
  • As a comment, the above remark of the Board indicates that (also) the opponent should be brought in "a position to argue on inventive step at the least in view of all attacks presented in opposition" 


EPO T 1608/14 - link




4. Remittal
4.1 The Board has considered the opposition grounds based on Article l00(c) together with Article 123(2) EPC, and Article 100(a) together with Articles 52(1) and 54(1) EPC for the main request, and has reached the conclusion that claim 1 of that request is thus allowable in this respect.
4.2 However, the Opposition Division did not examine and decide the ground of inventive step. Though in appeal the respondent challenged inventive step starting from D1, in opposition they had contested inventive step in view of various other combinations of prior art not considered in the decision under appeal (D4 with D6 or D7 with D6 or D1). Both parties request remittal if inventive step is to be fully examined in the light of these combinations. Indeed the Board has not had opportunity to consider these other combinations.
Remittal also appears equitable under the circumstances of the present case so that both parties can be in a position to argue on inventive step at the least in view of all attacks presented in opposition.
4.3 In view of the above, the Board decided to exercise its discretionary power under Article 111(1) EPC to remit the case to the department of first instance, especially as both parties also agree on remittal for a full examination of the question of inventive step, where this examination should also based on other documents.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the department of first instance for further prosecution.

7 Jan 2019

T 1954/13 - No re-establishment Notice of appeal

Key points

  • This case concerns a request for re-establishment for a late-filed Notice of appeal and, more interestingly, the question of the refund of the appeal fee
  • The decision was taken on 27.10.2017 but was published only on 03.01.2019. The Board orders the refund of the appeal fee; however, I note that referral G1/18 was not yet pending when the decision was taken. 
  • For the RE request, that is refused for lack of due care. The due care discussion is not unusual (a US client issuing a "STOP WORK" order but not explicitly deciding to abandon the case).
  • The Board comes to the conclusion that the appeal is deemed to not have been filed and that the appeal fee is reimbursed. 
  • The Board in conclusion: "Finally, because the request for re-establishment of rights is rejected and the appeal is deemed not to have been filed, the appeal fee has not fallen due pursuant to Article 4(1) RFees. Thus, the appeal fee was paid without a legal basis and must therefore be reimbursed"  (citing J 21/80, T 1026/06, T585/08).
  • As a comment, whether the appeal fee payment was valid or not is quite a puzzle. The Board states first in r.8 that "the omitted acts, i.e. the filing of the notice of appeal and the payment of the appeal fee, were completed in due time". Which seems to imply that the appeal fee was validly paid under Rule 136(2) in order to complete the omitted act.
  • However in r. 44 the Board states that "the appeal fee was paid without a legal basis" which to me means that the payment was invalid. Hence, the appeal fee payment is simultaneously valid (under R136(2)) and invalid (under Rfees4 - or at least "without a legal basis").  
  • Admittedly, EPO practice appears to be that also in case of a RE request for a missed renewal fee payment (with surcharge) that is refused for lack of due care (hence, the RE request is admissible), the renewal fee with surcharge is refunded (e.g. J13/99, r.11 and the file of T 2106/14 and J23/14).
  • Possibly, the Enlarged Board in G1/18 could clarify whether the fee payment is valid or invalid  (e.g. by concluding that the fee payment as omitted act has Rule 136(2) as legal basis), or if the current case law is to be confirmed, at least explicitly acknowledge that the omitted fee is simultaneously validly paid for R136(2) (such that the RE request admissible) and invalidly paid under Rfees4 (so that it is refunded as paid without legal basis). Or perhaps I simply overlook something (comments are welcome!)
  • A second point is of course whether in case the RE request refused, the Notice of appeal is deemed to be not filed or inadmissible (which is precisely the question in pending referral G1/18).
  • The Board: "Firstly, the appeal is deemed not filed in the present case because no notice of appeal had been filed within the two-month time limit, and the appeal fee had not been paid within that time limit either. The board's construction, that in order for the appeal to be deemed filed not only the notice of appeal must be filed but also the appeal fee must be paid within the two-month time limit of Article 108, first sentence, EPC, is based on the consideration that sentences 1 and 2 of Article 108 EPC are to be read together. [....] Accordingly, the board interprets Article 108, second sentence, EPC as meaning that payment of the appeal fee within the two-month time limit is a further precondition for an appeal being formed."
  • As a comment, this reasoning can set the reader on the wrong track by the emphasis in that the wording "not only the notice of appeal must be filed but also the appeal fee must be paid" can suggest that the question was whether the filing of only Notice of appeal is sufficient - the facts of the case are that neither the Notice of appeal was filed nor the appeal fee was paid. The debated issue is whether the sanction is whether the appeal is "deemed not to have been filed" or is inadmissible. Moreover, the Board's phrase "payment of the appeal fee within the two-month time limit is a further precondition for an appeal being formed" uses a kind of a third alternative - does "formed" mean "deemed not to have been filed" or "inadmissible" or something else? (or perhaps the Board is borrowing from the French text of Art. 108 using "n'est réputé formé").
  • The Board continues: "This is in line with the general concept of the EPC that a request is only deemed filed [...] if payment is made in due time. Furthermore, [...] (see also T 1325/15, Reasons, point 41)." 
  • T 1325/15 stated "Although the position that Rule 101(1) EPC means that a late-filed notice of appeal brings into existence an inadmissible appeal may be not unreasonable, in view of the general rule that no distinction is to be made between the late filing and the non-filing of a document, the Board considers that no appeal exists where a notice of appeal was not (deemed to be) filed in due time."
  • As a comment, I think there are two distinct principles at play: firstly, that a request is deemed not to have been filed if no fee is paid and secondly the "general rule" assumed in T1325/15 that "no distinction is to be made between the late filing and the non-filing of a document". For the first, I note that this is irrespective of any time limit, e.g. applies also for a request for limitation under Art.105a(1) EPC. Moreover, it is not a general principle but for each request based on the specific EPC provision, e.g. for a request for an extension of a time limit there is no fee (R132(2)) and (arguably) failure to pay the filing fee does not result in the application being deemed to be not filed but deemed withdrawal (Art.78(2)). For the second principle, this applies e.g. also for documents not involving a fee such as a Statement of grounds. Hence, in my view, these two rules are distinct from each other.
  • As to T1325/15's "general rule that no distinction is to be made between the late filing and the non-filing of a document " : there is no explicit legal basis in any provision of the EPC and I am also not aware of any Enlarged Board decision stating this; so the legal basis for this asserted  "general rule" is not readily apparent to me.  At least under Dutch national law, no such general rule exist (as far as I know) and a late-filed Notice of appeal is inadmissible without refund of the appeal fee (e.g. ECLI:NL:GHDHA:2016:4284 about a late-filed filed appeal in patent litigation without any order for refund). 
  • As indicated in the amicus brief of Mr. Pavon Mayo in G1/18 "It has been argued that an additional general rule exists that late payment and non-payment should be treated the same way. [] German patent law influences decisions and practice in the EPO.  [] Not surprisingly, the German patent law (PatkostG § 6) provides for explicit provision stating that there is no distinction between late payment and nonpayment and in both cases it renders the action (Handlung) not made (nicht vorgenommen)". 
  • However, in my view, the national law of one Contracting State seems a rather weak basis for accepting it as a "principle of procedural law generally recognized in the Contracting States" under Article 125 EPC (and as said, e.g. Dutch civil procedural law appears to have a different rule). 
  • Finally, under German law, the relevant case appears to be 12 W (pat) 60/14 (link); on p.5 the omitted act (appeal fee) is considered paid with a debit order but on p.7, after the RE is refused for lack of due care, the debit order for the appeal fee is not to be carried out. 



EPO T 1954/13 -  link


Appeal not deemed filed and refund of the appeal fee
39. In the present case, the notice of appeal and the appeal fee were received outside the two-month time limit pursuant to Article 108, first sentence, EPC, together with the request for re-establishment of rights.
40. The board is aware of different approaches in the case law of the boards of appeal in situations where either or both the requirements of Article 108, first and second sentence, EPC (i.e. the filing of the notice of appeal and the payment of the appeal fee) have been fulfilled only after expiry of the two-month time limit: In a series of decisions the appeal was considered as deemed not filed and the appeal fee was reimbursed (for the cases that (1) the notice of appeal was filed in due time but (a) no appeal fee was paid - J 2/78 or (b) the appeal fee was paid late - J 24/87, J 16/82, T 105/85; (2) the appeal fee was paid in due time and the notice of appeal was filed late - J 19/90, T 445/98; (3) both, the notice of appeal and the appeal fee were late - J 21/80, OJ EPO 1981, 101, official text in French). In other series, the appeal was rejected as inadmissible in situations mentioned before, either (1) with an order to reimburse the appeal fee (see e.g. T 489/93) or (2) without such order (see e.g. T 122/02 for late appeal fee payment; T 1100/97 and T 2450/16 for late notice of appeal; T 1289/10 and T 2210/10 for both requirements fulfilled late).