G 1/19 - Referral T 0489/14 - Patentability of computer implemented simulations

Questions referred:

The following questions are referred to the Enlarged Board of Appeal for decision:
1. In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation's implementation on a computer, if the computer-implemented simulation is claimed as such?
2. If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?
3. What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?

EPO G 1/19 - G 0001/19 - G0001/19
T 0489/14 - link

IX. Claim 1 of the main request reads as follows:

• "A computer-implemented method of modelling pedestrian crowd movement in an environment, the method comprising:
• simulating movement of a plurality of pedestrians through the environment, wherein simulating movement of each pedestrian comprises:
• providing a provisional path (9) through a model of the environment from a current location (6) to an intended destination (7);
• providing a profile for said pedestrian;
• determining a preferred step (112'), to a preferred position (123'), towards said intended destination based upon said profile and said provisional path, wherein determining said preferred step comprises determining a dissatisfaction function expressing a cost of taking a step comprising a sum of an inconvenience function expressing a cost of deviating from a given direction and a frustration function expressing a cost of deviating from a given speed;
• defining a neighbourhood (29) around said preferred position (123');
• identifying obstructions in said neighbourhood, said obstructions including other pedestrians (21) and fixed obstacles (25);
• determining a personal space (24) around said pedestrian;
• determining whether said preferred step (112') is feasible by considering whether obstructions (21, 25) infringe said personal space over the course of the preferred step (112')."

Reasons for the Decision

Admissibility of the appeal

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

The application

2. The invention relates to a computer-implemented method, computer program and apparatus for simulating the movement of a pedestrian crowd through an environment.

The published application, on pages 11 to 56, describes a mathematical model of individual pedestrians and an algorithm for simulating their movement through an environment. This is followed, on pages 56 to 70, by the description of a design system which performs the simulation. This system, shown in Figure 21, allows the user to build a model of an environment by creating it or importing a design from a computer-aided-design (CAD) source (page 58, lines 28 to 32). During the execution of the simulation, a sequential set of snapshots is displayed showing the current position of each pedestrian in the modelled environment. These simulation results can be analysed either online, i.e. while the simulation is running, or offline after the simulation has finished and the results have been recorded (page 60, line 18, to page 61, line 5).

T 1090/14 - Unsubtantiated requests

Key points

• In this opposition appeal, the Board does not admit Auxiliary Requests 3 to 10.
• "  The statement of grounds of appeal did not contain any explanation why auxiliary requests 3 to 10 overcame the objection of lack of inventive step " 
• Nor was such an explanation provided in reply to the board's communication in which  [patentee] was made aware of the lack of substantiation with regard to these requests. Since it is not self-evident either how auxiliary requests 3 to 10 could remedy the deficiency identified by the opposition division with regard to the previous requests, [patentee] cannot be considered as having "set out clearly and concisely why it is requested that the decision under appeal be set aside".
• The patentee did not attend the oral proceedings.

EPO T 1090/14 - link

Auxiliary requests 3 to 10

23. Article 12(2) RPBA inter alia provides that the statement of grounds of appeal shall contain a party's complete case, that it shall set out clearly and concisely why it is requested that the decision under appeal be set aside and should specify expressly all the facts, arguments and evidence relied on.

24. Auxiliary claim requests 3 to 10 were submitted with appellant I's statement of grounds of appeal. The statement of grounds of appeal did not contain any explanation why auxiliary requests 3 to 10 overcame the objection of lack of inventive step raised in relation to the requests dealt with in the decision under appeal and which were re-filed in the appeal proceedings, i.e. the statement of grounds of appeal has not placed the board or the other party in a position which allows it to understand why the amended subject-matter overcomes this objection. Nor was such an explanation provided in reply to the board's communication in which appellant I was made aware of the lack of substantiation with regard to these requests. Since it is not self-evident either how auxiliary requests 3 to 10 could remedy the deficiency identified by the opposition division with regard to the previous requests, appellant I cannot be considered as having "set out clearly and concisely why it is requested that the decision under appeal be set aside".

25. Consequently, auxiliary requests 3 to 10 do not comply with the requirements of Article 12(2) RPBA and are thus not taken into consideration.

26. Since no request is allowable, the appeal of appellant II is successful, while that of appellant I must be dismissed.

T 0046/13 - Honest but not admitted

Key points

• The Board does not admit a new attack based on D13. " In their statement of grounds of appeal the appellant [=opponent] did not challenge this finding and did not in any way base their case on document D13." 
• " After oral proceedings had been arranged the appellant amended their case, referring to document D13 for the first time in the appeal" 
• " The appellant [=opponent] confirmed during the oral proceedings before the Board that they had only come across this passage in document D13 when preparing their response to the Board's summons and that they had not referred to this passage in the first-instance proceedings." 
• "In the present case the Board considered that it would not be reconcilable with the need for procedural economy to admit this change to the appellant's case at this stage of the appeal proceedings. The Board considered that were the change to be admitted, it would be appropriate to remit the case to the opposition division for further examination, as had been requested by the respondent. That would entail a lengthy delay in the proceedings, caused purely by the failure of the appellant to submit their case fully both before the opposition division and with their appeal grounds."

EPO T 0046/13 - link

Hence, the claimed invention involves an inventive step in the sense of Article 56 EPC over the prior art cited in the grounds for appeal, i.e. documents D7, D8, D12 and D2.

2. Admittance of document D13 and the inventive step objections based on it

2.1 In the first-instance proceedings the opposition division decided pursuant to Article 114(2) EPC to disregard inter alia document D13 as it had not been submitted in due time and prima facie it was not relevant to the decision (see reasons, 9.3.2). They held that although D13 showed an oscillation circuit on a circuit board and a detection circuit on a circuit board, both connected to each other via a flexible connection member, the skilled person would not take D13 into account because the mechanical arrangement of the sensor in D13, which showed multiple housings was incompatible with the arrangement of D7/D8 (see reasons, 9.3.1).

T 1433/14 - Plausibility strikes again (Influenza vaccine)

Key points

•  "[If] it becomes apparent that a purported technical effect is not achieved by all of the claimed subject-matter, for instance because it is not plausible that the claimed subject-matter actually achieves the purported effect [...], then the problem cannot be considered as having been solved (see point 10. above). In such a case the technical problem is reformulated in a less ambitious way and the obviousness of the claimed solution to that reformulated problem in the light of the cited prior art is assessed" 
•  "the patent itself contains no evidence of any kind, in the form of results from either in vivo or in vitro experiments or otherwise to show that any "Replikin" peptide, and in particular a peptide of SEQ ID NO: 141, is capable of acting as a vaccine against H1N1 influenza virus." 
• "The fact that the so-called malignin peptide of the sequence "YKAGVAFLHKKNDIDE", derived from a brain cancer protein, is able to elicit antibodies in rabbit and that these are cytotoxic to cancer cells in vitro [..] would not be considered generalisable to the present case by the skilled person, since this evidence relates to a different disease (cancer) and a different immunogen" 
•  " the board concludes that at the relevant date of the patent, the skilled person would not have considered it credible that the peptide of SEQ ID NO: 141 could be used as a vaccine against any influenza virus" 
• " In view of the conclusion [] above, the evidence in post-published documents D11, D16, D17, D18, D23, D23a, D29, D30, D47, D55 and D56, all submitted to show that the claimed subject-matter indeed has the technical effect ascribed to it in the patent, cannot be taken into account in the assessment of inventive step." 
• The medical use claims (first medical use claims) are insufficiently disclosed for the same reason.

EPO T 1433/14 - link

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 99 EPC and is therefore admissible.

Admission of documents D44 to D57 and D60 to D65 into the proceedings - Article 13(1) RPBA

2. None of the above mentioned documents were relied on by the board in reaching its decision and they were not referred to by the parties in their relevant submissions. Consequently, the board did not decide on the admission of these documents.

Admission of auxiliary requests I to III into the proceedings - Article 12(4) RPBA

3. The board has the power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings (Article 12(4) RPBA). Auxiliary requests I to III were all filed with the statement of grounds of appeal. The board is persuaded by the appellant's arguments that they could not have filed them in the first instance proceedings because they were not prepared for the focus on plausibility in the context of the discussion of inventive step, in view of the fact that this topic was not mentioned in the summons to oral proceedings. The board therefore decided to admit these requests.

[...]

Main request and auxiliary requests I to III - claim 1

5. Claim 1 of auxiliary request III is for a peptide which "has" the amino acid sequence of SEQ ID NO: 141 ([...]).
The claim further states that the peptide is an "isolated or synthesized H1N1 influenza virus Replikin peptide from a hemagglutinin protein wherein said peptide consists of 7 to 50 amino acids comprising (1) at least one lysine residue located six to ten residues from a second lysine residue; (2) at least one histidine residue; and (3) at least 6% lysine residues".

T 1633/18 - Webform filing apeal

Key points

• In this examination appeal, the Notice of appeal was filed with webform filing, which is expressly not allowed; the documents are deemed not received (EPO 2018, A45). Nevertheless, the EPO accepted the documents (the documents were added to the file, the debit order for the appeal fee was carried out; the EPO did not notify the appellant). 
• " Since both letters were received well before the expiry of the respective time limits (for filing the appeal and for filing a statement of grounds of appeal), by not observing its duty to inform the appellant without delay, the EPO deprived it of the opportunity to resubmit its letters by correct means of filing documents." 
• Therefore, under the principle of protection of legitimate expectations, the documents are deemed to be filed (the appellant had also resubmitted the documents on paper when invited to do so by the Board).
• The appeal is nevertheless inadmissible, because the Statement of grounds was only an indication that arguments will be filed ("In the submission to be made by 29 May 2018, the Applicant will submit substantive arguments why the Examiners of the Examination Division are over-severe in their assessment" ).
• As a comment, the appellant was represented by a professional representative working at a (small, UK) patent attorney firm.
• As a further comment, it is rather surprising that the EPO carried out* a debit order filed on 28.03.2018 with webform filing. Since 01.12.2017, webform filing is not an accepted means of filing a debit order (just like PDF documents). Compare T 590/18 . (* = there is a refund of the appeal fee because the fee was paid twice by the same payer on the same date referring to two different vouchers. There are no vouchers visible in the online file but I think online fee payment (a form of debit order) does not show up in the online file; perhaps credit card payment also is processed as "voucher" by the EPO. In any case, the Notice of appeal states  "the Applicant herewith authorizes deduction of an associated appeal fee"; strictly speaking the appellant may have additionally paid the appeal fee twice with online fee payment but more likely that debit order in the letter was processed). 
• As a final comment, I am not aware of any logic why webform is excluded for appeals (and also from opposition, limitation and revocation proceedings). Webform filing is intended to replace fax, and faxes are perfectly fine in appeal. I am also not aware of the EPO having indicated a reason for the exception. Of course, no smartcard is required for webform filing. However, already since 16.11.2015 the requirement of an 'enhanced electronic signature' for appeal documents is abolished. Faxes are also acceptable and don't use the smartcard at all. Facsimile signatures are fine for fax but apparently not if they are filed as a PDF document using Webform Filing (note that furthermore fax shows the sender's fax number whereas Webform filing is set up to always have a sender's email address). If the reason is to exclude the filing of important documents, why is a withdrawal of an application not excluded from WWF?

EPO T 1633/18 - link

Reasons for the Decision

1. Filing of documents in respect of appeal proceedings using the EPO Web-Form Filing service

1.1 The contested decision was dispatched on 29 January 2018. The applicant submitted both the notice of appeal dated 28 March 2018 and the further letter dated 14 May 2018 by using the EPO Web-Form Filing service.

1.2 However, this service may not be used for filing documents in respect of appeal proceedings (see Article 2(1) and (2) of the Decision of the President of the EPO dated 10 September 2014 concerning the filing of documents using the EPO Web-Form Filing service, OJ EPO 2014, A98; Rule 2 EPC). The Board notes that this decision has been superseded by the Decision of the President of the EPO dated 9 May 2018 concerning the electronic filing of documents, which entered into force on 1 June 2018 but leaves the provisions concerning the use of the EPO Web-Form Filing service essentially unchanged (see Article 3 of the Decision dated 9 May 2018, OJ EPO 2018, A45). If documents in respect of appeal proceedings are nonetheless filed using the EPO Web-Form Filing service, they are deemed not to have been received.

T 2109/15 - Interpreter at the oral proceedings

Key points

• In this opposition, appeal cease, the opponent had requested interpretation too late. The opponent hence arranges for interpretation into the language of the proceedings, hence brings an interpreter to the oral proceedings. The patentee objects to the interpreter. According to the patentee, it is not acceptable that the patentee has to rely on the interpreter of the opponent and that the opponent, by not observing the period of Rule 4(1) EPC, can impose an interpreter of its own choice. The representative of the patentee indicated that it could be liable to its client if it loses the case. The patentee, in particular, feared to be disadvantaged if the interpreter were to misrepresent the submissions of the opponent into the language of proceedings (German) used by the patentee. 
• The Board notes that according to Rule 4(1) EPC, a party can arrange for its own interpreter, without further requirements as to the interpreter. There is no legal requirement for approval of the interpreter by the other party. Moreover, the interpreter of the opponent was a professional interpreter often acting before the EPO.
• I suppose that the underlying question is what the relevant submissions of the opponent are: those as spoken by the opponent, or those as the translation? I think, from a legal point of view,  the submissions as translated in the language of the proceedings should be decisive so that a low-quality interpretation is for the risk of the opponent and making the whole point moot. However, in practice, the Board would of course listen to the opponent's submissions (in French in this case).

EPO T 2109/15 -  link

Entscheidungsgründe

1. Die Beschwerden sind zulässig. Dies wurde von den Parteien auch nicht mehr bestritten.

2. Zulässigkeit der von der Beschwerdeführerin II bzw. Einsprechenden besorgten Übersetzer - Antrag auf Vertagung der mündlichen Verhandlung

2.1 Die Beschwerdeführerin I bzw. Patentinhaberin verweigerte zu Beginn der mündlichen Verhandlung ihre Zustimmung zu dem geplanten Übersetzungsprozedere. Nachdem die Parteien mit Mitteilung der Geschäftsstelle vom 20. August 2018 (mit Fax vorab am 16. August 2018 an die Einsprechende gesendet) auf das Fristversäumnis eine Übersetzung zu beantragen hingewiesen worden seien, hätte sich die Einsprechende umgehend mit der Patentinhaberin zur gemeinsamen Auswahl der Übersetzer in Verbindung setzen müssen. Die Einsprechende habe jedoch abgewartet und die Patentinhaberin erst eine Woche vor dem geplanten Termin für die mündliche Verhandlung darüber informiert, dass sie selbst für eine Übersetzung gesorgt habe. Die Übersetzer seien von der Einsprechenden ausgewählt und beauftragt worden und würden von ihr bezahlt. Es gehe nicht an, dass der Kläger sich auf die Dolmetscher des Beklagten verlassen müsse, dass also die Einsprechende - bei Nichtbeachtung der Monatsfrist gemäß Regel 4 (1) EPÜ - ihren eigenen Wunschübersetzer aufzwingen könne. Die Patentinhaberin mache sich gegenüber ihrem Mandanten angreifbar, falls sie das Verfahren verlieren würde. Es sei nicht auszuschließen, dass das rechtliche Gehör der Beschwerdeführerin I in Gefahr sei.

G 4/19 - Referral Double Patenting

Key points

• In pending case T0318/14, the Board has decided to refer questions to the Enlarged Board of Appeal about double patenting.

Questions
1. Can a European patent application be refused under Article 97(2) EPC if it claims the same subject-matter as a European patent granted to the same applicant which does not form part of the state of the art pursuant to Article 54(2) and (3) EPC.


2.1 If the answer to the first question is yes, what are the conditions for such a refusal and are different conditions to be applied where the European patent application was filed

• a) on the same date as, or
• b) as a European divisional application (Article 76(1) EPC) in respect of, or
• c) claiming the priority (Article 88 EPC) in respect of

a European patent application on the basis of which a European patent was granted to the same applicant?



2.2 In particular, in the latter case, does an applicant have a legitimate interest in the grant of the (subsequent) European patent application in view of the fact that the filing date and not the priority date is the relevant date for calculating the term of the European patent under Article 63(1) EPC?






Note 1: the referral number is of course not yet assigned. It is entirely possible that the application is withdrawn before the TBA actually refers the questions to the Enlarged Board.
Note 2: referral number changed  in view of T 0489/14 (28.02.2019)
Note 3: referral number changed  in view of T0831/17 (01.03.2019).
Note 4: referral number changed  in view of G3/19 (09.04.2019).



EPO G4/19 - G0004/19 - G 0004/19  (double patenting EPO)


File   EP2429542


source https://www.patentlitigation.ch/a-referral-to-the-enlarged-board-of-appeal-re-double-patenting-finally/

T 0691/16 - Intervention

Key points

• The Board gave this decision publication code [C] and hence I discuss it here.
• There was an intervention. The patentee has some criticism of the advice of delivery of the writ in the infringement case. According to Art. 105, there must be infringement proceedings started by the Patentee in order to for the assumed infringer to be able to intervene; the Notice of intervention must also be filed within 3 months from the start of the infringement proceedings. In this case, the Notice of intervention was filed on 05.09 and the date of receipt of the writ was 05.06 according to the intervener. 
• The Board: "Im Hinblick auf die rechtzeitige Zustellung dient der Rückschein gerade dem Nachweis über die Zustellung, und sowohl Stempeldatum als auch handschriftliches Datum weisen, soweit leserlich, den 5. Juni aus. Insoweit besteht jedenfalls ein Anscheinsbeweis, gegen den die Patentinhaberin auch keine substantiierten Zweifel geltend gemacht hat. Im Übrigen drückt Regel 126 Abs. 1 letzter Halbsatz EPÜ einen allgemeinen Grundsatz aus, wonach nicht der Empfänger, sondern der Absender eines Schriftstückes im Zweifel zu beweisen hat, dass und wann dieses den Empfänger erreicht hat. Zweifel, die sich unter anderem aus Unleserlichkeiten ergeben, gehen daher nicht zu Lasten des Empfängers. " 
• As a comment, I think that the intervener must prove that he has received the writ which starts the court infringement proceedings. If the Notice of intervention is filed more than 3 months after the date given on the writ, the intervener will have to show that the Notice of intervention is in time calculated from the date of delivery (or receipt) of the writ, perhaps even depending on national law. Finally, I think that Rule 126(1) EPC specifies that the EPO has to proof delivery (as opposed to receipt or dispatch); which seems specific to EPO procedures. 

EPO T 0691/16 - link

4. Zulässigkeit des Beitritts

4.1 Die Beschwerdeführerin-Patentinhaberin bestreitet die Zulässigkeit des Beitritts mit den folgenden Argumenten:

Eine Vollmachtserklärung für den Vertreter fehle, weil das Kästchen "Einsprechenden" auf dem Vollmachtsformular nicht angekreuzt sei. Es fehle jedenfalls am Nachweis, dass der Beitretende in einem Vertragsstaat seinen Wohnsitz habe.

Es fehle der eindeutige Nachweis, dass die in Artikel 105 EPÜ genannte drei-Monatsfrist eingehalten worden sei, da auf dem Rückschein über die Zustellung der Klage der 5. Juni als Datum nicht eindeutig erkennbar sei. Auch sei die Unterschrift auf dem Zustellungsbescheid nicht mit der des Beitretenden identisch.

Die Einsprechende bezeichne die Patentinhaberin als "Hauni Maschinenbau AG", das Patent sei zwischenzeitlich aber auf die (personengleiche) Hauni GmbH überschrieben worden.

T 0656/16 - Bit-by-bit replying

Key points

• During the oral proceedings before the Board, the patentee files two auxiliary requests which address some but not all of the issues. These requests are not admitted.
• The Patentee then files a further auxiliary request. The Board does not admit this request either, because the Patentee's choice of addressing the Board's objections only bit by bit is not to be accepted by the Board for reasons of procedural economy, fairness and procedural justice.

EPO T 0656/16 -  link

6. Zulassung zum Verfahren - Hilfsanträge 8A, 8B, 8C

6.1 Die Vorlage der Hilfsanträge 8A, 8B erfolgte erst in der mündlichen Verhandlung vor der Kammer. Diese verspätet vorgelegten Hilfsanträge stellen somit geändertes Vorbringen dar, dessen Zulassung nach Maßgabe der Erfordernisse des Artikels 13(1) und (3) VOBK erfolgt.

Gemäß einem von den Kammern häufig angewandten Ansatz werden erst nach Anberaumung der mündlichen Verhandlung eingereichte Anträge nur dann zugelassen, wenn sie u.a. eindeutig oder offensichtlich gewährbar sind, d.h. für die Kammer muss ohne großen Ermittlungsaufwand sofort ersichtlich sein, dass die vorgenommenen Änderungen den aufgeworfenen Fragen erfolgreich Rechnung tragen, ohne ihrerseits zu neuen Fragen Anlass zu geben (RdBK, 8. Auflage 2016, IV.E.4.2.5).

6.2 Diese Bedingung ist im Falle der Hilfsanträge 8A und 8B nicht erfüllt:

Somit tragen diese Änderungen nicht allen aufgeworfenen Fragen unter Artikel 76(1) EPÜ erfolgreich Rechnung, so dass die geänderten Ansprüche 1 der Hilfsanträge 8A und 8B nicht eindeutig gewährbar im obigen Sinne sind. Daher entschied die Kammer in der mündlichen Verhandlung, die Hilfsanträge 8A und 8B in Ausübung ihres Ermessens nach Artikel 13(3) VOBK nicht in das Verfahren zuzulassen.

6.3 Nach der Nicht-Zulassung der beiden Hilfsanträge 8A und 8B reichte die Beschwerdegegnerin-Patentinhaberin einen weiteren Hilfsantrag 8C ein. Im Hinblick auf den Hilfsantrag 8C gilt, dass der Beschwerdegegnerin bereits mit der Vorlage der Hilfsanträge 8A und 8B Gelegenheit gegeben worden ist, die bereits vor der Vorlage dieser Anträge geäußerten Bedenken der Kammer im Hinblick auf die im Verfahren befindlichen Anträge auszuräumen. Diese Gelegenheit hat die Beschwerdegegnerin bewusst nicht genutzt und es vorgezogen, den von der Kammer geäußerten Bedenken nur scheibchenweise Rechnung zu tragen. Das ist aus Gründen der Verfahrensgerechtigkeit, Fairness und Verfahrensökonomie weder der Kammer noch den anderen Verfahrensbeteiligten zuzumuten. Folglich entschied die Kammer in Ausübung ihres Ermessens, auch den Hilfsantrag 8C nicht ins Verfahren zuzulassen (Artikel 13(3) VOBK).

T 1238/14 - Right to be heard - auxiliary requests immediately rejected

Key points

• The Board sets aside the refusal decision because of a substantial procedural violation: the refusal decision was taken directly after the applicant had filed auxiliary requests in response to the summons for oral proceedings. This violates the right to be heard because the applicant learned about the ED's objections against those request only in the refusal decision.

EPO T 1238/14 - link

Entscheidungsgründe

1. Die Beschwerde ist zulässig.

2. Rechtliches Gehör (Artikel 113(1) EPÜ)

2.1 Die Beschwerdeführerin stützt ihren Hauptantrag darauf, dass die Prüfungsabteilung durch den Erlass der angefochtenen Entscheidung das rechtliche Gehör der Beschwerdeführerin in Bezug auf die neu eingereichten Hilfsanträge 1 und 2 verletzt habe. Dies stelle einen Verfahrensfehler dar, der eine Zurückverweisung an die erste Instanz rechtfertige.

2.2 Gemäß Artikel 113(1) EPÜ dürfen Entscheidungen des Europäischen Patentamtes nur auf Gründe gestützt werden, zu denen sich die Beteiligten äußern konnten.

2.3 Im vorliegenden Fall hatte die Beschwerdeführerin in Antwort auf die damalige Ladung zur mündlichen Verhandlung vor der Prüfungsabteilung die Hilfsanträge 1 und 2 eingereicht.

Post 1000!

After almost four years of publishing a post each working day, this is the 1000th post.


Based on Google Analytics, the most popular posts are about difficult topics:

T 205/14 - about 800 views (clicking through) - about a missing assignment of priority rights, and the preliminary question of the applicable law. One of my favourite topics as well. Though actually, I think the Board could better have given a rule other than the applicable law being "the law governing the legal relationship between the transferor and the transferee of the right of priority".

T 0239/16: "Clinical trial document kills patent" (13.04.2018). The title says it all. 

T 809/12 - "Result to be achieved" and also T 2067/12 about the same topic. Seems those two posts show up quite high if you search on Google for "result to be achieved". Apparently, the phrase is used only by the EPO according to Google. 

The topic label with the most posts is "procedural violation" which is a case of selection bias - I try to post all decisions wherein a substantial procedural violation is found by the Board. 

For me, the most difficult case to summarize was T0404/13 - the validity of a disclaimer depended on whether another patent application was a prior right under Art.54(3), which in turn depended on the validity of the priority, which required that the priority application was the first filing, which in turn depended on the question of whether there was a valid transfer of priority of a still earlier filing, which in turn depended not so much on the existence of the transfer but on the effective date. Simple, isn't it?

One of the most surprising cases was T 1872/14: you can actually use a disclaimer to make a claim novel over an Art. 54(2) (!) prior art document, though the case should perhaps be reviewed carefully for consistency with G1/15. 

I wish the Boards of course many peaceful and productive years to come.

As a suggestion for opposition appeals, I hope that case management conferences will be introduced in the near future. Perhaps the Boards could find a way to dispose of inadmissible auxiliary requests (and documents, attacks) earlier in the proceedings. The current situation is that parties must still spend time and money on substantive rebuttals to inadmissible requests (documents, attacks), and also submit those rebuttals to the Board in addition to the debate on admissibility, thereby causing a lot of unnecessary work for parties and the Boards.
As a suggestion for examination appeals, the problem appears to be mostly the backlog in certain technical fields. I don't really have personal experience with it, but from the Board's written decision the majority of examination appeals does not seem terribly complex cases. Perhaps the very backlog, i.e. the additional 4-5 years pendency may have been the very reason for filing the appeal in the first place. Perhaps the arrangement of the oral proceedings will be reviewed in the future: scheduling 60 minutes for the oral proceedings by default may be enough (in the majority of the cases, the applicants don't show up at all, it seems). Perhaps, the decision can be issued in writing rather than during the oral proceedings. Furthermore, possibly a solution can be found in temporarily dealing with new examination appeals first: (credibly) announcing that new appeals will be decided within 12 months may by itself already result in a significant drop in the number of incoming examination appeals.

However, I realize that every patent attorney will have a different proposal for speeding up the appeal proceedings. They will also try to benefit from the delays when it suits their client's interests.

Finally, it's worth emphasizing that the legitimacy of the Board depends only in part on the procedural aspects of the appeal decisions. Much more important is that the decisions of the Boards are correct about the underlying technologies of the inventions and that inventors, scientists and engineers who are involved in appeal procedures have no reason to doubt the technical competency of the Board - perhaps are even impressed by it. In the end, that is both the most important and the most difficult part of the job of the Boards. It's also an aspect that is beyond the scope of this blog (i.e. I don't discuss highly technical decisions like recent T 2192/13 though such decisions are at the core of the Board's work).

T 0940/14 - Unsubstantiated requests not admitted

Key points

• In this opposition appeal, the patentee as respondent had filed some Auxiliary Requests with its Statement of reply; however without indicating how the amendments provided for inventive step. 
• The Board does not admit the requests under Art. 12(4) RBPA.
• The Board apperantly finds the claim amendments in the AR's to be prima facie trivial, and indicates that precisely therefore the AR's should have been substantiated.
• " Je scheinbar trivialer das geänderte Merkmal eines Anspruchs ist oder je weniger offensichtlich der Grund der Änderung ist, desto mehr Gewicht kommt dem Erfordernis einer substantiierten Begründung bei dessen Einreichen zu. Das trägt auch dazu bei, wenig zielführende Änderungen der Ansprüche zu vermeiden." 
• The Board also does not accept the Patentee's argument that it had substantiated the AR's by defending why the claims as granted were inventive.
• The Patentee's argument: "  Der Sachvortrag zu der Frage warum der Gegenstand der Hilfsanträge 1 bis 8 die Anforderungen der Patentierbarkeit erfülle, ergebe sich nämlich bereits aus dem vollständigen Vortrag zur Patentierbarkeit des Gegenstands des erteilten Anspruchs 1 des Patents, welches in der ersten Instanz unverändert aufrechterhalten worden sei." 
• The Board does not accept this argument, because as soon as AR's are submitted, additional arguments are as a rule necessary according to the  Board. Otherwise, an efficient preparation for the oral proceedings is prevented.

EPO T 0940/14 -  link

2. Hilfsanträge 1 bis 8 - Zulassung

2.1 In Ausübung ihrer Befugnis gemäß Artikel 12 (4) VOBK lässt die Kammer die Hilfsanträge 1 bis 8 nicht in das Verfahren zu, weil diese Anträge die Erfordernisse nach Artikel 12 (2) VOBK nicht erfüllen. Siehe hierzu auch "Rechtsprechung der Beschwerdekammern", 8. Auflage 2016, Kapitel IV.E.4.2.4, insbesondere die Entscheidungen T 217/10, Punkt 5 der Entscheidungsgründe, und T 1890/09, Punkt 4 der Entscheidungsgründe.

2.2 Mit ihrer Beschwerdeerwiderung reichte die Patentinhaberin die Hilfsanträge 1 bis 8, lediglich begleitet durch die Angabe der Grundlage für die Änderungen in der ursprünglichen Anmeldung, ein. Jedwede Begründung, wieso die getätigten Änderungen die von den Einsprechenden in der Beschwerdebegründung vorgetragenen Einwände fehlender erfinderischer Tätigkeit ausräumen würden, fehlte.

[...]

2.5 Bei der Ausübung ihrer Befugnis, die Hilfsanträge 1 bis 8 gemäß Artikel 12 (4) VOBK nicht zuzulassen, berücksichtigte die Kammer die folgenden Aspekte:

2.5.1 Die in den Ansprüchen der Hilfsanträge 1 bis 8 durchgeführten Änderungen sind nicht selbsterklärend im Sinne einer automatischen oder offensichtlichen Erkennung der Gründe, inwiefern die Änderungen den zur Debatte stehenden Einwand fehlender erfinderischer Tätigkeit (siehe Punkt 2.4 oben) ausräumen sollten.

T 2687/17 - Form request oral proceedings

Key points

• Even if oral proceedings are only requested in the Box VIII - " other requests"  in Form 2300, this is a valid request for oral proceedings. Ignoring it, as in the present oppostion appeal, is a substantial procedural violation. 

Entscheidungsgründe

1. Gemäß Artikel 116 (1) EPÜ findet eine mündliche Verhandlung "entweder auf Antrag eines Beteiligten oder, sofern das Europäische Patentamt dies für sachdienlich erachtet, von Amts wegen statt..."

2. Bereits aus dem Wortlaut des Artikels 116 (1) EPÜ ergibt sich, dass das jeweilige Organ des EPA keinen Ermessensspielraum hat, wenn ein Antrag auf mündliche Verhandlung gestellt wurde. Liegt ein Antrag auf mündliche Verhandlung vor, so muss diese stattfinden. Dies ist auch durch die ständige Rechtsprechung der Beschwerdekammern bestätigt worden ("Rechtsprechung der Beschwerdekammern des Europäischen Patentamts", 8. Auflage, III.C.1.1.1 und die darin angeführten Entscheidungen).

T 1830/13 - Document from TPO's

Key points

• In this opposition appeal, TPO's were filed in November 2017 also submitting a new document D21.
• In December 2018, one day before the oral proceedings, the opponent files D21.
• The Board admits D21 because it is highly relevant. 
• " The board notes that the appellant's request to admit document D21 was submitted very late and that it represents an entirely fresh case. Such considerations would normally result in the non-admission of a document" 
• " Although no party appears to have studied document D21 until shortly before the oral proceedings, this document is considered by the board to be of such relevance for the issue of novelty that the board should not exercise its discretion under Article 114(2) EPC to disregard it. Thus, the board decides to admit document D21 into the appeal proceedings." 
• The Board remits  the case. 

EPO T 1830/13 -  link

Summary of Facts and Submissions

I. The opponent (hereinafter appellant) appealed against the decision of an opposition division to maintain the European patent No. 1 975 231 in amended form.

II. The patent proprietor (hereinafter respondent) replied to the appellant's statement of grounds of appeal.

III. Several third party observations were submitted under Article 115 EPC. The third party observations submitted under cover of a letter dated 3 November 2017, included the document WO 02/066516, published on 29 August 2002. This document is referred to in the submissions and in this decision as document D21.

VI. On 4 December 2018, one day before the oral proceedings, the appellant submitted a request that document D21 should be admitted into the proceedings. The appellant argued that this document was highly relevant as regards the novelty of the patent in suit. The appellant pointed out that this document had been brought to the attention of the parties over a year earlier, and was hence no surprise, and further argued that it did not raise any complex issues requiring postponement of the oral proceedings.

Reasons for the Decision

Request for costs

1. The board notes that the respondent's request for costs was received one day after the board had heard the parties final requests, closed the debate, and had announced its decision. Moreover, it differs from the respondent's final requests submitted in the oral proceedings before the board (see minutes, page 2, fourth paragraph).

2. According to the case law of the Boards of Appeal, once a decision has been taken the board is no longer empowered or competent to take any further action apart from drafting the written decision (cf. "Case Law of the Boards of Appeal of the EPO", 8th edition 2016, IV.E.6.1.2, 1165). It is established practice that all the parties' requests, including any requests as to costs, must be made before any decision is announced in oral proceedings (cf. "Case Law", supra, IV.C.6.3.1, 1000).

T 2194/14 - Decision only on remittal

Key points

• In this opposition appeal, the OD had rejected the opposition. The opponent appeals. At the end of the oral proceedings, the patentee withdraws the main request (claims as granted) and auxiliary requests 1 and 2; and requests remittal for auxiliary requests 3 to 8. These AR3-8 are the same as were pending before the OD (which did not arrive at them, finding the claims as granted allowable)
• The Board remits the case. 
• " In the present case, although the appellant requested the Board to take a final decision rather than to remit the case to the opposition division, the case is remitted for further prosecution. The appealed decision established that none of the grounds of opposition raised by the  appellant held against the patent as granted. Requests corresponding to present auxiliary requests 3 to 8 were available at that time, but have not been the subject of the appealed decision. Due to the withdrawal of the main request by the respondent, the appealed decision is to be set aside. Contrary to what the appellant alleged, no lack of patentability of auxiliary requests 3 to 8 is prima facie apparent to the Board."
• This is a smart move of the patentee. Clearly, the Board had announced a negative conclusion on the claims as granted, but there is no decision on the claims as granted and no ratio decidendi either. Back before the OD, the opponent will have to win again on those issues and the patentee can in effect deny (or challenge) any adverse findings of the Board on the claims as granted.

EPO  T 2194/14  - link


Summary of Facts and Submissions
At the end of oral proceedings ... The respondent [patentee], while withdrawing all other requests, requested:V. Oral proceedings were held on 4 December 2018. For the further course of the oral proceedings, in particular the issues discussed with the parties, reference is made to the minutes.

that, when setting aside the decision under appeal, the case be remitted to the opposition division for further prosecution on the basis of auxiliary requests 3 to 8.

Reasons for the Decision

1. Auxiliary requests 3 to 8 - Admittance into the proceedings

1.1 As noted by the appellant and as acknowledged by the respondent, the independent claims of auxiliary requests 3 to 8 contain features extracted from different parts of the description of the application as filed.

The subject-matter of these claims corresponds to that of the claims of auxiliary requests 3 to 8 submitted during proceedings before the opposition division with letter of 12 August 2014.

1.2 The appellant requested not to take these auxiliary requests into consideration, as they were directed towards embodiments which were not decided upon in the appealed decision, thereby raising fresh and divergent issues.

1.3 This procedural request of the appellant cannot be allowed by the Board.

T 0301/12 - Cost apportionment

Key points

• "In the board's communication accompanying the summons to oral proceedings, the board in some detail dealt with the appellant's arguments submitted upon appeal, concluding that the appeal was likely to be dismissed." 
• "  the appellant announced in writing that it "... will probably not be represented at the oral proceedings ...", while at the same time explicitly upholding the request for oral proceedings, and without providing further arguments on the substance. ... [This] submission is worded in terms which are, deliberately or not, unclear and leave the respondent in the dark as to the appellant's true intentions. In view of appellant's unclear statement, the respondent had no alternative than to properly prepare for the case of the appellant attending the oral proceedings." 
• " Each party is subject to an equitable procedural obligation to give notice, in good time and as early as possible, if not attending oral proceedings to which it has been duly summoned. If a party only knows shortly before the specified time for the oral proceedings that it is not going to attend, such equitable obligation extends also to informing any other parties to the appeal proceedings of such non-attendance. Failing which, an apportionment of costs in favour of another party, who has attended as summoned, may be justified for reasons of equity" 
• From the order: " The appellant shall bear the costs incurred by the respondent for the preparation and attendance of the oral proceedings by the representative." 
• An interesting question is whether the fixing of the costs will be done by a Formalities Officer of the OD or by a Registrar of the Board. Update 12.02.2019: as Mr. Rennie-Smith pointed out in a comment, the Board will decide itself on the fixing of the costs according to T2165/08 (" a request to fix the costs, accompanied by a bill of costs and supporting evidence should be filed with the board, and the prescribed fee paid")
• There is a rather particular letter of the appellant after in reply to the minutes of the BOard, expressing some surprise about a different apportionment of costs being ordered against them. 

EPO T 0301/12 -  link

Conclusion

33. The claimed subject-matter involves an inventive step. Thus, the finding in the decision under appeal that the ground for opposition of Article 100(a) in conjunction with Article 56 EPC does not prejudice the maintenance of the patent as granted, is correct.

Article 113(1) EPC - right to be heard

34. In its communication pursuant to Article 15(1) RPBA, the board provided a reasoned provisional opinion on some of the issues to be discussed at the oral proceedings. The grounds and evidence on which the present decision is based, are essentially those on which the decision under appeal and/or the board's provisional opinion were based. Hence, they are known to the appellant. Even though it was given the opportunity to make written and/or oral submissions thereon, the appellant neither replied in substance to the board's communication nor attended the oral proceedings.

Apportionment of costs

35. In opposition appeals proceedings the board may, for reasons of equity, deviate from the principle of each party bearing its own costs, and order their different apportionment (Article 104(1) in conjunction with Article 111(1), second sentence, Rule 100(1) EPC, and Article 16(1) RPBA. Such reasons of equity exist, when a party's costs arise from culpable actions of an irresponsible or even malicious nature by another party (Case Law of the Boards of Appeal, 8th ed. 2016, IV.C.6.2; cf. also Bostedt in Singer/Stauder, EPÜ, 7th ed., Art. 104 Rn 7).

T 2377/17 - Excessive length of procedure

Key points

• In this examination appeal, the Board considers the excessive length of the first instance procedure to be a substantial procedural violation and orders refund of the appeal fee (the Board also considers the claims allowable).
• The EP Entry was in 1999, PACE was requested in 2012, the first Communication was issued in 2014, a response was timely filed. A second PACE request was filed, in November 2015 Summons were issued, oral proceedings were held in June 2016. An Intention to grant was issued based on the 2nd Auxiliary Request, in response the applicant maintained the main request. The refusal was issued in May 2017. Oral proceedings before the Board took place in December 2018. 
• The Board: " In its decisions T 823/11 of 21 December 2015 and T 2707/16 of 11 December 2018, this Board held that unnecessary, excessive delays in the first-instance proceedings resulting in an unreasonable total duration of the grant proceedings may amount to a substantial procedural violation in view of both the applicant's and the public's legitimate interest in a speedy conclusion of the proceedings. In the present case, even though the Board has dealt with the appeal considerably out of turn, it is highly unlikely that the EPO will be able to publish the mention of the grant of a patent before the term of the patent expires. The delay of 14 years before the Examining Division issued its first substantive communication therefore has to be considered to be a substantial procedural violation." 
• " It is true that reimbursement of the appeal fee cannot be seen as a true compensation for the costs incurred as a result of delays in the proceedings. But, in the Board's view, reimbursement of the appeal fee may well be "equitable" even if it is not full compensation."
• As a comment, I wonder if EPO management cares about this kind of decisions at all. 
• Interesting fact: the Swedish Patent Office was the ISA, but there is no supplementary ESR because under the applicable old rules, the SESR is dispensed with in case of a European ISA.

EPO T 2377/17 - link

7. Request for reimbursement of the appeal fee

7.1 The appellant requested reimbursement of the appeal fee under Rule 103(1)(a) EPC in view of the delays in the first-instance proceedings. For this request to be allowable, it has to be established that the delays form a substantial procedural violation which renders reimbursement of the appeal fee equitable.

7.2 The Examining Division became responsible for the application's examination on 20 December 1999, the day on which the requests for entry into the regional phase and examination became effective (no supplementary European search report was to be drawn up in view of the decision under Article 157(3)(a) EPC 1973 of the Administrative Council of 21 December 1978, OJ EPO 1979, 4, Corr. 50). It then took more than 14 years until, on 7 February 2014, the Examining Division issued its first substantive communication under Article 94(3) EPC. After the appellant's reply by letter of 2 May 2014, it took a further 18 months for the Examining Division to issue its next action on 12 November 2015, which was a summons to oral proceedings. During these periods of delay, no procedural complications occurred that could have prevented the Examining Division from carrying out the substantive examination of the application.

T 0623/18 - Grounds of opposition

Key points

• The OD had found an opposition inadmissible for failure to comply with Rule 76(2)(c) which requires that the Notice of opposition shall contain " a statement of the extent to which the European patent is opposed and of the grounds on which the opposition is based, as well as an indication of the facts and evidence presented in support of these grounds". The insufficiency attack would amount to merely clarity, for the novelty attack the opponent had failed to refer to the individual features of claim 1.
• The Notice of opposition was submitted by an (in house patent) counsel of the opponent. The Notice states that the (numerous) features of the preamble of claim 1 are deemed to be known as they are in the preamble. The Notice indeed does not include a feature-by-feature analysis at all.
• " The board therefore concludes, [...], that the notice of opposition complies with the ordinary meaning of the terms of Rule 76(1) and (2)(c) EPC interpreted in their context and in the light of the object and purpose of the regulation." 
• "The board sees no basis for requiring more from the statement under Rule 76(1) and (2)(c) EPC and, in particular, none for making admissibility of the opposition dependent on the assessment of substantive questions, which must (rather) be dealt with during examination of the opposition under Article 101 EPC. " 
• The Board also indicates that it gives a different interpretation of Rule 76 than the Guidelines. "The Guidelines for examination, D-IV, 1.2.2.1 (v), state: "The contents of the statement of grounds must enable the patent proprietor and the opposition division to clearly understand the nature of the objection raised and the evidence and arguments adducted in its support. This entails explaining the relevant circumstances to such an extent that neither the patentee nor the opposition division needs to undertake further investigations to be able to form a definitive opinion on the grounds for opposition".
  They [=the Guidelines] imply with reference to T 222/85 that the grounds for opposition must be "clearly presented and argued" so as to make the opposition admissible. As explained above, the board considers that Rule 76(2)(c) EPC does not require as much from the notice of opposition; in particular, whether the "written reasoned statement" enables the "patent proprietor and the opposition division to clearly understand the nature of the objection raised and the evidence and arguments adducted in its support" and whether "further investigations" are necessary for the patentee or the opposition division "to be able to form a definitive opinion on the grounds for opposition" (emphasis by the board) is, in the board's judgment, a matter for the allowability rather than the admissibility of the opposition." 
• The Board also notes that " Moreover, the opposition division may, under Article 114(2) EPC, disregard facts or evidence which the opponent chooses to submit after the opposition period according to Article 99 EPC." 
• As a comment, this does not really address if the opponent can submit the feature-by-feature analysis after the opposition period (is that submitting a new 'fact' or a new argument?) and if the opponent can discuss the twelve features of the preamble of claim 1 only after expiry of the opposition period. For allowability, the only question is if the cited document D1 actually teaches all the features in the preamble or not, which is quite a different question from whether the opponent substantiates this. Under Art. 114(1) the OD must still examine this ("Amtsermittlungsprinzip"), yet without the Opponent making its case.

EPO T 0623/18 - link

Reasons for the Decision

The decision under appeal

1. The opposition was based on the grounds for opposition under Article 100(a) EPC, in combination with Articles 54 and 56, and Article 100(b) EPC.

1.1 With regard to Article 100(b), the opponent argued that claim 1 introduced a "remote data processing server" but failed to specify its relation to the preceding features of the claim relating to a "remote data processing system". For that reason it was argued that the skilled person could not carry out the invention (see the notice of opposition, page 9, point 1).

1.2 With regard to Article 100(a) EPC in combination with Article 54 EPC, the opponent gave reasons why, in its view, the combination of documents D6A, D6B and D6C, which all related to the control system "AC 870P", and also document D7, disclosed all features of claim 1 at least implicitly.

1.3 With regard to Article 100(a) EPC in combination with Article 56 EPC, the opponent started from the assumption that the preamble of claim 1 was known in the prior art, stated which problem the features of the characterising portion solved over such prior art and gave reasons why, in its view, each of documents D6A, D6B and D7 disclosed a solution to that problem with all the features of the characterising portion of claim 1. Additional remarks were made on further prior-art documents.

2. In view of this, the opposition division came to the following conclusion:

2.1 With regard to Article 100(b) EPC, the opponent's reasons related merely to the clarity of the claims, which was not a ground for opposition, rather than the question whether the patent disclosed the invention in a manner sufficiently clear and complete for it to be carried out by the skilled person. Hence, the ground for opposition under Article 100(b) EPC was insufficient­ly substantiated (see the decision, reasons 2-2.3).

2.2 With regard to Article 100(a) EPC in combination with Article 54 EPC, the opponent's arguments failed to refer to the individual features of claim 1 and so did not enable the patent proprietor or the opposition division to reconstruct the novelty objection without making their own investigations (see reasons 3-3.2). With regard to Article 100(a) EPC in combination with Article 56 EPC, the opponent further failed to indicate from which piece of prior art the features of the pre­amble of claim 1 were known (see reasons 3.3). Hence, the ground for opposition under Article 100(a) EPC was not sufficiently substantiated either. Reference in this regard was made to decision T 613/10 (see the decision under appeal, reasons 3.1).

2.3 The opposition division concluded that the requirements of Rule 76(2)(c) EPC were not met (see reasons 4).

J 0007/18 - Appeal on further processing

Key point

• In this examination appeal, no Statement of grounds was filed (against a decision of the ED to refuse further processing) and the Registry informed the appellant about this and requested observations to be filed within two months. The appellant withdrew the appeal after the expiry of the period. The Board decides that in such a case, there is no ground for a refund of 50% of the appeal fee. 
• The file is interesting. The Rule 112(1) Notice of loss of rights was issued automatically (presumably by a formalities officer) for failure to file a response to an Art.94(3) Communication. Further processing was requested in 2015, the fee paid and the omitted act was completed but after the expiry of the time limit. An invitation to file comments was issued. The applicant maintained the request for oral proceedings. Oral proceedings were held before the ED, the applicant did not appear. The decision under R112(2) was taken by the ED (not a formalities officer). A notice of appeal was filed early in 2018. 
• The Registry issued the Communication, as allowed under the decision of the Presidium (OJ 2018 sp1 VI.2). Hence, it is a communication under Rule 103(2)(b).

Summary of Facts and Submissions

I. The appeal is directed against the decision of the Examining Division posted on 30 November 2017.

II. The appellant filed a notice of appeal on 12 February 2018 and paid the appeal fee on the same date.

III. By communication of 13 June 2018, received by the appellant, the Registry of the Board informed the appellant that it appeared from the file that the written statement of grounds of appeal had not been filed, and that it was therefore to be expected that the appeal would be rejected as inadmissible pursuant to Article 108, third sentence, EPC in conjunction with Rule 101(1) EPC. The appellant was informed that any observations had to be filed within two months of notification of the communication.

IV. By letter dated 3 September 2018 the appellant withdrew its appeal and requested reimbursement of 50% of the appeal fee.

V. By communication dated 21 September 2018 the Board informed the appellant of its preliminary opinion that the request for reimbursement of part of the appeal fee could not be allowed and that it did not intend to summon the appellant to oral proceedings. It asked the appellant to confirm whether it maintained the request for reimbursement of part of the appeal fee in view of the communication and informed the appellant that any submissions or requests had to be made within two months of notification of the communication.

VI. No reply has been received.

Reasons for the Decision

1. Rule 103(2)(b) EPC determines the reimbursement of the appeal fee in cases where the Board has issued a communication inviting the appellant to file observations. Pursuant to this rule 50% of the appeal fee shall be reimbursed if the appeal is withdrawn before expiry of the period for filing observations.

T 1063/18 - Plants and Rule 28 (Pepper)

Key points

• The written decision in the Pepper case is now available. The Technical Board decided that recently added Rule 28(2) EPC is in conflict with Article 53(b) EPC as interpreted by the Enlarged Board of Appeal in decisions G 2/12 (Tomatoes II) and G 2/13 (Broccoli II). The Technical Board decided that "in accordance with Article 164(2) EPC, the provisions of the Convention prevail".
• "In the decision under appeal, the examining division reasoned that Rule 28(2) EPC constitutes a "clarification of the scope of Article 53(b) EPC". The board however cannot deduce from decisions G 2/12 and G 2/13 any other interpretation of Article 53(b) EPC than that plants are not excluded from patentability, even if they can only be obtained by an essentially biological process. Since [new] Rule 28(2) EPC excludes plants or animals exclusively obtained by means of an essentially biological process from patentability, its meaning is in conflict with the meaning of Article 53(b) EPC as interpreted by the EBA."
• "In the present case, Rule 28(2) EPC in fact reverses the meaning of Article 53(b) EPC, as interpreted by the EBA. In view of this direct contradiction, interpreting Rule 28(2) EPC in such a way that no contradiction exists is not possible."
• "The board agrees with the finding in decision T 39/93 (see Reasons, point 3.2) that "the meaning of an Article of the EPC (...), on its true interpretation as established by a ruling of the Enlarged Board of Appeal cannot, (...), be overturned by a newly drafted Rule of the Implementing Regulations, the effect of which is to conflict with this interpretation". The board concludes that it must apply decisions G 2/12 and G 2/13 unless it has reasons to refer the same question underlying these decisions for reconsideration by the EBA."
• The Board sees no reasons for a new referral to the EBA. The Boards observes that the Notice of the Commission of the EU of 8 November 2016 "has no legal authority." In particular, within the legal framework of the EU, binding interpretations of the Biotech Directive are to be given by the CJEU. Accordingly, also the argument that new Rule 28(2) EPC served to ensure consistency between the Biotech Directive and the EPC fails because the presumption that the Biotech Directive has to be interpreted as set out in the Notice is not valid.
• "If the adoption of Rule 28(2) EPC by the Administrative Council [...] were to be considered a subsequent agreement in the sense of the Vienna Convention and used for the interpretation of Article 53(b) EPC, this would reverse the meaning of Article 53(b) EPC as interpreted by the EBA (see point 24 above), i.e. it would represent an amendment of an Article of the Convention." However, the AC is not competent to amend Article 53(b) EPC. - 20.02.2019: here I originally omitted a key phrase from the decision: "However, the Administrative Council is not, in the light of Articles 33(1)(b)and 35(3) EPC, competent to amend the Convention, here Article 53(b) EPC, by amendment of the Implementing Regulations, here Rule 28(2) EPC."   
• As a comment, T 39/93 was (in relevant part) about what is now Rule 116 for which G 6/95 found that Rule 116 does not apply to the Boards. G6/95 was about whether the Boards are required to issue a preliminary opinion, T 39/93 is (in the relevant part, namely headnote I) about whether Rule 116 affects the rules for admitting documents in appeal. I note that T 39/93 is more frequently cited for its headnote II about the "subjective" technical problem, or for its headnote III about the skilled person does not have any inventive capability. Its headnote I is that Rule 116 " should not be construed as an invitation to file new evidence or other material departing from the legal and factual framework of issues and grounds pleaded and evidenced throughout the proceedings prior to the hearing of the appeal". The present decision refers to point 3.2 of T 39/93 where the Board "for the sake of completeness" reasoned that "the Board cannot accept the Appellant's legal proposition that an amendment to a procedural rule [of Rule 116] is capable of overriding those well-established legal principles, laid down in the points of law above referred to, that define the nature and function of appeals, and in particular the scope and effect of Article 114(1) EPC in relation to that function." (which is followed by the sentence quoted above).

EPO Headnote

Rule 28(2) EPC is in conflict with Article 53(b) EPC, as interpreted by the Enlarged Board of Appeal in decisions G 2/12 and G 2/13. In accordance with Article 164(2) EPC, the provisions of the Convention prevail.

EPO T 1063/18 - T1063/18 - link

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 99 EPC and is therefore admissible.

Main request

Exception to patentability under Article 53(b) EPC in conjunction with Rule 28(2) EPC

2. Exception to patentability under Article 53(b) EPC in conjunction with Rule 28(2) EPC of the subject-matter of claims 1 and 2 was the sole reason given in the decision under appeal for refusing the application.

3. Article 53(b) EPC excludes from patentability "plant or animal varieties or essentially biological processes for the production of plants or animals".

Decisions G 2/12 and G 2/13

4. Decisions G 2/12 (OJ EPO 2016, A27; Tomato II) and G 2/13 (OJ EPO 2016, A28; Broccoli II) of the Enlarged Board of Appeal (EBA) concern the patentability of plants directly obtained by and/or defined by an essentially biological process, the meaning of "essentially biological process for the production of plants" having already been defined in decisions G 2/07 (OJ EPO 2012, 130; Broccoli I) and G 1/08 (OJ EPO 2012, 206; Tomato I). The EBA considered that what remained to be determined was: whether or not the exclusion from patentability of essentially biological process for the production of plants "is limited to method or process claims or whether it also encompasses a patent claim for a product that is directly obtained and/or defined by an 'essentially biological process'." The EBA gave an interpretation of the meaning of this aspect of Article 53(b) EPC, considering its wording, the legislator's intention and taking into account the aspect of subsequent agreement and practice within the meaning of Article 31(3) Vienna Convention on the law of treaties, concluded at Vienna on 23 May 1969 (further referred to as: the Vienna Convention), as well as a systematic and historical interpretation (see Reasons, point VII.).

5. The EBA stated that applying the various methodical lines of interpretation to Article 53(b) EPC pointed towards not extending the scope of the process exclusion pursuant to Article 53(b) EPC "directly to a product claim or a product-by-process claim directed to plants or plant material such as a fruit, or to plant parts other than a plant variety" (see Reasons, points VII.6.(2) and (3)).