29 Mar 2019

T 1750/16 - Admissibility appeal

Key points

  • In this opposition appeal, the patentee as appellant files a new main request and auxiliary request with the Statement of grounds. The appeal is admissible because the patentee discussed in the Statement of grounds why the new requests overcome the objections of the OD.
  • However, the requests are not admitted because they should have been filed during the first instance proceedings. The patentee made the choice to not file requests responsive to the Article 84 and 123(2) objections of the opponents and the preliminary opinion of the opposition division. The  Board notes that the preliminary opinion was issued 8 months before the oral proceedings. Therefore, the requests can not be filed only in appeal. The new claims also constitute a fresh case


EPO T 1750/16 - link



Machine translation from the French original

Reasons for the decision
1. Admissibility of the appeal
1.1 The board is of the view that the appeal is admissible for the reasons set out below.
1.2 In the present case, the admissibility of the appeal depends on the conformity of the appeal brief with Article 108, third sentence, EPC, combined with Rule 99 (2) EPC. According to these provisions, in the statement of grounds of appeal, the applicant must indicate "the grounds on which the contested decision must be annulled or the extent to which it must be amended, as well as the facts and evidence on which the appeal is well-founded ".
The question whether the conditions of Article 108, third sentence, EPC and Rule 99 (2) EPC are satisfied must be decided on the basis of the statement of grounds of appeal and the grounds of the contested decision, in taking into account the amendments to the claims (see Case Law of the Boards of Appeal of the European Patent Office, 8th edition, IV.E.2.6.3a) with reference, inter alia, to decisions T 162/97 and T 2001 / 14).

28 Mar 2019

T 1680/17 - Fulvestrant formulation

Key points

  • In this opposition appeal (whith parallel national litigation), claim 1 is for a second medical use of fulvestrant for the treatment of breast cancer with intra-muscular injection with distinguishing feature over D4 that fulvestrant is formulated with ehtanol, benzyl alcohol, benzyl benzoate, and castor oil. The gist is that this combination of solvents allows for a high concentration of fulvestrant and hence a small volume for injection. D4 is silent about the cosolvents in the "castor oil-based vehicle" used therein. 
  • D1 is a scientific article using in one of the examples the precise formulation of fulvestrant according to claim 1. D1 " aims to elucidate mechanisms underlying an acquired tamoxifen resistance in the therapy for estrogen receptor-positive breast cancer". 
  • The objective technical problem in view of D4 is therefore, according to the Board: "The technical problem is the provision of a castor oil-based vehicle for a fulvestrant containing composition allowing for treatment of breast cancer by intramuscular injection." 
  • The Board finds that the use of the formulation of D1 is not obvious. " However, the purpose of [D1] is the elucidation of a biochemical mechanism. [D1]  does not aim at the provision of a therapy." 
  • " Firstly, [D1] is a scientific paper dealing with basic research. The board considers that the skilled person would not have turned to formulations used in basic research when aiming at providing a formulation for therapeutic treatment. The requirements of a formulation to be used in basic research are fundamentally different from the requirements of a formulation to be administered to a patient. While in basic research merely the availability of the active at the test site is of relevance, in a clinical situation aspects such as safety/tolerability and bioavailability over the treatment period are decisive factors." 


EPO T 1680/17 -  link


II. Independent claim 1 of the patent in suit as granted reads as follows:
"1. A pharmaceutical formulation for use in the treatment of breast cancer by intra-muscular injection,
wherein the pharmaceutical formulation comprises fulvestrant,
a pharmaceutically-acceptable alcohol being a mixture of 10 % weight of ethanol per volume of formulation and 10 % weight of benzyl alcohol per volume of formulation,
and the formulation contains 15 % weight of benzyl benzoate per volume of formulation
and a sufficient amount of a ricinoleate vehicle so as to prepare a formulation of at least 45 mgml**(-l)of fulvestrant,
wherein the ricinoleate vehicle is castor oil, and wherein the total volume of the formulation is 6 ml or less."

Reasons for the Decision

4. Novelty (Article 100(a) and Article 54(1) EPC)
Document (1) [McLeskey et al.,] does not provide a direct and unambiguous disclosure of the feature of intramuscular injection and is thus not novelty-destroying for the subject-matter of claim 1.
Respondent 1 has argued that the skilled person would have understood the disclosure of document (1) as referring to intramuscular administration. The board cannot accept this line of argument since document (1) discloses the formulation under consideration solely for animal studies. In animal studies a subcutaneous administration is a common mode of administration which is, however, distinct from intramuscular administration. Therefore, intramuscular administration is not directly and unambiguously disclosed.
The board notes that document (1) does not disclose any concrete formulations in the context of the therapeutic treatments discussed in the passages of the "introduction" (page 697, right column, first paragraph to page 698, left column, first paragraph).
The ground for opposition under Article 100(a) and Article 54 EPC does therefore not prejudice the maintenance of the patent.

27 Mar 2019

T 1338/12 - Deposit of micro organisms (and transfer priority)

Key points

  • In this examination appeal (taken by the Board in extended composition) and with EPC1973 as applicable law (as the Board concluded), claim 1 refers to a deposited microorganism. The applicant is not the same person as the depositor microorganism. Rule 28(1)(d) EPC1973 requires that in such a case an authorization from the depositor must be filed, as well irrevocable consent from the depositor to the deposited material being made available to the public (the same is now in Rule 33). No such consent was filed within the period of Rule 28(2).
  • The applicant had requested under Rule 139 EPC2000 (Rule 88 EPC1973) to correct the applicant to the effect of adding the depositor. This correction was accepted by the Examining Division. However, the Board assesses the requested correction substantively.
  • The Board finds the submitted evidence to be insufficient to show that the application should have been filed by both the depositor and the applicant. The request was also filed only 9 years after the filing date when the "applicant identity" issue came up.
  • "The board considers that the request for correction pursuant to Rule 139 EPC 2000, first sentence, was not a request for correction of an error to reflect the true intention of the sole original applicant at the relevant time, but rather a request for correction at the plaintiff's convenience resulting from a modification of his opinion or a development of his intentions subsequent to the relevant date. Therefore, the board considers that the request for correction under Rule 139 EPC 2000, first sentence, should have been refused by the Examining Division."
  • Note the clear analogy with the transfer of priority. 
  • Note also that the Board appears to apply (implicitly) the rule that there can be no reformatio in peius in appeals against refusals of applications. Hence, the Board's adverse finding contrary to the decision of the Examining Division to allow the correction presumably does not lead to reformatio in peius.
  • The Board leaves open the question of whether the correction if it had been allowable in substance, would have retroactive effect. The Board notes that the microorganism was deposited by two depositors jointly, whereas only one of these was requested to be added. This is still not sufficient under Rule 28 EPC 1973. 
  • The Board also rejects the applicant's argument based on the protection of good faith (which argument was based on the Examining Division raising the invalidity of the deposit only years after the filing date).


EPO T 1338/12 - link

Machine translation from the French original


Statement of Facts and Evidence
I. An appeal was lodged by the applicants (SEDERMA and the National Center for Scientific Research, CNRS) against the decision of the Examining Division dated 16 January 2012 to refuse the application European patent no. 02 702 466.0, published as International Patent Application WO 02/066668. The Examining Division considered that the request did not comply with the requirements of Article 83 EPC in conjunction with Rules 31 and 33 EPC, and that the principle of good faith or the protection of legitimate expectations was not applicable in this case.
II. With their statement setting out the grounds of appeal, the applicants sought annulment of the decision of the Examining Division and submitted five annexes in support of their arguments. In the alternative, if the decision of the Examining Division was not annulled, the applicants also sought reimbursement of the renewal fees from 2003 to 2012 and, in any event, the holding of the following oral proceedings Article 116 EPC.
III. By a communication dated 1 August 2018, annexed to the notice of oral proceedings and issued pursuant to the provisions of Rule 15 (1) of the Rules of Procedure of the Boards of Appeal (RPCR), the Chamber explained a provisional and non-binding opinion on some of the points raised.
IV. By a letter of 7 December 2018, the applicants replied to that notification and, without putting forward any new arguments or commenting on that notification from the Chamber, stated that they would not take part in the oral proceedings.
V. Following the oral proceedings held on 14 December 2018 in the absence of the applicants, the Chamber rendered its decision.
VI. Claim 1 on the basis of the sole basis of the decision of the Examining Division is as follows:
1. Cosmetic or dermopharmaceutical composition containing a mixture of proteins obtained by fermentation of microorganisms, then extraction of the proteins produced from the fermented medium, characterized in that the microorganisms are derived from marine waters located near hydrothermal sources of great depth and are of the family Thermus thermophilus and strain GY 1211 (registered under the serial number I-2715 from the National Collection of Microorganisms Culture (CNCM) of the Pasteur Institute of Paris - France), proteins obtained being thermostable up to 100 ° C.

26 Mar 2019

T 1317/13 - Examples already published / bonus effect

Key points

  • In this examination appeal, D1 is a PCT application "published shortly before the priority date of the present application. The applications have two inventors in common. The disclosure content of document D1 is largely identical to that of the latter, and in particular, all three examples are identical." Hence, the complete experimental disclosure of the application at issue was already prior art by D1.
  •  Claim 1 is directed to a medicament for the treatment of  " gout, gouty arthritis or pseudogout" using an antibody, the antibody ACZ885 was used in the examples of the application and also in D1.
  • The closest prior art is D5 about the colchicine standard therapy of gout.
  • " the board is satisfied that document D5 teaches the skilled person that: (i) increased production of IL-1beta is the trigger for the auto-inflammation in gout as in other auto-inflammatory diseases; (ii) administration of colchicine completely blocks the crystal-induced production of IL-1beta and leads to greatly reduced inflammation and, (iii) gout patients were anticipated to benefit from treatments designated to block IL-1beta." 
  • " Document D1 discloses compounds suitable for blocking IL-1ß in patients suffering in general from auto-inflammatory syndromes, in particular also the ACZ885 antibody as an embodiment of the antibodies defined in claim 1." 
  • The Board concludes that claim 1 is obvious. 
  • The applicant argues a surprising further effect. " The appellant further argued that anti-IL-1beta antibodies had an additional effect on pain perception which was not reported in any of the cited prior art, in particular not in documents D1 and D5, which was however an effect which was indeed achieved by the antibody ACZ885 as demonstrated by the results in the post-published document D9." 
  • The Baord considers this a bonus effect.
  • The applicant "has further submitted that "arguments about a 'bonus effect' were often used when there was effectively a 'one-way-street' situation", which according to the appellant was a situation "in which the skilled person was inevitably guided towards a particular destination, such that any surprising effects would be a 'bonus' which would have been achieved anyway." However, the present situation was not a one-way-street situation since document D20 described various different approaches to inhibiting the IL-1 system." 
  • This argument does not convince the board to change its conclusion in point 22 above either. In fact, decision T 21/81, supra, considers a situation in which it was already obvious that the skilled person would arrive at something falling within the terms of a claim, because an advantageous effect was expected to result from the combination of teachings of the prior art documents, resulting in a situation in which an extra effect cannot establish inventive step. Accordingly, a "one-way-street" situation in the sense defined by the appellant cannot be inferred as a mandatory prerequisite for the principle established in this decision.




EPO T 1317/13 - link

Main request - claim 1
3. The claimed subject-matter (see section II) is a medicament for use in the treatment of auto-inflammatory syndromes, namely gout, gouty arthritis or pseudogout (for the ease of reading the three disorders will in the following be referred to as "gout"). The medicament is defined as comprising a human interleukin (IL)-1beta binding antibody characterised by comprising a first and second domain defined by particular amino acid sequences. The anti-human IL-1beta monoclonal antibody ACZ885, an example of an antibody falling under this definition, was used in the examples of the application. The antibody ACZ885 was known to the skilled person from the disclosure in document D1.
Closest prior art
4. A frequently applied line of therapy for treating patients suffering from auto-inflammatory diseases such as gout at the priority date of the application was the oral administration of colchicine. This treatment is in particular able to resolve the initial inflammatory phase of gout but was also known to be poorly tolerated because of predictable gastrointestinal side-effects (see e.g. document D5, page 238, right-hand column, lines 15 to 17; page 239, right-hand column, lines 10 to 12, and document D12, e.g. abstract, last sentence, and Table 1, final part).
5. The appellant agreed with the board and the examining division that document D5, disclosing inter alia the colchicine standard therapy of gout (see point 4), represented the closest prior art for the assessment of inventive step for the claimed subject-matter.

25 Mar 2019

T 1389/13 - Admissibility appeal; wrong name

Key points

  • In this opposition appeal, the Notice of appeal was filed in the correct (new) name of the opponent, but the Statement of grounds mentioned the old name on the second page. The Board concludes that this does not lead to inadmissibility of the appeal
  • " The statement of grounds of appeal that was subsequently received was signed by the same representative who had signed the notice of appeal and the notice of opposition. The appeal case number, the number of the patent in suit, the name of the (then sole) patent proprietor and the internal reference number mentioned in the document corresponded to the indications provided in the notice of appeal. Explicit reference was made to the "appeal of opponent filed on 13 June 2013"." 
  • "The fact that "Bayer Schering Pharma AG", the opponent's former name, as proven by the documentary evidence, was indicated on the second page of the statement of grounds of appeal as the legal person on behalf of which the document was submitted, points to the fact that it was indeed on behalf of the opponent and not on behalf of a third party."
  • " considering that there is no indication on file that a legal person called "Bayer Schering Pharma AG" existed at the point in time when the statement of grounds was filed, the mentioning of "Bayer Schering Pharma AG" in the statement of grounds of appeal is an obvious error and it is evident that it should read "Bayer Pharma AG" (or "Bayer Pharma Aktiengesellschaft").
  • " Thus, the board has no doubt that the statement of grounds of appeal in question was indeed filed on behalf of the opponent, i.e. the party referred to as appellant II in these appeal proceedings." 
  • The Board does not identify a formal request for correction of the appellant's name under Rule 139.
  • There was also a request of the patentee for apportionment of costs. " The board notes that the latter line of argument on the perceived misconduct on the part of the EPO (the board dealing with the case) has no bearing on the board's decision about a different apportionment of costs under Article 104 EPC since the EPO is not a party to the proceedings, nor is it conceivable that the delay in forwarding the communication or the non-issuance of a written preliminary opinion can be ascribed to [the opponent]. Hence, these submissions need not be dealt with." 

EPO T 1389/13 -  link

Reasons for the Decision
1. The appeals of both appellants are admissible. Each of them complies with the requirements pursuant to Articles 106 to 108 and Rule 99 EPC.
2. Admissibility of the opponent's (appellant II's) appeal had been contested by appellant I based on the argument that no statement of grounds of appeal pursuant to Article 108, third sentence, EPC had been filed by the opponent, and the statement of grounds of appeal in question had been filed by a different legal person.
3. Notice of appeal dated 13 June 2013 was duly filed by the opponent Bayer Pharma Aktiengesellschaft and the appeal fee was duly paid. The notice of appeal comprises, in addition to the details required pursuant to Rule 99(1) EPC, the party's internal reference number.

22 Mar 2019

T 0872/13 - Strawman opponent and acceleration appeal

Key points

  • The opponent asks for acceleration of the appeal. The opponent is "Strawman Limited". The opponent submitted that: "The real party of interest behind the opponent Strawman Limited was CSL Limited, which was developing a recombinant Factor VII- albumin fusion protein and therefore needed certainty to continue its development activities in view of the large sums involved. Any decision of CSL Limited as a potential licensee under the patent depended on the outcome of the appeal proceedings, and thus the request for accelerated proceedings should be granted as falling within one of the examples given in tOJ 2008 p.220].
  • The Board denies the reuest. "As to the appellant-opponent's second request for acceleration, the board noted that the party requesting acceleration, the appellant-opponent, had not argued that it had itself a legitimate interest in the proceedings being dealt with rapidly. The interests on which the request for acceleration were based concerned the company CSL Limited. This company was however not a party to the present appeal proceedings and the board saw no reason why the interests of this third party should be attributed to the appellant-opponent." 
  • This shows a disadvantage of a strawman opponent. 



EPO T 0872/13 - link

XVII. The arguments of the appellant-opponent, in so far as they are relevant to the present decision, may be summarised as follows:
Request for accelerated proceedings
The patent was causing uncertainty and hampering investment and development decisions by interested parties (first request for acceleration presented with the statement of grounds of appeal). The real party of interest behind the opponent Strawman Limited was CSL Limited, which was developing a recombinant Factor VII- albumin fusion protein and therefore needed certainty to continue its development activities in view of the large sums involved. Any decision of CSL Limited as a potential licensee under the patent depended on the outcome of the appeal proceedings, and thus the request for accelerated proceedings should be granted as falling within one of the examples given in the Notice from the Vice-President DG3 of 17 March 2008 (OJ EPO 2008, 220; second request for acceleration of the appeal proceedings).

21 Mar 2019

T 1455/14 - Correcting an error: threefold procedural violation

Key points
  • In this opposition appeal, the Opposition Division had used "its discretion to correct this obvious error" in the text of claim 1 after the oral proceedings had been closed. The Board finds this to constitute three procedural violations.
  • " there is no basis in the EPC for such an alleged discretion of the Oppo­si­tion Division. Furthermore, even if the opposition division considered there to be an obvious error, there was no corre­spon­ding request according to Rule 139 EPC on the part of the patent proprietor who may not have been aware of the existence of such an error. 
  • This results in a threefold procedural violation, because the written decision is based on a text amended by the opposition division" 



EPO T 1455/14 - link


Reasons for the Decision
1. Procedural violations
1.1 According to point 8 of the contested decision, the "Opposition Division uses its discretion to correct this obvious error" in the text of claim 1 after the oral proceedings had been closed. However, there is no basis in the EPC for such an alleged discretion of the Oppo­si­tion Division.
Furthermore, even if the opposition division considered there to be an obvious error, there was no corre­spon­ding request according to Rule 139 EPC on the part of the patent proprietor who may not have been aware of the existence of such an error.
This results in a threefold procedural violation, because the written decision is based on a text amended by the opposition division:
- which was not submitted by the patent proprietor [The reasoning of the decision is thus not based on an actual request of the patent proprietor - fundamental procedural violation number 1],
- on which the opponent had had no opportunity to comment [The opponent's right to be heard has been violated - fundamental procedural violation number 2] and
- which does not correspond to the decision announced at the end of the oral proceedings (Minutes, page 4, last paragraph) [The decision as announced at the end of the oral proceedings is not reasoned in wri­ting - fundamental procedural viola­tion number 3].

20 Mar 2019

T 1000/14 - Remittal in examination appeal?

Key points

  • In this examination appeal, the applicant requests remittal on the ground that "the board had raised new objections in the appeal proceedings which had not been discussed in the decision under appeal". Furthermore, according to G10/93, the Board can also examine new issues.
  • The Board discusses this request first. The Board notes that is a discretionary power to remit the case. The Board then " that both the claims under examination and the issues to be discussed have remained the same. The appellant could not have been taken by surprise by the aspects of the case pointed out by the board" 
  • " Since the substantive basis of the discussion has not changed, the board finds it appropriate not to remit the case to the department of first instance." 
  • I wonder if this means that if the Board had raised new issues, remittal would have been necessary. Article 111(1) EPC appears to assume that the Board first carries out "the examination as to the allowability of the appeal" and is quite clear that only following such examination, the Board "shall decide on the appeal". Article 111(1) EPC second sentence then states that "the Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution". In my view, this second sentence gives more information about the "shall decide" of the first sentence. This means that the Board must first decide whether the appeal is allowable, only if the appeal is allowable and the impugned decision is hence set aside, can a remittal be ordered. This rule is actually quite important because it safeguards the appellants right to a decision of the Board on the merits of his appeal: the Board can not simply remit the case to avoid having to take a decision on the merits of the appeal. 
  • Note 05.04.2019: the above ["Board must first decide whether the appeal is allowable"] of course only applies if the Board does not refuse the application. If the Board refuses the application, it can do so on any ground. E.g. if the Board finds the claims unclear, the Board can leave open the question if a refusal by the Examining Division based on lack of novelty was correct or not.


EPO T 1000/14 - link

X. The appellant's arguments may be summarised as follows:
Remittal (Article 111 EPC)
The board had raised new objections in the appeal proceedings which had not been discussed in the decision under appeal, in particular the objection concerning lack of clarity. The board's further remarks implied that it regarded document D2 rather than D1 as the closest prior art. It was not fair for the appellant to have only one chance to respond to these new issues.
Reasons for the Decision
1. Remittal (Article 111 (1) and (2) EPC)
1.1 Under Article 111(1) EPC, a board of appeal has the discretionary power either to exercise any power within the competence of the department of first instance or to remit the case to that department for further prosecution.
1.2 Thus the appropriateness of remittal is a matter for decision by the boards, which assess each case on its merits.
1.3 In its Decision G 10/93 (OJ EPO 4/1995, 172), the Enlarged Board of Appeal held that in an appeal from a decision of an examining division in which a European patent application was refused, the board of appeal has the power to examine whether the application or the invention to which it relates meets the requirements of the EPC, including requirements which the examining division did not take into consideration or which it regarded as having been met. If there is reason to believe that such a requirement has not been met, the board shall include this ground in the proceedings.

19 Mar 2019

T 0174/16 - Airline strike and oral proceedings

Key points

  • This opposition appeal deals the decision of the OD to not cancel the oral proceedings held on 10 November 2015 in Munich when Lufthansa had a strike (with nearly 1,000 flights cancelled). 
  • The representative of the proprietor (patentee) found out about the strike on Monday 9 November 2015 (the strike was announced only on Saturday 7 November). By that time, he could not arrange for alternative flights from Warsaw to Munich. 
  • The Boards considers the decision of the OD to not cancel the oral proceedings to be a substantial procedural violation.
  • " It was also unreasonable to consider it "possible by taking due care" to travel by airplane and that "at least going by car would still have been possible". 
  • " it is not reasonable to expect the appellants' representative to take the car on the afternoon of the day before the oral proceedings by referring to "Google Maps" for a total (net) driving time of "8 - 10 hours", as the opposition division did, irrespective of whether the appellants' representative had a driving licence. Whether a [member of the public] present at the oral proceedings came by car from Warsaw is immaterial in this respect. Thus, it can certainly not be said that the appellant's representative "did not [make] all efforts [...] to get to the oral proceedings in Munich". It is thus unreasonable to consider the cancellation of the flight, along with the impossibility of using other travel means, not to constitute "serious reasons" within the meaning of the above provisions."
  • This is a substantial procedural violation. The impugned decision is set aside, the case is remitted, and the appeal fee is reimbursed.

EPO T 0174/16 -  link

Summary of Facts and Submissions
I. The appeal was filed by the appellants (patent proprietors) against the decision of the opposition division to revoke the patent in suit.
II. In the proceedings before the opposition division, the parties were summoned to oral proceedings to be held on 10 November 2015 in Munich.
[...]
VIII. The arguments of the appellants, as far as relevant to the present decision, may be summarised as follows:
The opposition division's decision to refuse the request for postponement was flawed. The request for postponement was not filed late, because the appellants' representative only found out about the strike on the morning of 9 November 2015, when he tried to perform an online check-in. As soon as he had found out about the strike he did everything he could to remedy the situation. While the written request was filed by fax only at about 15.00 hrs, the representative tried to contact the opposition division by telephone as early as 12.20 hrs, immediately after he had found out that rebooking of the flight was not possible, and around 13.45 hrs there was a telephone conversation with the first examiner of the opposition division, who was informed of the situation. It was not possible to fly to Munich on 9 November 2015. The fact that three people on the side of the opponent were present at the oral proceedings and came from Warsaw and Krakow cannot justify the assumption made by the opposition division that it was possible to fly to Munich. It was not possible to drive by car in particular because the appellants' representative does not have a driving licence. Immediately after the representative had been informed by the EPO that a written request was necessary, such a request was prepared and submitted by fax at about 15.00 hrs. The opposition division's argument that the representative could have gone to the airport in order to try to rebook was unreasonable. The representative had contacted the airline trying to rebook his flight, but to no avail. It was therefore pointless to go to the airport in order to try to rebook the flight.
Not only was the opposition division's decision unreasonable, but the appellants had also been misled by the EPO, in that the formalities officer had assured the appellants' representative in several telephone conversations that the oral proceedings would be postponed.


Reasons for the Decision
1. Request for postponement of the oral proceedings before the opposition division
1.1 It is within the discretion of the opposition division to grant a request for postponement of the oral proceedings before it. When arriving at its decision the opposition division has to consider all relevant factors of the particular circumstances of the case and must exercise its discretion in a reasonable way (T 1505/06, Reasons 1.3 and 1.4; T 447/13, Reasons 2 and 3 referring to G 7/93, Reasons 2.6, and citing T 2526/11, Reasons 2.2).

18 Mar 2019

T 0683/14 - Appeal decision without appeal

Key points

  • The decision was taken by the Board in extended composition with five members.
  • In this examination appeal, interlocutory revision was granted but the request for refund of the appeal fee was refused. Hence, this request is forwarded to the Board. The Board issues summons. The applicant withdraws the appeal and requests a 50% refund under (relatively new) Rule 103(2)(a) EPC.
  • The Board refuses the 50% refund. The reason is that there was no appeal to be withdrawn.
  • " The board notes that the examining division rectified the decision under appeal pursuant to Article 109(1) EPC. [...] This means that the examining division set the decision under appeal aside and allowed the appeal. The appeal was not remitted and has thus never been pending before the board. [...] In the absence of a pending appeal that might be withdrawn, Rule 103(2) EPC does not apply."
  • The Board also decides on the request for 100% refund based on an alleged procedural violation.
  • The facts are as follows. Oral proceedings were held before the OD, no decision was announced. A Rule 71(3) intention to grant based on auxiliary request was issued. In response, the applicant filed new claims and a new document, namely a declaration evidencing that an alleged prior art document was confidential. The ED then issued the refusal decision, which also stated that the new evidence was disregarded.
  • The Board finds that the ED erred by acting in this way. Even if the debate was closed at the end of the oral proceedings, no formal decision was taken, and the debate may be re-opened. The Board cites T 595/90 and finds that it applies by analogy to EPO departments of first instance. The quote of T95/90 is " ... the closing of the debate ... normally terminates the possibility of [making] further submissions. Observations submitted thereafter could only be taken into account if the Board reopened the debate (Article 113 EPC) which depends on its discretion." 
  • However, the Board labels this as an error "of a substantive nature" 
  • " In so proceeding, the examining division implemented its erroneous position that the confidentiality document submitted on 1 August 2013 could not be taken into account because the debate had been closed and a "decision" had been taken during the oral proceedings of 10 December 2012. This error was of a substantive nature, and the procedural consequences thereof, i.e. in particular the adopting of a decision directly, without considering resuming examination, on the basis of the confidentiality document, were caused exclusively by the implementation of the erroneous substantive position." 
  • As a comment, this means that if an Examining Division applies Article 113 erroneously (see the cited decision T 595/90) based on an incorrect understanding of case law, this is not a procedural violation according to this Board. I find this difficult to understand. Does the Board mean that a violation of the right to be heard based on a mistaken view on the case law or the meaning of Article 113 EPC is not a procedural violation? 
  • As a further comment, I note that the Board decides on the part of the appeal relating to the request for 100% refund while simultaneously finding that there was no appeal at all. Clearly, had the applicant not filed a notice of appeal, there would have been no decision on this point by the Board. So here we have a decision of the  Board, resulting from a Notice of appeal, but were an appeal "never [has] been pending before the board". I don't find this persuasive. Clearly, granting the 50% refund would have opened a loophole in Rule 103 in case of interlocutory revision (Rule 103 appears to assume that the negative impugned decision is accepted by the appellant rather than overturned by interlocutory revision). However, that loophole can easily be remedied by amending Rule 103(2) EPC.
  • The actual reasoning of the Board merely refers to the Board's preliminary opinion. This makes the decision difficult to read.


EPO T 0683/14 -  link

Summary of Facts and Submissions
I. The then applicants, now patent proprietors, had filed an appeal against the decision of the examining division refusing European patent application number 10 153 812.2. The examining division, enlarged by a legal member, rectified the decision under appeal pursuant to Article 109(1) EPC. The corresponding Form 2710 was dispatched on 25 March 2014.
The examining division did not allow the request for reimbursement of the appeal fee made in the statement of grounds of appeal. As a consequence, the case was referred to the board pursuant to Rule 103(2) (now 103(3)) EPC. The present decision deals with this sole pending request.
II. The board issued a summons to oral proceedings. In a communication attached thereto it expressed its provisional and non-binding view that, in the absence of a procedural violation, the appeal fee could not be reimbursed under Rule 103(1)(a) EPC. The communication is, in essential part, reproduced verbatim below.
[beginning of reproduction]
B. The grounds relating to the request for reimbursement of the appeal fee
1. In their statement setting out the grounds of appeal, the (former) appellants submit that, with the decision of 2 October 2013, the examining division refused the application in issue without having considered new evidence and without having issued a communication prior to the refusal. This constituted a clear violation of the "established procedural steps of the EPO". Accordingly, the appellants request reimbursement of the appeal fee.
2. The appellants explain the chain of events leading to the refusal as follows:
On 10 December 2012 oral proceedings took place before the examining division. The division came to the conclusion that the main request and the auxiliary requests were not allowable, except for auxiliary request 4. The main issue of the oral proceedings was whether or not the content of document D2 was public at the priority date, or which part of it was. The board notes that the examining division concluded that D2 did constitute prior art.
D2 is the following document (see point 1 of the decision of 2 October 2013):
NARROSCHKE, MATTHIAS, "Adaptive coding of the prediction error for H.264/AVC",
INSTITUT FÜR INFORMATIONSVERARBEITUNG, UNIVERSITÄT HANNOVER, [Online] 2 December 2005 (2005-12-02), pages 1-15, XP007902192.
The board notes that in the proceedings before the examining division the applicants submitted that the document was directed towards a non-public meeting of a technical committee ("Fachausschuss ITG FA 3.2", 2 December 2005, venue: Hildesheim, Germany) and was made available to the public only after the priority date of the application.
The appellants say that, with a communication under Rule 71(3) EPC of 4 April 2013, the examining division informed the applicants that it intended to grant a European patent based on auxiliary request 4.
On 22 July 2013 the applicants responded that they did not agree and submitted a new claim set as a basis for the patent. (The board notes that they also made detailed submissions why the examining division's view that D2 was state of the art at the priority date was wrong.)
On 26 July 2013 the primary examiner contacted the applicants' attorney by telephone in order to clarify a mismatch regarding that claim set.
In their reply of 1 August 2013, the applicants made a clarifying submission (declaring the claim set of the auxiliary request of 1 November 2011 dealt with in the oral proceedings of 10 December 2012 to be the valid one and re-filing it). This submission also included a new document (hereinafter: the "confidentiality document"), i.e. a letter by Prof. Dr.-Ing. Rolf Hedtke, dated 24 July 2013, to Dr. Narroschke, one of the applicants. In that letter, Mr. Hedtke explained that, based on a note in his records, he could confirm that Mr. Narroschke had pointed out confidentiality before the presentation of document D2 at the meeting on 2 December 2005. It followed that Mr. Hedtke's letter was further evidence of confidentiality of said meeting and thus of the question whether document D2 was public or not at the priority date and, as a consequence, whether the content of document D2 or part of it formed state of the art or not.
In a communication dated 1 October 2013 the examining division gave a brief summary of the telephone conversation of 26 July 2013. On 2 October 2013, the division adopted the decision to refuse the European patent application.
Accordingly, except for the clarification of the request according to the telephone call of 26 July 2013, the examining division directly sent the decision to refuse the European patent application as a response to the applicants' submission of 22 July 2013 and their submission providing further evidence of 1 August 2013.
In the decision to refuse the European patent application the examining division inter alia said on page 4, 1**(st) and 2**(nd) paragraph (emphasis added):
With their submission of 01.08.2013 the applicants clarified their request by filing the set of claims on which basis grant of a patent was requested. The applicants also submitted a document in which a further participant [Mr. Hedtke] indicated that the presentation of Mr. Narroschke was confidential.
This submission was filed after the debate on the matter had been closed and a decision had been taken during the Oral Proceedings and has therefore not been taken into account.
Relying on a number of portions of the Guidelines for Examination in the EPO (hereinafter: the "Guidelines"), Part C, Chapter V, the appellants refer to the fact that, further to the communication according to Rule 71(3) EPC, they had requested grant of a patent based on a higher ranking request previously held not to be allowable. They had also provided further evidence showing that document D2 was not state of the art. In these circumstances, it would have been mandatory for the examining division to resume examination. Instead, the examining division refused the application directly. This was a clear violation of the "established procedural steps of the EPO" justifying reimbursement of the appeal fee.
C. Subsequent procedure
The board notes that the examining division, in their communication of 23 October 2014 (at points 2 to 4) explained that they had rectified their decision to refuse. This was in view of the confidentiality document submitted on 1 August 2013 to which the appellants had referred in their statement of grounds of appeal and which put the public availability of document D2 in doubt. In that communication the division also requested a copy of notes made by Mr. Hedtke that were mentioned in the confidentiality document. With a letter of 28 January 2015 the appellants furnished a copy of those notes.
On 21 May 2015 the examining division decided to grant European patent number 2192783.
D. Legal assessment
Pursuant to Rule 103(1)(a)
The appeal fee shall be reimbursed in full
in the event of interlocutory revision ... if such reimbursement is equitable by reason of a substantial procedural violation...
The board is of the preliminary opinion that the request for reimbursement of the appeal fee cannot be acceded to, because the (former) appellants have not established any relevant procedural violation and the board has not been able to detect any such violation. The reasons for this view are given below.
The 2**(nd) paragraph of the decision of the examining division reproduced above says that the division did not take into account the submission of 1 August 2013. The submission comprised a clarified set of claims and a document pertaining to the confidentiality of the presentation of Mr. Narroschke (the "confidentiality document" of 24 July 2013). It is clear however from the third paragraph of page 4 of the decision saying that "[t]his decision concerns the claims as filed on 01.08.2013..." [being identical with the claims filed as auxiliary request on 1 November 2011] that it was only the confidentiality document, which the division did not take into account in reaching its decision to refuse. The reason given in that 2**(nd) paragraph was that the confidentiality document had been filed after the debate had been closed and a "decision" had been taken during the oral proceedings. As set out above, after the appeal had been filed, the examining division had rectified their decision to refuse, this time taking into account the confidentiality document and considering that it put the public availability of D2 in doubt.
The position taken by the examining division as spelt out in the above 2**(nd) paragraph was wrong.
It may be true that the division was not required under Rule 71(6) EPC to resume the examination proceedings given that the claims of 1 November 2011 (re-filed on 1 August 2013) had been considered in the oral proceedings of 10 December 2012 (see T 1567/17, at point 2.2).
However, the division erred in two respects:
First, the oral proceedings held on 10 December 2012 were not terminated by a formal decision. Only a formal decision would have prevented admittance of new submissions, such as the confidentiality document, at a later stage. A formal and final decision refusing the application was issued on 2 October 2013 only.
According to the minutes (in fine, under "Conclusion"), the chairman announced at the end of the oral proceedings that none of the main or first to third auxiliary requests complied with the EPC. However, auxiliary request 4 met the requirements of the EPC and a communication under Rule 71(3) EPC would follow. The board recalls that this communication was issued on 4 April 2013. In a submission of 22 July 2013 the appellants expressed their disagreement and filed a set of amended claims. With the final decision of 2 October 2013 relating to the (clarified) claims filed on 1 August 2013 the application was rejected.
Second, even if the debate has been formally closed at the end of oral proceedings, as in the present case was indicated in the decision of the examining division, the debate may be re-opened. In T 595/90 (OJ 1994, 695, at point 1) the board held that
... the closing of the debate ... normally terminates the possibility of [making] further submissions. Observations submitted thereafter could only be taken into account if the Board reopened the debate (Article 113 EPC) which depends on its discretion.
In the board's view, analogous considerations apply to the EPO departments of first instance. Given that a closed debate may be re-opened, there is no need to enter into a discussion on those provisions of the Guidelines quoted by the appellants that may even require reopening the debate before an examining division.
As a consequence of the above errors, the examining division felt categorically prevented from admitting the confidentiality document submitted on 1 August 2013 into the proceedings and therefore did not consider admitting it. Rather, the decision to refuse of 2 October 2013 was solely based on the evidence on file at the end of the oral proceedings of 10 December 2012.
In so proceeding, the examining division implemented its erroneous position that the confidentiality document submitted on 1 August 2013 could not be taken into account because the debate had been closed and a "decision" had been taken during the oral proceedings of 10 December 2012. This error was of a substantive nature, and the procedural consequences thereof, i.e. in particular the adopting of a decision directly, without considering resuming examination, on the basis of the confidentiality document, were caused exclusively by the implementation of the erroneous substantive position.
It follows from the foregoing that the examining division did commit an error, but a substantive and not an (independent) procedural one. As a consequence, the board cannot find a procedural violation, let alone a substantial one, justifying reimbursement of the appeal fee under Rule 103(1)(a) EPC.
[end of reproduced part of the communication attached to the summons to oral proceedings]
III. In a response to the board's summons to the oral proceedings the requesters stated:
We hereby withdraw our appeal, filed on 6 December 2013 against the decision of the Examining Division dated 2 October 2013.
Additionally, it is herewith respectfully requested to refund 50% of the official appeal fee to our deposit account no. 28000148.
IV. Further to the requesters' response, the board issued a communication which, in essence, is reproduced below (text in italics added, text [deleted: struck through] deleted).
[beginning of reproduction]
2. The board notes that the examining division rectified the decision under appeal pursuant to Article 109(1) EPC. The corresponding Form 2710 was dispatched on 25 March 2014. This means that the examining division set the decision under appeal aside and allowed the appeal. The appeal was not remitted and has thus never been pending before the board. However, as the examining division refused the request for reimbursement of the appeal fee based on a substantial procedural violation pursuant to Rule 103(1)(a) EPC (a clear violation of the "established procedural steps of the EPO"), the division remitted that request to the board. Proceeding this way was in line with Rule 103(3), second sentence, EPC. See also the decision of the Enlarged Board of Appeal in case G 3/03.
3. Given that the examining division allowed the appeal in year 2014, the "withdraw[al] of [deleted: the] our appeal" declared in the above letter of 29 October 2018 has no object.
In the absence of a pending appeal that might be withdrawn, Rule 103(2) EPC does not apply. According to that provision the "appeal fee shall be reimbursed at 50% if the appeal is withdrawn" under certain conditions. As there is no effective withdrawal of the appeal, the request to refund 50% of the appeal fee cannot be allowed.
4. Since the request for reimbursement of the appeal fee made under Rule 103(1)(a) continues to be valid, the oral proceedings will be held as scheduled on 4 December 2018 at 13.00 hrs.
[end of reproduced part of the communication]
V. With a letter of 29 November 2018 the requesters announced that they would not attend the appointed oral proceedings.
VI. Oral proceedings were held as appointed on 4 December 2018 in the absence of the requesters.
The Chairman noted that the requesters had requested that the appeal fee be reimbursed in full under Rule 103(1)(a) EPC and that 50% of the appeal fee be refunded under Rule 103(2) EPC.
At the end of the oral proceedings, the Chairman announced the board's decision.
Reasons for the Decision
1. In the communication annexed to the summons to oral proceedings the board expressed its preliminary opinion on the request for reimbursement of the appeal fee pursuant to Rule 103(1)(a) EPC because of an alleged substantial procedural violation committed by the examining division. The board said that it could not find a procedural violation, let alone a substantial one, justifying reimbursement of the appeal fee under Rule 103(1)(a) EPC. The board arrived at its preliminary opinion after a thorough analysis of the request for reimbursement which is reproduced above, at point II.
2. In a further communication reproduced in essence above, at point IV, the board explained why, in its provisional view, it was unable to accede to the requesters' subsequent request for a refund of 50% of the appeal fee in connection with their withdrawal of the appeal. The board considered that, in the absence of a pending appeal that might be withdrawn, Rule 103(2) EPC providing for a reimbursement of the appeal fee at 50% under certain circumstances, did not apply.
3. The requesters did not attempt to rebut the board's provisional opinion as expressed in the two aforementioned communications. Nor did they attend the oral proceedings. Despite a re-assessment of the case the board sees no reason to depart from its preliminary opinion expressed in those communications, which therefore becomes final.
4. It follows that neither the request for reimbursement of the appeal fee at 100% under Rule 103(1)(a) EPC nor the request for reimbursement of the appeal fee at 50% under Rule 103(2) EPC can be allowed.
Order
For these reasons it is decided that:
The requests for reimbursement of the appeal fee are refused.

15 Mar 2019

T 0324/14 - Request for remittal

Key points

  • In this examination appeal, the Board decides that claim 1 of the Main Request is obvious. AR1 to 4 are not admitted into the proceedings as being filed late. The applicant then requests remittal to the examining division. The applicant argues "that the new objections raised by the board as well as the fact that there seemed to be patentable subject-matter included in the application, justified remittal and further consideration by the examining division" .
  • The Board does not grant this request. " the mere presumption of potentially patentable subject-matter in the application does not justify a remittal to the department of first instance. Should the appellants have wished to proceed with requests that they considered to contain potentially patentable subject-matter and thus as a promising basis for the examination proceedings, requests defining subject-matter of this nature should have been filed already in the first instance proceedings." (the Board also expresses that it had not raised new objections).
  • As a comment, appeals before the USPTO can be taken back to the examiner by filing an RCE and paying the applicable fee.
T 0324/14 - link



2.12 The board therefore concludes that the subject-matter of claim 1 is an obvious combination of concepts known from documents D1 and D2. In particular, the combination of two stages of amplification in each amplifier with pre-distortion provided in a first stage in the amplifier is obvious to the person skilled in the art and the subject-matter of claim 1 of the main request therefore does not involve an inventive step in the sense of Article 56 EPC.
3. First to fifth auxiliary requests - Admittance (Articles 12(4) and 13(1) RPBA)
[...]
3.8 In consideration of the specific circumstances of the present case, in particular the late stage of the proceedings as well as the new complex issues raised by the auxiliary requests, the board exercised its discretion under Articles 12(4) and 13(1) RPBA to not admit the first to fifth auxiliary requests into the appeal procedure.
4. Remittal to the department of first instance
4.1 The appellants have requested that the case be remitted to the examining division for further prosecution. They have particularly argued that the new objections raised by the board as well as the fact that there seemed to be patentable subject-matter included in the application, justified remittal and further consideration by the examining division.
4.2 Contrary to the appellants' arguments, no new objections have been raised by the board during the appeal procedure (see the reasons under point 3.7 above). Furthermore, the mere presumption of potentially patentable subject-matter in the application does not justify a remittal to the department of first instance. Should the appellants have wished to proceed with requests that they considered to contain potentially patentable subject-matter and thus as a promising basis for the examination proceedings, requests defining subject-matter of this nature should have been filed already in the first instance proceedings.
4.3 For these reasons, the board refuses the request for remittal of the case to the examining division.
4.4 Since there is no allowable request on file, the appeal has to be dismissed.
Order
For these reasons it is decided that:
The appeal is dismissed.

14 Mar 2019

T 0691/18 - Interlocutory revision

Key points

  • In this examination appeal, the amendments made in the main request address the clarity objections. The Board then discusses whether interlocutory revision should have been granted by the ED.
  • " In the context of Article 109(1) EPC, an appeal is to be considered "well founded" if the main request submitted with the appeal includes amendments which clearly overcome the objections on which the decision relies, such that the examining division could reasonably be expected to recognise this and thus rectify its decision. It is established case law of the Boards of Appeal that other objections which arise in the current request but which were not the subject of the contested decision cannot preclude the application of Article 109(1) EPC [...]." 
  • "  Thus, even if the amendments raise new objections not previously discussed, interlocutory revision must be allowed since an applicant should in such circumstances have the right to examination at two instances. In particular this would enable the applicant to address the objection under Article 123(2) EPC, by argument and/or amendment, as well as, if appropriate, giving the examining division the opportunity to address the issues of novelty and inventive step."
  • This appears a good summary of established case law. EPO GL E-XII,7.4.2 still prescribe that interlocutory revision is not granted if "amendments made to the independent claims clearly do not meet the requirements of Art. 123(2)".
EPO T 0691/18 -  link


Reasons for the Decision
1. Admissibility
The appeal was filed in due time and form and is therefore admissible.
2. Clarity (Article 84 EPC)
The examining division based their decision on objections under Article 84 EPC regarding two features of the former independent claims.
On the one hand, it was argued that the resonant frequency of the electronic horn was not characteristic for the claimed driving circuit. This objection is overcome by the amendment to "connectable to" in the main request and in the first auxiliary request, and by the inclusion of the electronic horn into the subject-matter of the second auxiliary request in accordance with the Guidelines for Examination in the European Patent Office F-IV-4.14.
On the other hand, the examining division held the expression "consistent with" unclear in the sense of Article 84 EPC. The examining division had assumed that "consistent" meant "compatible" and found that there was a contradiction with the description which allegedly meant something more specific. However, the expression "consistent with" no longer forms part of any of the requests of the appellant. Consequently, neither of the two features on which the reasoning in the decision under appeal is based forms part of the current requests of the appellant as filed together with the statement of grounds of appeal.
Under Article 109(1) EPC, if the department whose decision is contested considers the appeal to be admissible and well founded, it shall rectify its decision.
In the context of Article 109(1) EPC, an appeal is to be considered "well founded" if the main request submitted with the appeal includes amendments which clearly overcome the objections on which the decision relies, such that the examining division could reasonably be expected to recognise this and thus rectify its decision. It is established case law of the Boards of Appeal that other objections which arise in the current request but which were not the subject of the contested decision cannot preclude the application of Article 109(1) EPC (T 139/87, point 4; T 1060/13, point 4.1). Thus, even if the amendments raise new objections not previously discussed, interlocutory revision must be allowed since an applicant should in such circumstances have the right to examination at two instances. In particular this would enable the applicant to address the objection under Article 123(2) EPC, by argument and/or amendment, as well as, if appropriate, giving the examining division the opportunity to address the issues of novelty and inventive step.
3. Conclusion
In the present case no other conclusion is possible than that the appeal is admissible and well founded, since the features leading to the objections under Article 84 EPC are no longer claimed.
The examining division should therefore have rectified its decision and continued with the examination of other requirements of the EPC.
Consequently, the board decides to remit the case.
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.

13 Mar 2019

T 0413/16 - Procedural violation

Key points

  • In this opposition appeal, the Board finds a substantial procedural violation of the OD. The OD had relied in its decision not only on document E1 but also on document R1 which was mentioned in the 'background of the invention' section of E1. E1 had been discussed during the oral proceedings, but not R1.
  • " In its grounds of appeal, the appellant [opponent] maintained that R1 was a point of discussion neither in the written opposition procedure nor during oral proceedings before the opposition division. This was notably not contradicted by the respondent [patentee], which simply maintained that the appellant had been given ample opportunity to present arguments on E1 during the oral proceedings. However, despite being cited in E1 amongst several other documents, the content of R1 was evidently never a point of discussion before the opposition division and the appellant was given no reason to believe that the disclosure in R1 would be of any significance in the opposition division's decision. The appellant was thus not given an opportunity to present its comments on R1." 
  • " It thus follows that the opposition division used the content of R1 and the alleged commercial activities of the assignee named in E1 in its decision without the appellant at least having been given the chance to be heard on its content, contrary to Article 113(1) EPC. A party being denied their right to be heard amounts to a substantial procedural violation." 


EPO T 0413/16 - link

3. Reimbursement of the appeal fee (Rule 103 EPC)
3.1 In point 2.4.1.4 of its decision, the opposition division refers to R1. This document was however not on file before the opposition division, it simply being mentioned in the 'background of the invention' section of E1. In its decision the opposition division details how R1 clearly discloses vertical axis washing machines and uses this as a justification for its conclusion that E1, therefore, 'clearly does not suggest the use of the described motor in horizontal axis washing machines'. The opposition division thus based its reasoning on this evidence.
3.2 In its grounds of appeal, the appellant maintained that R1 was a point of discussion neither in the written opposition procedure nor during oral proceedings before the opposition division. This was notably not contradicted by the respondent, which simply maintained that the appellant had been given ample opportunity to present arguments on E1 during the oral proceedings. However, despite being cited in E1 amongst several other documents, the content of R1 was evidently never a point of discussion before the opposition division and the appellant was given no reason to believe that the disclosure in R1 would be of any significance in the opposition division's decision. The appellant was thus not given an opportunity to present its comments on R1.
3.3 It should also be added that the further reasoning mentioned in item 2.4.1.4 of the interlocutory decision to establish that E1 was only related to vertical axis washing machines, referred to alleged commercial activities since 1986 of the assignee named in E1, for which no evidence has been given by the opposition division. Also in this regard, the appellant argued that it was not given any opportunity to present its comments. The respondent did not dispute this and there is indeed no indication in the minutes or the decision that could allow the Board to arrive at a different conclusion.
3.4 It thus follows that the opposition division used the content of R1 and the alleged commercial activities of the assignee named in E1 in its decision without the appellant at least having been given the chance to be heard on its content, contrary to Article 113(1) EPC. A party being denied their right to be heard amounts to a substantial procedural violation.
3.5 According to Rule 103(1)(a) EPC, the appeal fee shall be reimbursed in full .... if such reimbursement is equitable by reason of a substantial procedural violation. It is clear from the opposition division's reasoning in its decision that the appellant being denied its right to be heard with respect to R1 and the alleged commercial activities of the assignee in E1 had a direct influence on the interpretation of E1 (see point 2.4.1.4 of the opposition division's decision), and thus also had a causal effect on the decision regarding both novelty (see points 2.4.1.4 and 2.4.1.5) and inventive step (see point 2.4.8). In view of the above, the Board finds it equitable by reason of the substantial procedural violation for the appeal fee to be reimbursed in full.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The patent is revoked.
3. The appeal fee is to be reimbursed.