New Rfees7 and the ADA

• The February OJ was recently published and contains no amendment of the ADA.
• The arrangements for deposit accounts (ADA) point 4.1 provides that “the ten-day fail-safe provision of Article 7(3)(a) and (b) RFees, second half-sentence, and Article 7(4) RFees apply mutatis mutandis to replenishment payments.” (OJ 2019 sp4)
• However, the ‘the ten-day fail-safe provision’ is abolished with effect of 1 April 2020 (OJ 2020 A3), in the sense that it is no longer ‘ten days’.
• Rfees 7 is the rule about fee payments made with bank transfer, in case the payer initiates the bank transfer before the expiry of the period, but the money only actually enters the EPO bank account after the expiry of the period. ADA 4.1 provides that the rule applies (more or less) also for replenishment payments to deposit accounts. 
• With effect of 1 April 2020, there is no longer a surcharge payable in case the bank transfer was initiated less than 10 days before the expiry of the period. If the bank transfer is initiated on the last day of the period and the money is received by the EPO later, this is considered to be a timely payment.
• Amended Article 7(3) neither has a sub-paragraph A anymore nor a subparagraph B. Moreover, the rule no longer refers to any ten-day period.
• Perhaps the EPO President of the Office could amend the ADA in time before 1 April 2020. Though it sometimes appears that the EPO department in charge of the ADA is completely separate from the department that looks after the Rfees. 

T 1265/15 - Remitting the case (examination appeal)

Key points

• The Board remits this case, finding that there is a ‘special reason’ within the meaning of Article 11 RPBA 2020 in this examination appeal.
• The application was refused by the Examining Division as being not novel over D1. The Board comes to a different interpretation of D1, finding the main request therefore to be novel over D1.
• "The board judges it appropriate to remit the case to the examining division for further prosecution, so that it has the opportunity to reassess the invention in view of the other prior art on file. "
  
• (repost with correct formatting)
• 05.05.2020 - corrected that the Board decided to remit the case.

EPO T 1265/15 - link


6. Remittal, Article 111(1) EPC 1973

6.1 As set out above, the subject-matter of claim 1 of the main request is novel in view of the disclosure of D1, thus overcoming the reasons for refusal given in the decision. The board also finds that claim 1 involves an inventive step in view of D1.

6.2 As the board bases these findings on a different interpretation of D1 to that in the decision, the board judges it appropriate to remit the case to the examining division for further prosecution, so that it has the opportunity to reassess the invention in view of the other prior art on file. These circumstances constitute special reasons within the meaning of Article 11 RPBA 2020.

Order

For these reasons it is decided that:

The decision is set aside.

The case is remitted to the department of first instance for further prosecution.

T 1311/17 - A bona fide attempt to defend the patent

Key points

• The Board admits the new AR filed with the Statement of grounds (in this opposition appeal, by patentee).
• The Board: “contrary to the submissions of the appellant-opponent 2, "clear allowability" is not the decisive criterion for the admission of new requests filed for the first time with the statement of grounds”
• The Board: “In the light of the [course of the procedure before the OD], it cannot be said that the appellant-proprietor during the first-instance written proceedings had received a clear indication that the now disputed added subject-matter objection was a key issue for the validity of the granted claims. On the contrary, this only became clear during oral proceedings [before the OD].”
• “Only after issuance of the decision was the appellant confronted with the full reasoning of the opposition division. Subsequently, with enough time for proper consideration of their response and the knowledge of the reasoning of the opposition division, did the patentee formulate what they considered an appropriate response to the reasons given in the decision.”
• “[AR-1] is therefore regarded by the Board as an appropriate and legitimate reaction of a losing party to the impugned decision.”

EPO T 1311/17 -  link

2. First auxiliary request - Admissibility

2.1 The appellant-proprietor files this request for the first time with the statement of grounds of appeal. The admission of the new request is thus at the discretion of the Board, Article 12(4) RPBA.

In this regard the main question to be addressed is whether such a new request could and should have been submitted already in first instance. According to established case law, this issue relates to the question of whether the presenting party (the appellant-proprietor in the present case) could have been expected to present its request in the first-instance proceedings in the circumstances of the specific case, see CLBA, V.A.4.11.3.d).

T 2948/18 - No search declaration

Key points

• In this examination appeal, the EPO as ISA had issued a "no search" declaration instead of a search report, because the application would be directed to a business method. The application is refused by the examining division.
• The applicant requests reimbursement of the appeal fee. 
• “ Since neither the PCT nor the EPC contains any provision allowing the EPO, as designated Office, to reimburse the international search fee, the Board is not competent to decide on the appellant's request, which therefore cannot be allowed”
• The claims are also not allowable and the appeal is dismissed. 

EPO T 2948/18 - link

3. Request for reimbursement of the search fee

3.1 At the oral proceedings, the appellant also requested reimbursement of the search fee.

The only search fee that was paid for the present application is the international search fee, paid under Rule 16.1(a) and (b) PCT to the International Bureau of WIPO as receiving Office and for the benefit of the EPO acting, under Article 154 EPC 1973 (corresponding to Article 152 EPC), as an International Searching Authority within the meaning of the PCT.

3.2 The present appeal lies from a decision of the Examining Division. The Examining Division is the department of the EPO, in these proceedings a designated Office under Article 153(1)(a) EPC, which is responsible for the examination of the Euro-PCT application corresponding to the international application (Article 153(2) EPC). In such proceedings, the provisions of the PCT and its Regulations are to be applied, supplemented by the provisions of the EPC (Article 150(2) EPC).

3.3 Since neither the PCT nor the EPC contains any provision allowing the EPO, as designated Office, to reimburse the international search fee, the Board is not competent to decide on the appellant's request, which therefore cannot be allowed (see also decision T 506/08 of 16 August 2012, reasons 13).

T 2069/15 - Admissibility appeal and appeal parts

Key points

• The proprietor argues that the opponent's appeal is inadmissible because it is based on new attacks which are inadmissible under Art.12(4) RPBA 2007.
• The Notes to RPBA 2020 (not published in the OJ published in OJ 2020, Supplementary Publication 2; edit 26.02.2020*)  state that: “For the avoidance of doubt, it should be noted that the admissibility of the appeal continues to be examined on the basis of all the documents filed by the appellant at this stage, even if they are not admitted under this paragraph for the purpose of examining the merits of the appeal.”
• The present Board confirms this: “Die Tatsache, dass Teile oder selbst das gesamte Vorbringen in der Beschwerdebegründung unter Umständen nicht in das Verfahren zugelassen werden könnten (Artikel 114 (2) EPÜ, Artikel 12 (4) der Verfahrensordnung der Beschwerdekammern), steht diesem Ergebnis nicht grundsätzlich entgegen.”
• The Board considers the appeal to be admissible and in the end revokes the patent.
• * = I had prepared this blog post in advance and had omitted to update it in view of OJ 2020, Supplementary Publication 2, which provides a very nice table with the Explanatory Remarks and the changes.

EPO T 2069/15 -   link


Die Tatsache, dass Teile oder selbst das gesamte Vorbringen in der Beschwerdebegründung unter Umständen nicht in das Verfahren zugelassen werden könnten (Artikel 114 (2) EPÜ, Artikel 12 (4) der Verfahrensordnung der Beschwerdekammern), steht diesem Ergebnis nicht grundsätzlich entgegen.

T 0128/18 - Notification and representative

Key points

• The question is whether the appeal is admissible, which hinges on the question whether the revocation decision of 06.12.2017 was properly notified to the patentee, as the Notice of appeal (including a Statement of grounds) was filed on 20.12.2017.
• Patentee argues that the revocation decision was notified to the wrong representative. 
• As to the facts: “In [first instance] opposition proceedings, the patent proprietors' registered representative (in the following "the original representative") authorised a further representative (in the following "the further representative") to take part in the oral proceedings which took place before the opposition division on 8 October 2010.” The OD decided that the patent could be maintained in amended form. “The patent proprietors' original representative authorised the further representative to file the appeal and to conduct the appeal proceedings.” Subsequently, all appeals were withdrawn and the appeal was closed without decision. The OD then sent the Rule 82 Communication for filing the translated claims. No response was received, also not with surcharge and the patent was revoked.
• During oral proceedings before the Board “it was discussed whether it could be derived from the letters of the original representative dated 8 September 2010, 30 September 2010 and 18 January 2011 that the further representative was merely sub-authorised to act before the EPO only at the oral proceedings of 8 October 2010 in opposition and then again at the subsequent appeal proceedings, but not in the post-appeal opposition proceedings. Although the Board would not doubt the appellants' good faith when declaring that this was their intention, the Board was nevertheless unable to find literal and/or unequivocal support for that understanding in any of the documents on file.”
• The Board then notes that the "further representative" had acknowledged receipt of the Rule 82(3) Communication "without indication that something was amiss" .
• “If any doubt could have persisted as to the identity of the appellants' representative, and thus of the correct recipient of notifications at that stage, the appropriate course of action would have been for either the original or the further representative to have clarified the matter with the EPO. In the absence of any action or indication to this effect, the Board can only conclude that notifications were continued to be correctly addressed to the further representative.”
• “From the above reasoning, it follows that the present appeal was filed and the relevant fee was paid after expiry of the period foreseen in Article 108, first sentence EPC. Therefore the appeal is deemed not to have been filed and the appeal fee has to be reimbursed.”
• The patentee confirmed that re-establishment was not requested.

EPO T 0128/18 -  link

Summary of Facts and Submissions

I. The present appeal was filed by the patent proprietors (appellants) against the revocation decision pursuant to Rule 82(3) EPC dated 6 February 2017 and concerning the European patent N° 1 461 509.

II. The notice of appeal, containing also a statement of grounds, was filed on 20 December 2017. The appeal fee was paid on the same date.

T 1487/16 - Inherent features and disclosure

Key points

• In this opposition appeal, one of the issues is whether "Example II" in (possible) prior right document D9 validly claims priority of D9a. In D9 (WO 2004/065443), there is a table stating various properties of the chemical product prepared in that example, including a BET value of 116, a Sears number of 22 and a ratio of Sears / BET of 0.190. The identical values for the BET value and the Sears number are given in D9a. However, D9 is completely silent about the ratio of Sears / BET. Of course, it can be simply calculated by the numbers that are given in D9a, but no such calculation is mentioned in D9a. D9 teaches that the ratio is advantageous. Claim 1 of the opposed patent also specifies the Sears number to BET ratio, but that should not matter (I suppose?)
• The Board considers the example in D9 to lack priority.
• “Somit sind im vorliegenden Fall die in den Entscheidungen G 2/98 und G 1/03 dargelegten Grundsätze anzuwenden. Im vorliegenden Fall hat die Beschwerdegegnerin jedoch nicht bestritten, dass ein fiktives Hinzufügen des Verhältnisses Searszahl V2 zu BET-Oberfläche zur D9a nach Artikel 123(2) EPÜ nicht zulässig wäre. Dieser Schlussfolgerung ist zuzustimmen.” 
• “Aus den obengenannten Gründen kann die D9 nicht die Priorität der D9a beanspruchen, da weder [...]  noch die konkreten Beispiele KSIb und KSII auf Seite 28 dieselbe Erfindung beschreiben. Damit gehört die D9 nicht zum Stand der Technik nach Artikel 54(3) EPÜ.”
• As a comment 1) this decision illustrates that a document does not disclose inherent features, and 2) I would say that the (unchanged) individual Sears and BET numbers have priority in D9 and that this inherently is novelty-destroying for the claim. However, this is not the view of the Board.

EPO T 1487/16 -  link

Entscheidungsgründe

1. Priorität

1.1 Sowohl das Streitpatent als auch die Entgegenhaltung D9 haben als Anmeldedatum den 8. Januar 2004 und beanspruchen jeweils eine erste Priorität, D0 beziehungsweise D9a, vom 22. Januar 2003, sowie eine zweite Priorität vom 13. Dezember 2003. Es ist nicht strittig, dass sowohl das Streitpatent als auch die D9 Anspruch auf die jeweils zweite Priorität haben.

T 0228/16 - Remittal after withdrawal opposition

Key points

• The Board finds that the Main Request, as amended, is sufficiently disclosed.
• About the remittal: “ In view of the withdrawal of the opposition and of the above finding of the Board, a decision under Rule 84(2) EPC, whether the Office continues the opposition proceedings of its own motion, should be taken. The question arises whether this decision should be taken by the Board.”
• The Board remits the case “for further prosecution”.
• The decision is also interesting for the reasons why the claim amendments were admitted in appeal.

EPO T 0228/16 - link

3. Remittal

In view of the withdrawal of the opposition and of the above finding of the Board, a decision under Rule 84(2) EPC, whether the Office continues the opposition proceedings of its own motion, should be taken.

The question arises whether this decision should be taken by the Board.

In the present case, objections under Article 100(a) EPC based on lack of inventive step were raised with the notice of opposition but the opposition division has not yet had the opportunity to consider the issue of inventive step.

Therefore the Board is of the view that the most appropriate course of action under the circumstances of the present case is to exercise its discretion under Article 111(1) EPC and remit the case for further prosecution.

4. In light of the preceding reasoning, oral proceedings were not considered necessary and were thus cancelled.

Order

For these reasons it is decided that:

1. The decision is set aside.

2. The case is remitted to the opposition division for further prosecution.

T 0054/16 - Repairing argumentation gaps in appeal

Key points

• The opponent files a new document in appeal. The question is whether the document is admissible.
• The Board: “Nach ständiger Rechtsprechung der Beschwerdekammern sollte dem im Einspruchsverfahren unterlegenen Beschwerdeführer Gelegenheit gegeben werden, die Lücken in seiner Argumentation durch Einreichung weiterer Beweise in der zweiten Instanz zu schließen (RdBK, 9. Auflage 2019, V.A.4.13.1.a).” 
• As a comment, it is good to have confirmed that this is still established case law.
•  In this case, the OD had concluded that neither D11 nor D12 were suitable as the closest prior art. D14 was filed to address this: “Daher sieht die Kammer die Einreichung der D14 als eine zulässige Reaktion der Beschwerdeführerin Einsprechenden auf die Entscheidung der Einspruchsabteilung an, mit welcher sie Lücken in ihrer Argumentation zu schließen gedenkt.”

EPO T 0054/16 - link

3. Verspätetes Dokument D14

3.1 Das mit der Beschwerdebegründung als weiteres Beweismittel zur Frage der erfinderischen Tätigkeit erstmals genannte Dokument D14 ist verspätet und kann nur nach Ermessen der Kammer in das Verfahren zugelassen werden, Artikel 114(2) EPÜ und Artikel 12(4) VOBK.

3.2 Die Beschwerdegegnerin Patentinhaberin vertritt die Auffassung, dass D14 nicht zuzulassen sei, da es bereits der Einspruchsabteilung hätte vorgelegt werden können. Das Dokument sei schon während des Prüfungsverfahrens mit einer Eingabe Dritter eingereicht worden, und zudem bereits auf dem Deckblatt der Patentschrift vermerkt.

Das nicht im Recherchenbericht genannte Dokument D14 wurde der Prüfungsabteilung am 7. Dezember 2011 mit einer Eingabe Dritter übermittelt (dort A1 genannt), und die erfinderische Tätigkeit wurde ausgehend von diesem Dokument angegriffen. Die Eingabe Dritter wurde am 13. Dezember 2011 an die jetzige Beschwerdegegnerin übermittelt. Der Kammer ist bereits aus diesem Grunde nicht erfindlich, warum die erneute Vorlage der D14 mit der Beschwerdebegründung eine unbillige Überraschung der Beschwerdegegnerin darstellen sollte.

3.3 Nach ständiger Rechtsprechung der Beschwerdekammern sollte dem im Einspruchsverfahren unterlegenen Beschwerdeführer Gelegenheit gegeben werden, die Lücken in seiner Argumentation durch Einreichung weiterer Beweise in der zweiten Instanz zu schließen (RdBK, 9. Auflage 2019, V.A.4.13.1.a). Im vorliegenden Fall konnten D11 und D12 laut der angegriffenen Entscheidung für den Einspruchsgrund mangelnder erfinderischer Tätigkeit mangels eines optischen Sensors in D11 bzw. mangels LIP-Zonen in D12 nicht als nächstliegender Stand der Technik betrachtet werden (Entscheidungs-gründe, Punkte 3.1.2 und 3.2.2). Daher sieht die Kammer die Einreichung der D14 als eine zulässige Reaktion der Beschwerdeführerin Einsprechenden auf die Entscheidung der Einspruchsabteilung an, mit welcher sie Lücken in ihrer Argumentation zu schließen gedenkt.

3.4 Im Verfahren vor den Beschwerdekammern können neue Tatsachen, Beweismittel und diesbezügliche Argumente in pflichtgemäßer Ausübung des Ermessens der Kammer dann zum Verfahren zugelassen werden, wenn die neuen Unterlagen prima facie insofern hoch relevant sind (RdBK, V.A.4.13.2). Die Kammer hatte daher daher zu prüfen, ob D14 diese Anforderungen erfüllt.

T 2138/14 - Not attending oral proceedings examining division

Key points

• The applicant did not attend the oral proceedings before the ED. The ED raised a new clarity objection during the oral proceedings. The Board considers this to be a substantial procedural violation.
• “According to G 4/92 a decision against a party who has been duly summoned but who fails to appear at oral proceedings may not be based on facts put forward for the first time during those oral proceedings []. Although Opinion G 4/92 explicitly only concerns inter partes proceedings [], the same principle has been applied in ex parte proceedings [].”
• As a comment, Art.113(1) EPC refers to "grounds or evidence" but G 4/92, hn.1  refers to "facts put forward for the first time during those oral proceedings"
• Furthermore about whether D7 evidences common general knowledge: “D7 may not be an article providing a broad review of a topic, but it refers to snapping as "one of the most frequently used techniques". In the board's view, the reference in an article of a technical journal to a certain technique as being "one of the most frequently used techniques" has the effect that the technique can be considered to be part of the common general knowledge of the skilled person. As in the case of a review article, D7 is not cited for the document's own contribution to the art, but as a reference to what is common in the technical field. As a consequence, D7 proves what an experienced person in the field in question is expected to be aware of "

EPO T 2138/14 -  link

Reasons for the Decision

1. The appeal is admissible.

Alleged procedural violations

2. The appellant argued in the statement of grounds of appeal that its right to be heard had been infringed, since no objection regarding lack of clarity of the term "proximate" had been raised in the examination proceedings prior to the decision.

2.1 The relevant procedural steps in the present case may be summarised as follows.

In the European search opinion the examining division cited documents D1 to D5. It argued that the subject-matter of independent claims 1 and 9 lacked novelty in view of D1. The subject-matter of the dependent claims was considered to lack an inventive step in view of D1 in combination with documents D2 to D5. Subsequently, the applicant submitted amended claims and arguments addressing the objections.

T 0816/19 - Obiter and right to be heard

Key points

• In this examination appeal, the applicant only argues that the refusal decision is to be set aside due to substantial procedural violations committed by the ED.
• “The appellant essentially argues that the Examining Division was wrong in: (a) failing to send a second communication under Article 94(3) EPC; and (b) proposing the grant of a patent based on inappropriate amendments without prior consultation with the applicant.”
• The Board notes that a failure to send a second Communication is itself not a violation of Art. 113(1) EPC. For showing the latter, “the appellant would need to provide a convincing argument why the decision to refuse the application was based on grounds or evidence on which it had no opportunity to present its comments.”
• The Board notes that issuing a second Communication under Article 94(3) EPC is not necessary if the ED can issue a Rule 71(3) Intention to grant with Examiner's amendments.
• The Examiner's amendments in the Rule 71(3) Intention to grant were rather limiting. However, this is not a substantial procedural violation: “a proposal for amendment made in a communication under Rule 71(3) EPC, even if the amendments may be judged inappropriate, does not, by itself, constitute a fundamental deficiency in the proceedings within the meaning of Article 11 RPBA.”
• The ED refused the application on the ground of clarity, with remarks about inventive step under the heading "Obiter dictum".
• “By explicitly using the title "Obiter dictum" (i.e. "that which is said in passing") the Examining Division made it clear that the statements made under this heading merely reflected its opinions on certain matters and did not represent the reasons for the decision (i.e. the ratio decidendi). Article 113(1) EPC only gives a right to be heard on grounds or evidence on which a decision of the European Patent Office is based, and since statements made obiter dictum do not form part of the basis for the decision, Article 113(1) EPC does not confer any "right of reply"”

EPO T 0816/19  -  link

3. The framework of the appeal

3.1 Rule 12(2) RPBA states the following:

"The statement of grounds of appeal and the reply shall contain a party's complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on ...".

3.2 The present appeal is against the decision of the Examining Division to refuse the application on the grounds that the claimed subject-matter did not meet the requirements of Article 84 EPC, due to a lack of clarity, and did not meet the requirements of Article 84 EPC in combination with Rules 43(1) and (3) EPC, as claim 1 did not contain all the technical features essential to the definition of the invention.

J 0008/19 - Debit order can be corrected (II)

Key points

• The Legal Board concludes that debit orders can be corrected under Rule 139. This is the same finding as in T 317/19. The reasoning is in fact verbatim the same.
• As a comment, the Legal Board does not engage with  T170/83, cited in the GL for the position that debit orders can not be corrected. My understanding is that T170/83 was established case law, but it appears obsolete by now. The reason for the change appears to be G1/12 holding that “that corrections of errors under Rule 139, first sentence, EPC in documents filed with the EPO are generally applicable”. Since the Legal Board can be assumed to know T170/83, but does not mention T170/83 at all, T170/83 is apparently not actually relevant to the question of whether debit orders can be corrected.
• The Legal Board furthermore confirms that a divisional application must be filed on the date prior to the date of publication of the mention of the grant. Even though the publication of the European patent bulletin occurs at 14:00, filing on the same day at 13:37 is too late.
• The error in the debit order for the appeal fee was of a kind that I didn't know was possible: the form 1038E indicated the correct fee by name ("011 Appeal fee for an appeal filed by an entity other than those referred to in Rule 6(4) and (5) EPC"). The box "for the "Amount to be paid", however, showed only EUR 1 860, rather than the correct amount of EUR 2 255. 
• The decision illustrates that even if the impugned decision is that the European patent application is "not to be treated as a European divisional application since the requirements for filing a divisional application had not been fulfilled, and that all fees paid for this application were to be refunded", an admissible appeal can be filed and oral proceedings can be held before the Board.

EPO J 0008/19 -  link

Summary of Facts and Submissions

I. The appeal lies against the decision of the Receiving Section posted on 5 April 2019 stating that European patent application No. XX XXX XXX.X was not to be treated as a European divisional application since the requirements for filing a divisional application had not been fulfilled, and that all fees paid for this application were to be refunded.

II. The appellant filed European patent application No. XX XXX XXX.X as a divisional application from the earlier European patent application No. YY YYY YYY.Y at 13.37 hrs on 25 April 2018.

T 1687/17 - Abridged decision

Key points

• The Board rejects the appeal of the opponent using an abridged decision under Art. 15(8) RPBA 2020.
• “ Nach Überprüfung der angefochtenen Entscheidung schließt sich die Kammer der zutreffenden Begründung der Einspruchsabteilung an und verweist auf die Entscheidungsgründe 12.3 bzw. 13.3 bzw. 14.3 und 15.3.”
• The Board notes that the parties confirmed during the oral proceedings that no new arguments had been presented in appeal. 
• “Neue Argumente wurden, wie von den Parteien in der mündlichen Verhandlung bestätigt, im Beschwerdeverfahren nicht vorgebracht.”

EPO T 1687/17 -  link

Entscheidungsgründe

1. Die Kammer stellt fest, dass alle relevanten Argumente der Parteien im Beschwerdeverfahren bereits im erstinstanzlichen Verfahren geltend gemacht und berücksichtigt wurden. Neue Argumente wurden, wie von den Parteien in der mündlichen Verhandlung bestätigt, im Beschwerdeverfahren nicht vorgebracht.

1.1 Die Kammer schließt sich hinsichtlich aller Fragen den Feststellungen der Einspruchsabteilung und der Begründung der angefochtenen Entscheidung an und hält es für sachdienlich, die vorliegende Entscheidung hinsichtlich aller Fragen in gekürzter Form nach Artikel 15(8) VOBK 2020 abzufassen.

2. Die Beschwerdeführerin führt aus, dass das Streitpatent wegen mangelnder Ausführbarkeit (Artikel 100 b) EPÜ), unzulässiger Erweiterung (Artikel 123 (2) EPÜ), mangelnder Neuheit (Artikel 54 EPÜ) und mangelnder erfinderischen Tätigkeit (Artikel 56 EPÜ) zu widerrufen sei, und zwar aus den Gründen, die in der angefochtenen Entscheidung (siehe Punkte 12.1 bzw. 13.1 bzw. 14.1 bzw. 15.1) wiedergegeben worden sind.

2.1 Die Beschwerdegegnerin entgegnet der Argumentation der Beschwerdeführerin mit den Ausführungen, die unter den Punkten 12.2 bzw. 13.2 bzw. 14.2 bzw. 15.2 der angefochtenen Entscheidung wiedergegeben worden sind.

3. Nach Überprüfung der angefochtenen Entscheidung schließt sich die Kammer der zutreffenden Begründung der Einspruchsabteilung an und verweist auf die Entscheidungsgründe 12.3 bzw. 13.3 bzw. 14.3 und 15.3.

Das Streitpatent in der Fassung gemäß Hauptantrag genügt den Erfordernissen der Artikel 83, 123(2), 52(1), 54 und 56 EPÜ.

Entscheidungsformel

Aus diesen Gründen wird entschieden:

Die Beschwerde wird zurückgewiesen.

D 0001/18 - Disciplinary case

Key points

• This is a disciplinary appeal case. Two complaints are filed against the professional representative by two companies, the first one in December 2015, the second in November 2016. 
• The decision of the Disciplinary Committee (DC) “issued a warning” on the first complaint and referred the second complaint to the Disciplinary Board (note, this is not the Disciplinary Board of Appeal).
• On the first complaint (warning issued), the appeal is allowed.

No conviction for violating the spirit, aim and purpose of the Disciplinary Regulation or the Code of Conduct

• The DBA: “ First of all, the Board concurs with the appellant that the impugned decision does not specifically identify which Rule of Professional Conduct (Articles 1 to 3 RDR) has been violated.”
  “Contrary to the finding of the decision under appeal, there is no room for issuing a penalty under Article 4(1) RDR [Regulation on discipline for professional representatives] for generally violating the “spirit, aim and purpose” of either the RDR or the CC [Code of Conduct]. ”
• As a comment, I'm glad that professional representatives can not be disciplinarily sanctioned, e.g. removed from the list, for “generally violating the spirit, aim and purpose of either the RDR or the CC”. On the other hand, Article 1(1) RDR first sentence is a rather broad provision which may cover the alleged behaviour.  
• The DBA: “It is noted that mentioning a specific provision of the CC only is not sufficient to comply with Article 17 RPDC (The impugned decision refers to Articles 1(b) and 3(a) CC, but does not state explicitly that these were violated). The CC merely serves to interpret the rather generally formulated Rules of professional conduct in the RDR, and the provisions of the CC can only be invoked together with a specific provision of the Rules of professional conduct in a decision of a disciplinary body established under Article 5 RDR.” [emphasis added]

Right to a reasoned decision stating which specific actions or behaviour are sanctioned

• “Furthermore, it is not clear from the decision which specific actions or behaviour of the representative were conclusively found to violate the Rules of professional conduct. [...] The decision only additionally states that both actions and non-actions of the appellant were found to be inappropriate, as well as his behaviour towards the Chamber as a disciplinary body of the epi. [...] The other reproachable act of the appellant is the “non-responsive behaviour” towards the Chamber. ” Therefore, the Board concludes that “it appears questionable whether an objective reader of the decision, such as other members of the epi, would find clear guidance therein what behaviour they should definitively avoid. In summary, the decision contains a very limited material substance which could form the basis of an appellate review by the Board.”
• As a comment,  a few observations can be made: 
• 1) The conduct of the defendant in the proceedings can be a factor/ground for a sanction, according to the DC. The DBA does not expressly state here whether this reasoning of the DC is correct or not (I'm not an expert of EPO disciplinary rules and I don't know if it is line with established DBA case law or established practice of the DC's. I know the approach is adopted by at least some disciplinary bodies of some other professions in The Netherlands).
• 2)  The DBA appears to acknowledge some principle that DC decision should provide "other members of the epi"  with "clear guidance therein what behaviour they should definitively avoid". 
• 3) In my view, the rule that disciplinary decisions must be reasoned and must state “which specific actions or behaviour of the representative were conclusively found to violate the Rules of professional conduct” does not only serve the interest of "other epi members". Rather, I would say that it is a fundamental principle of criminal proceedings which should apply by analogy to disciplinary proceedings because a conviction for violating unspecified legal provisions due to unspecified acts is highly problematic under the rule of law. 
• The DBA speaks of an “an appellate review by the Board”. However, it is not clear to me if a DBA disciplinary appeal is a review or a re-hearing. See e.g. Barendrecht et al 2006 (link), “In a rehearing, the dispute is handled as if it were a case in first instance. The appeal court evaluates the case with a totally fresh look. In a review, the appeal court only checks the decision of the court of first instance. (...) Roughly, we can classify the English and German civil appeals as procedures of review, as well as the English criminal appeal. The French and Dutch civil and criminal appeal are typical procedures of rehearing, and so is the German criminal appeal.” 
• 
  The decision of DC to refer to the Disciplinary Board is non-appealable
• The appeal is inadmissible to the extent the decision to refer the second complaint is concerned. Contrary to (recent decision) D2/18, the present Disciplinary Board of Appeal considers such decision to refer non-appealable.
• I note that D2/18 was taken 05.04.2019, published 05.06.2019, the present decision was taken 26.09.2019. The panel of the DBA was completely different except for the Chair, which is the BoA President. In my view, the present decision on this point makes much more sense than D2/18. I wish to favourably highlight that the DBA (Chair) appears to have accommodated such a relatively swift development of the case law. 

Note that the DC is made up by epi members elected by the epi Council, which is in turn elected by the epi members. So as a profession we are responsible ourselves for the quality of the DC judgments. Did you vote already? Voting closes on 17 February.

EPO  D 0001/18 - link

Transitional practice under the EPC 2000

The EPO Notice "Implementation of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the European Patent Convention of 29 November 2000 (in English only)" is now (again) available at the EPO website.

The document can now be found at https://www.epo.org/law-practice/legal-texts/epc/archive/documentation/transitional.html

The Notice is also known as "Transitional practice under the EPC 2000" .
It is also the document that was referenced in OJ EPO 200, 504.

The Notice was e.g. cited in the Examiner's Report for EQE Paper C of 2010.

The Notice mentions in particular that Article 54(3) EPC 2000 applies for any divisional application that is received by the EPO on or after 13.12.2007, irrespective of the filing date of the parent and the divisional application.

“Note in this context, that for European divisional applications the relevant date, for Art. 54(4) and Rule 23a EPC 1973 to apply or not, is the date of receipt of the divisional application at the EPO and not the attributed filing date of the parent application. This means that under the EPC 2000, parent and divisional applications may be treated differently as regards the application of Art. 54(3) EPC.”  (Notice page 25).

T 0032/16 - Art.13(1) RPBA 2020 also for older filings

Key points

• The Board decides on the admissibility of auxiliary requests filed in appeal, before 01.01.2020 and after filing the initial appeal submissions. As in T 634/16, the Board concludes that Art.13(1) RPBA 2020 applies to requests filed before 01.01.2020 because the decision is taken after 01.01.2020. 
• The Board: “Since no exclusion or transitional provision exists concerning Article 13(1) RPBA 2020, it therefore applies to this case (see e.g. CA/3/19, page 62, explanatory remarks to Article 25(2) RPBA 2020).”
• “The Board cannot see any legal difficulty in such application, or that this might have been contrary to the intention of the legislator. Additionally, no contradiction can be found in the wording of Article 13(1) RPBA 2020 compared to Article 13 RPBA 2007. Indeed, when compared, the revised wording in Article 13(1) RPBA 2020 is more detailed in listing out the requirements on the party making an amendment to its appeal case and the criteria to be used by the Board when exercising its discretion; the difference however merely reflects much of the case law developed under Article 13(1) RPBA 2007.”
• “The revised provision inter alia requires the party [] to provide reasons for submitting the amendment at this stage of the appeal proceedings. In exercising its discretion, the Board is to also consider whether the party has demonstrated that the amendment prima facie overcomes the issues raised by the appellant or by the Board and does not give rise to new objections. These are criteria and requirements that distill and crystallise the relevant case law since 2007 without altering the ambit of the provision.”
• About the admissibility of the new AR: “the [patentee's] argument that the Board's preliminary opinion went against all findings regarding Article 123(2) EPC to date is in itself not a persuasive reason for not having filed an appropriate fall-back position with its [initial appeal submissions].”
• However, in this case, the Board had singled out one argument from the " opponent's lengthy arguments concerning its objections under Article 100(c) EPC". Therefore, AR is admissible as it was filed quickly after the preliminary opinion of the Board and involves simple amendments addressing the issues found relevant by the Board. 
• “Demonstration of how these amendments overcame the objection, as argued by the [patentee], were thus, in this particular case where the lacking features as such had at least already been identified by the [opponent], self-evident in the amendments made.”
• note: see also T2227/15: “where the summons to oral proceedings or a Rule 100(2) EPC communication has been notified before 1 January 2020, Article 13(1) RPBA 2020 applies simultaneously with Article 13(1) and (3) RPBA 2007. Where such notification has been done after that date, solely Article 13 RPBA 2020 applies without exception”

EPO T 0032/16 -  link

Reasons for the Decision

1. Admittance of the main request

1.1 The main request was originally filed as auxiliary request 3 in response to the preliminary opinion of the Board. Its submission at that stage constitutes an amendment of the party's case. Its admittance is thus at the discretion of the Board under Article 13(1) of the Revised Rules of Procedure of the Boards of Appeal (RPBA 2020) and Article 13 RPBA 2007.

1.1.1 The first issue in the present case was for the Board to establish that Article 13(1) RPBA 2020 was indeed applicable in addition to Article 13 RPBA 2007. Although the discussion of this matter during the oral proceedings was not controversial, the Board considers it useful to add some explanatory remarks on this issue due to the very recent entry into force of RPBA 2020.

1.1.2 Article 25(1) RPBA 2020 states that 'the revised version (i.e. RPBA 2020) shall apply to any appeal pending on...the date of the entry into force, subject to the following paragraphs'.

The transitional provision of Article 25(3) RPBA 2020 results in the fact that Article 13(2) RPBA 2020 does not apply in the present case, since the summons to oral proceedings was notified before the date of entry into force of the revised rules. Instead it is stated that Article 13 RPBA 2007 shall continue to apply.

Since no exclusion or transitional provision exists concerning Article 13(1) RPBA 2020, it therefore applies to this case (see e.g. CA/3/19, page 62, explanatory remarks to Article 25(2) RPBA 2020).

This results in both Article 13 RPBA 2007, including its particular version of Article 13(1), and Article 13(1) RPBA 2020 being applicable at the same time.

1.1.3 The Board cannot see any legal difficulty in such application, or that this might have been contrary to the intention of the legislator.

Additionally, no contradiction can be found in the wording of Article 13(1) RPBA 2020 compared to Article 13 RPBA 2007. Indeed, when compared, the revised wording in Article 13(1) RPBA 2020 is more detailed in listing out the requirements on the party making an amendment to its appeal case and the criteria to be used by the Board when exercising its discretion; the difference however merely reflects much of the case law developed under Article 13(1) RPBA 2007.

The revised provision inter alia requires the party (in this case the respondent) to provide reasons for submitting the amendment at this stage of the appeal proceedings. In exercising its discretion, the Board is to also consider whether the party has demonstrated that the amendment prima facie overcomes the issues raised by the appellant or by the Board and does not give rise to new objections. These are criteria and requirements that distill and crystallise the relevant case law since 2007 without altering the ambit of the provision.

1.2 In regard to the reasons for the request to have been submitted at this (late) stage of the appeal proceedings (Article 13(1) RPBA 2020, 3rd sentence) and the party's justification (Article 13(1) RPBA 2020, 1st sentence), and despite the appellant's objections thereto, it must first be noted that the respondent's argument that the Board's preliminary opinion went against all findings regarding Article 123(2) EPC to date is in itself not a persuasive reason for not having filed an appropriate fall-back position with its response to the grounds of appeal.

1.3 An assumption by a party that a Board's findings will not differ from those of the opposition division, even with no substantial change to the arguments having been presented, and responding to this objection by simply filing arguments without adopting a fall-back position, may be open to risk in certain cases, as the Board is evidently not prevented from reaching a different conclusion on the same issue. Nonetheless, in the present case the Board's communication did crystallise for the first time what the Board itself had deduced to be the relevant elements of the appellant's lengthy arguments concerning its objections under Article 100(c) EPC. Although the appellant stated that its set of arguments was always supposed to have been understood in the way the Board had deduced, the Board's statement (in this context, and despite what the opposition division had concluded) that the claimed term 'joined' did in fact appear to be of broader scope than the disclosed term 'bonded', could be understood as having identified the salient argument for the first time. It is thus accepted by the Board that the respondent's first opportunity to reply to this specific argument was after receiving the Board's preliminary opinion. It is thus in the context of the very special circumstances of this particular case, that the respondent's reasons for submitting the (now) main request at such a late stage of the appeal proceedings can be accepted.

1.4 It is also noted that the amended requests, which included the (now) main request as auxiliary request 3, were submitted on the day the Board's preliminary opinion was received by the respondent. It had thus responded without delay to the objections once these had been identified. It is furthermore noted that the respondent, after discussing the added subject-matter objections to claim 1 as granted (see minutes of oral proceedings) withdrew all its auxiliary requests save for the (now) main request, such that the respondent is found to have behaved in a procedurally economic fashion.

1.5 As regards the exercise of the Board's discretion concerning whether the respondent has demonstrated that the amendment prima facie overcomes the issues raised by the appellant or by the Board and does not give rise to new objections (as stated in Article 13(1) RPBA 2020 last sentence), this has also been taken into account as follows.

1.5.1 The main request directly addressed the objections of added subject-matter presented in writing by the appellant against claim 1 as granted. The amendments to replace the word 'joined' with 'bonded' and to include the hydrogel layer thickness of 0.5mm to 20mm in claim 1 were, despite the somewhat diffuse arguments around this, those features identified by the appellant as missing in claim 1 as granted and giving rise to its objections under Article 100(c) EPC against the subject-matter of claim 1 as granted.

1.5.2 In its written response, the respondent also stated from where the amendment was taken (Article 12(4) RPBA 2020, 2nd sentence), it being noted that the introduced terminology is an explicit recitation of the language used. Demonstration of how these amendments overcame the objection, as argued by the respondent, were thus, in this particular case where the lacking features as such had at least already been identified by the appellant, self evident in the amendments made. The amendments were also not complex (Article 13(1) RPBA 2007; Article 13(1) RPBA 2020 2nd sentence reference to Article 12(4) RPBA 2020) in any sense, nor was this argued to be the case.

T 1442/16 - Embodiments (II)

Key points

• In this examination appeal, the Board considers claim 1 of AR IV to lack basis in the application as filed.
• The Board: “However, there is no embodiment in the application as originally filed with both of these features together. The only embodiment with a three-dimensional heart model is the one illustrated in Figure 3 and explained on page 8, lines 8 to 32. In this embodiment, the values of the ECG data are not connected [in a different way than now specified in claim 1].
• “The appellants argued that the board's reading of the application was too literal. It was implicit from the overall style of the application that additional features were gradually introduced using the language "in another embodiment", "in still another embodiment" or "in a further embodiment". This did not mean that the features from one of these "embodiments" could not be combined with those of another "embodiment". The board cannot accept such a defence. Personal style does not give applicants a carte blanche to mix and combine features from different embodiments as they please.”
• The Board also deals with the issue whether a feature of the claimed user interface is technical or not, finding that it is not. I don't discuss that aspect here.

EPO T 1442/16 - link




2. Auxiliary requests IV, V and VI

2.1 The method according to claim 1 of auxiliary requests IV, V and VI comprises inter alia both of the features of displaying a three-dimensional heart model from the centre of which the axes of the multiaxis diagrams extend, and displaying polygonal patterns formed by connecting the plurality of values of the ECG data together with the multiaxis diagrams. However, there is no embodiment in the application as originally filed with both of these features together. The only embodiment with a three-dimensional heart model is the one illustrated in Figure 3 and explained on page 8, lines 8 to 32. In this embodiment, the values of the ECG data are not connected to form polygonal patterns, but rather to form "three dimensional reconstructions" in form similar to ellipsoids.

2.2 The appellants argued that the board's reading of the application was too literal. It was implicit from the overall style of the application that additional features were gradually introduced using the language "in another embodiment", "in still another embodiment" or "in a further embodiment". This did not mean that the features from one of these "embodiments" could not be combined with those of another "embodiment". The board cannot accept such a defence. Personal style does not give applicants a carte blanche to mix and combine features from different embodiments as they please.

T 0524/17 - Embodiments

Key points

• The opponent argues that claim 1 is based on a combination of features that are disclosed only individually in the application. In particular, the features would be picked from different embodiments.
• The Board: “The argument relating to the alleged "picking" from different embodiments essentially boils down to applying the literal meaning of the expression "embodiment", i.e. relating to a specific combination of features disclosed in the application, such as a working example. Conversely, in the application as filed underlying the patent in suit, the expression "embodiment" does not relate to such a specific set of features, but rather refers to preferred features of the invention described therein”
• The  Board: “[In the application as filed] the expression "in one embodiment" refers to a general teaching. This construction is supported by the fact that in these passages the expression "in one embodiment" is not followed by a specific combination of features, but discloses instead preferred shapes such as a sheet or to preferred values of a single feature such as the brass texture intensity etc. Thus, these passages relate to general teachings of the preferred features of the invention as disclosed in the application as filed which are combinable without going beyond the content of the application as filed.”

EPO T 0524/17 -  link

Reasons for the Decision

Main request (patent as granted)

1. Article 100(c) EPC

1.1 While there is agreement amongst the parties that all the features of claim 1 are disclosed individually in the application documents as originally filed, appellant 2 submits that: (i) the features were picked from different embodiments, (ii) claim 1 contained a specification of a general observation, and (iii) a feature presented in the originally filed documents as inextricably linked with one of the features now present in claim 1 was not present therein.

1.2 Ad (i)

The argument relating to the alleged "picking" from different embodiments essentially boils down to applying the literal meaning of the expression "embodiment", i.e. relating to a specific combination of features disclosed in the application, such as a working example. Conversely, in the application as filed underlying the patent in suit, the expression "embodiment" does not relate to such a specific set of features, but rather refers to preferred features of the invention described therein, i.e. at least in the passages referred to by appellant 2 (e.g. paragraphs [0051], [0080] and [0081]), the expression "in one embodiment" refers to a general teaching. This construction is supported by the fact that in these passages the expression "in one embodiment" is not followed by a specific combination of features, but discloses instead preferred shapes such as a sheet or to preferred values of a single feature such as the brass texture intensity etc. Thus, these passages relate to general teachings of the preferred features of the invention as disclosed in the application as filed which are combinable without going beyond the content of the application as filed. This is also supported by the examples: in particular Sheet 1 of Example 1 (according to the invention) is fully encompassed by the set of features now present in claim 1.

T 0634/16 - New Art.13(1) RPBA 2020 retroactively

Key points

• “ Any submission which is already on file before the entry into force of the revised version, and which is subsequent to the statement of grounds of appeal or the reply thereto, will however be subject to all the provisions of revised Article 13, paragraph 1, including the analogous application of revised Article 12, paragraphs 4 to 6.” (Explanatory Notes to the RPBA, OJ 2020, sp2, p.72)
• The Board in this case confirms that, yes indeed the admissibility of amended claims and other amendments of a party's case filed before 01.01.2020 is nevertheless governed by Art. 13(1) RPBA 2020, if the appeal decision is taken after 01.01.2020. 
• The Board however expresses the view that the new Article 13(1) RPBA 2020 “codifies and crystallizes the established practice on the matter” (my translation from French). Hence, there is no contradiction or inconsistency with Article 13 RPBA 2007.
• The amended claims filed 6 December 2019 were not admitted as being not prima facie allowable. However, I think the outcome would have been the same if they had been filed e.g. already in 2017, well before the new RPBA were publicly announced.
• Under Art.13(1) RPBA 2020, a case amendment “is subject to the party's justification for its amendment” and “the party shall provide reasons for submitting the amendment at this stage of the appeal proceedings.”
• As a comment, the Board clearly applies the rules as they were decided. Apparently, the (arguably) retroactive effect is what the Board of Appeal Committee and the Administrative Council wanted. 

EPO T 0634/16 - link

Requêtes auxiliaires 1 et 2 - Article 13(1) RPCR 2020

7. Les deux requêtes auxiliaires ont été déposées en réponse à la notification de la Chambre indiquant son opinion préliminaire, donc après expiration du délai pour déposer le mémoire de recours. Elles constituent ainsi une modification des moyens invoqués par la requérante.

8. Leur dépôt a eu lieu le 6 décembre 2019, avant l'entrée en vigueur de la version revisée du Règlement de Procédure des Chambres de Recours (RPCR 2020) le 1**(er) janvier 2020. Cependant la décision de la Chambre dans la présente affaire a été prise lors de la procédure orale du 10 janvier 2020, donc après l'entrée en vigueur du RPCR 2020.

9. La requérante a pourtant soutenu que les dispositions de l'article 13 RPCR 2007 déterminaient l'admission de ses requêtes.

10. Afin de statuer sur l'admission dans la procédure des requêtes auxiliaires, produites incontestablement à un stade tardif de la procédure, il s'agit tout d'abord de déterminer les provisions applicables à cet état de faits.

T 0184/17 - Let's admit new grounds in appeal (exceptionally)

Key points

• In this opposition appeal, the Board decides that claim 1 is novel over E1. The opponent then would like to argue that even if E1 does not directly and unambiguously disclose the feature at issue, E1 at least makes the feature obvious. 
• "The respondent-opponent submits that, if claim 1 is considered new for the lack of an unambiguous disclosure of a process for preparing a beverage from tea leaves [in E1], it anyhow lacks an inventive step." E1 describes a detailed process for making drinks and includes a general remark that the processes of E1 can be used for making coffee and tea.
• The patentee argues that inventive step is a new ground of opposition in appeal. "since the appellant-proprietor does not consent to its introduction into the appeal proceedings, the board has no authority to examine it, see G10/91".
• "In the present case, the ground of inventive step was neither raised and substantiated in the notice of opposition nor discussed during opposition proceedings."
• "The new objection relies on the same passages and teaching of the document as the unsuccessful novelty objection, duly raised and substantiated with the notice of opposition. In other words, the lack of inventive step attack as raised in appeal stays within the factual and evidentiary framework relied upon by the opponent in the notice of opposition [for novelty]"
•  "In conclusion, the board holds that even when the ground of inventive step was neither raised and substantiated in the notice of opposition nor discussed during opposition proceedings, an objection of lack of inventive step can exceptionally be examined in the appeal proceedings without the agreement of the patentee, if it stays within the same factual and evidentiary framework of a novelty objection properly raised and substantiated in the notice of opposition. This does not mean that the ground of lack of inventive step starting from the same prior art is always implicit in a properly substantiated allegation of lack of novelty. It rather applies exclusively to a case such as the present one, where, after having validly raised lack of novelty in opposition on the basis of a given document and passages cited therein, the ground of lack of inventive step is subsequently invoked in appeal based only on that document and the same passages, and where therefore the factual and evidentiary framework is substantially the same."
• As a comment, this decision appears to hollow out the holding of G10/91. Whatever the merits of G10/91 (I'm skeptical about that), I'm not sure if the approach of the present Board contributes to legal certainty for patentees. I doubt whether G10/91 envisaged Technical Boards creating exceptions to its holding. The fact that the Enlarged Board in G7/95 created an exception does not mean (in my view) that Technical Boards can create further exceptions as they deem necessary based on fairness. 
• In earlier decision T 597/07 cited by the Board, the inventive step attack was admitted not by way of exception but based on the Board holding that "the objection of lack of inventive step is not a fresh ground for opposition in the present case". 

EPO T 0184/17 - link

4. New ground of opposition

The respondent-opponent submits that, if claim 1 is considered new for the lack of an unambiguous disclosure of a process for preparing a beverage from tea leaves, it anyhow lacks an inventive step. According to the respondent-opponent, the skilled person, drawing on the teachings of the invention in E1 already cited in the above novelty objection, would adapt as a matter of obviousness the cited process described on pages 29-33 for preparing a beverage from tea leaves in the sense of the contested claim.

The appellant-proprietor contests that the ground of inventive step was neither raised nor substantiated in the notice of appeal and thus constitutes a fresh ground for opposition. Since the appellant-proprietor does not consent to its introduction into the appeal proceedings, the board has no authority to examine it, see G10/91 (OJ 1993, 408 and 420).

T 1624/16 - No last chance doctrine

Key points

• The patentee files auxiliary requests during the oral proceedings before the Board, after the Board had announced a negative conclusion on the claims as granted.
• The Board: “As regards the [patentee's] argument that late filing of the auxiliary requests was justified as a "last chance" to save its patent, the board notes that submissions of the parties are subject to Articles 12 and 13 RPBA and admissibility of late requests is always a matter of the board's discretion (see e.g. T 446/00, point 3.3 of the Reasons). There is no established "last chance" doctrine or any absolute right of a patentee to such a "last chance".”
• The Board: “the [patentee] has failed to present any arguments why, in its view, any of these requests should be prima facie allowable, although e.g. claims 2 and 4 as granted [now incorporated in claim 1] were already objected to for lack of inventive step in the grounds of appeal.”

T 1624/16 -  link

3. First to sixth auxiliary requests - admissibility

3.1 The first to sixth auxiliary requests were filed during the oral proceedings, after the board had given its negative opinion with regard to novelty of the subject-matter of claim 1 as granted. As compared to the previous first to sixth auxiliary requests filed with the respondent's letter dated 27 June 2019, the term "prevention" in claim 1 has been replaced in all requests by the term "inhibition".

3.2 Under Article 13(1) RPBA, the boards have discretion to admit and consider any amendment to a party's case after it has filed its grounds of appeal or reply. The discretion shall be exercised in view of inter alia the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy.

In this context, according to well-established case law of the Boards of Appeal, amended claims filed only shortly before or during the oral proceedings must in general be prima facie allowable in order to be admitted in the sense that it is immediately apparent to the board that they overcome all outstanding issues without raising new ones (see Case Law of the Boards of Appeal (CL), 8th edition, IV.E.4.1.3, 4.2.2).

In any case, it should be considered whether there is a proper justification for their late filing.

T 0434/15 - Stem cell harvesting from blood

Key points

• This opposition appeal is about a method "to obtain progenitor and/or stem cells" from a patient, the method comprising a step of "harvesting said progenitor and/or stem cells". The Board concludes that the claim is directed to a surgical method because of this step, in view of G1/07.
• The Board first explains that "[a]pheresis is a method in which blood is removed from a person, passed through an apparatus for separating and collecting a particular constituent of the blood (in the present case, stem/progenitor cells) and re-transfused without the collected constituent."
• The Board concludes (based on a document D18) that "[apheresis] has to be carried out with extreme care to avoid damage to the remaining blood and to the stem/progenitor cells that are removed for further use."
• "Consequently, apheresis is a substantial physical intervention involving considerable health risks."
• The patentee had submitted a declaration of an expert stating that he worked in a hospital that "performed about 200 apheresis sessions a year. It was the second largest centre in the UK performing adult stem cell transplantation.".
• The Board: "the fact that a certain method is routine for a highly specialised centre cannot automatically lead to the conclusion that such a method would generally be a safe and routine technique."
• The Board concludes that "[t]here are considerable health risks involved. Furthermore, apheresis cannot be considered to be a generally safe, simple, routine procedure. Consequently, apheresis has to be seen as a method of surgery within the meaning of Article 53(c) EPC."

EPO T 0434/15 (Plerixafor ) - link

III. Independent claims 1 and 9 of the patent as granted read as follows:

"1. A method to obtain progenitor and/or stem cells from a subject, which method comprises
(a) administering to said subject an amount of a compound sufficient to mobilize said progenitor and/or stem cells into the peripheral blood of said subject, followed by
(b) harvesting said progenitor and/or stem cells,
wherein said compound is 1,1'-[1,4-phenylene-bis-(methylene)]-bis-1,4,8,11-tetraazacyclotetradecane or a pharmaceutically acceptable salt or metal complex thereof."

 Reasons for the Decision

4.2 Methods for treatment by surgery (Article 53(c) EPC)

4.2.1 The following reasoning applies to methods according to claims 1 and 6, i.e. methods in which the progenitor/stem cells are harvested by apheresis.

4.2.2 Decision G 1/07 of the Enlarged Board of Appeal (see OJ EPO 2011, 134) has established a certain direction for the consideration of whether certain method steps are to be considered as methods of treatment of the human body by surgery. The exclusion of such methods from patentability should be justified on grounds of public health, the protection of patients and the freedom of the medical profession to apply the treatment of choice to its patients (see G 1/07, reasons, point 3.4.2.4, third paragraph).

T 1943/15 - Drawings as prior art; open-ended ranges

Key points

• The Board, on drawings as prior art: “Features can therefore be taken from the drawings of a patent publication if their structure and function are clearly, unmistakably and fully derivable from the drawings.”
• The Board agrees with “the conclusion of T 204/83 that dimensions obtained solely by measurements carried out on a diagrammatic representation do not constitute part of the disclosure also applies to patent drawings that accurately portray an invention but do not qualify as construction drawings.”
• The Board, on sufficiency of disclosure: “According to established case law, an open-ended range in a claim does not necessarily result in a lack of sufficiency of disclosure due to the absence of a second boundary to the range. Where it is clear for a skilled person that an open-ended range is limited in practice, depending on the surrounding circumstances, such that the claimed values should be only as high as can be attained above the lower limit, then such open-ended ranges are normally not objected”

EPO T 1943/15 -  link

VII. The appellant [opponent] essentially argued as follows:
x)

Novelty

i) Dimensions from drawings

[Opponent's arguments]

According to decisions T 204/83, T 1488/10 and T 1664/06 there was no general rule for deriving features from drawings, since it was not possible to treat the drawings of each document in the same way. There was no general ban on measuring elements from drawings. In particular, it should be established whether the skilled person would derive any technical teaching from the drawing of a document involving the features in question. In fact, in each of the documents relied upon in opposition, the threads commonly played a relevant role.

When taking account of the relevance of elements shown in a drawing, the quality of the drawing and the background knowledge of the skilled person, it could be appropriate to measure the dimensions of the elements in order to determine the ratio of two dimensions. In that case, the measurements would only be taken to establish whether two dimensions were in proportion to each other. Sometimes, it sufficed for the skilled person to have a perception of a ratio from a drawing without requiring accurate measurements. This was confirmed by decisions T 748/91, T 422/95 and T 1200/05, according to which clearly essential elements may be derived even from schematic drawings.

Reasons for the Decision

2. Sufficiency of disclosure

2.5 According to established case law, an open-ended range in a claim does not necessarily result in a lack of sufficiency of disclosure due to the absence of a second boundary to the range. Where it is clear for a skilled person that an open-ended range is limited in practice, depending on the surrounding circumstances, such that the claimed values should be only as high as can be attained above the lower limit, then such open-ended ranges are normally not objected to (cf. T 487/89, Reasons 3.5; T 129/88 OJ 1993, 598, Reasons 2.2.4; T 1018/05, Reasons 2.3).

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