G 0003/19 - Unpatentable plants (Pepper)

Key points

• “The Enlarged Board [] abandons the interpretation of Article 53(b) EPC given in decision G 2/12 [sic, G 2/13 is not mentioned]  and, in the light of Rule 28(2) EPC, holds that the term “essentially biological processes for the production of plants or animals” in Article 53(b) EPC is to be understood and applied as extending to products exclusively obtained by means of an essentially biological process or if the claimed process feature defines an essentially biological process” (r.26.8). Therefore, such products are not patentable under Article 53(b) EPC (see below for transitional provisions). 
• This leads to the headnote:
• “Taking into account developments after decisions G 2/12 and G 2/13 of the Enlarged Board of Appeal, 
• the exception to patentability of essentially biological processes for the production of plants or animals in Article 53(b) EPC has a negative effect on the allowability of 
• product claims and product-by-process claims directed to plants, plant material or animals, 
• if the claimed product is exclusively obtained by means of an essentially biological process
•  or if the claimed process features define an essentially biological process.”
• “This negative effect does not apply to European patents granted before 1 July 2017 and European patent applications which were filed before that date and are still pending.”
• I note that the alternative ground of exclusion from patentability due to process features (recited in a product-by-process claim)  defining an essentially biological process is not expressly specified in R.28(2) and reverses G 2/13 hn.2(a). The (only public) underlying document for R.28(2), CA/56/17 appears to be silent about process features. 
• The Enlarged Board also extends the prohibition to "plant material" in the headnote, unlike R.28(2) (see the comparison below). The interested reader is referred to CA/56/17, paras. 48, 50 and 64 for the reason why R.28(2) does not mention 'plant material'. The Enlarged Board does not mention that (not patentable) 'plant material' is restricted to propagation material. So perhaps the exception extends to claims directed to a harvested tomato and to tomato paste and tomato juice. Plant material 'such as fruit' is mentioned in G2/12 hn.1.
• Before arriving at its decision to overturn  G2/12 (and G2/13), “the Enlarged Board concludes that, in view of the clear legislative intent of the Contracting States as represented in the Administrative Council and having regard to Article 31(4) Vienna Convention ["a special meaning shall be given to a term if it is established that the parties so intended"], the introduction of Rule 28(2) EPC allows and indeed calls for a dynamic interpretation of Article 53(b) EPC.”
• The Enlarged Board, however, begins its analysis by rephrasing the questions referred by the President of the Office. The first question is rephrased because the “wording of question 1 is too general and unspecific in that it broaches an institutional topic which reaches well beyond the ultimate object of the referral”.
• The Enlarged Board considers the rephrased question to be admissible: “there are different decisions of two Boards of Appeal on the question whether an amendment to the Implementing Regulations can have an impact on the interpretation of an Article of the EPC” (namely, T 1063/18 implying that such amendment can't have such an impact and T 315/03, r.7.3 stating that “that Article 53(a) EPC contains nothing which precludes or limits its own subsequent interpretation [] by (secondary) legislation”). 
• The Enlarged Board decision has the advantage that it avoids a clash with the Contracting States (wisely, in my view). At the same time, the Enlarged Board appears to leave open the question of whether Rule 28(2) EPC is binding on the Enlarged Board. 
• “[A]lthough neither the Contracting States, in accordance with Article 172 EPC, nor the Administrative Council, in accordance with Article 33(1)(b) EPC, has formally amended Article 53(b) EPC to extend the scope of the process exclusion to animals, plants and plant material obtained by essentially biological processes, when now interpreting Article 53(b) EPC, the Enlarged Board cannot ignore the Administrative Council’s decision to introduce a new paragraph 2 in Rule 28 EPC”. The phrase ‘cannot ignore’ seems to have a different meaning than ‘is bound by’. Indeed the headnote shows that R.28(2) does not preclude the Enlarged Board from declaring more subject-matter non-patentable. 
• “As the content of Rule 28(2) EPC does not stand in contradiction to the new interpretation of Article 53(b) EPC given in this opinion, there is no conflict between these provisions.” (emphasis added)
• As to the transitional provision: “For applications, the relevant date is their date of filing or, if priority has been claimed, their priority date.”
• Also interesting is the statement that “[i]rrespective of [the legal status of the Commission's Notice under EU law], as an independent international organisation with its own autonomous legal order, the EPOrg is not directly bound by Union law. It is therefore all the more true that a legally non-binding Notice on the interpretation of the EU Biotech Directive issued by the EU Commission in reaction to decisions of the Enlarged Board on the interpretation of a provision of the EPC, i.e. Article 53(b) EPC, does not form part of EPC law.”

• On the general question of whether exceptions are to be interpreted in a narrow or a broad way: “the Enlarged Board also confirms [...] that the object and purpose of the exception to patentability under Article 53(b) EPC is not sufficiently obvious to answer the question whether or not the clause is to be construed in a narrow or broad way.”

• One Board member of the panel in G3/19 was also a member of the (combined) panel in G 2/12 and G2/13. This member was interestingly enough also the rapporteur in all three cases  (link). 

• The decision recites  “the claimed process features”, but I think that features are not strictly speaking claimed. Subject-matter is claimed, features are recited in a claim. Possibly the headnote should be read as “if the process features of the product-by-process claim define an essentially biological process” (cf. G2/13, hn.2(a)).
• The decision recites “or if the claimed process feature define” (sic) in r.3.3, 'features' in the plural in the headnote and "the claimed process feature defines" r.26.8 but I don't think this any relevance for the substance of the holding.

EPO Headnote
Taking into account developments after decisions G 2/12 and G 2/13 of the Enlarged Board of Appeal, the exception to patentability of essentially biological processes for the production of plants or animals in Article 53(b) EPC has a negative effect on the allowability of product claims and product-by-process claims directed to plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process.
This negative effect does not apply to European patents granted before 1 July 2017 and European patent applications which were filed before that date and are still pending.

Comparison G 3/19 vs. Rule 28(2)

Headnote: "plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process"

Rule 28(2): "plants or animals exclusively obtained by means of an essentially biological process"

Addendum 20.07.2020
The Supreme Court has stated: “The principle that statutes operate only prospectively, while judicial decisions operate retrospectively, is familiar to every law student.” Rivers v. Roadway Express, Inc., 511 U.S. 298, 311-12 (1994).  link (with further references and discussion)

EPO G 0003/19 - link
G 3/19 G3/19


SUMMARY OF THE PROCEEDINGS
The referred questions

I. By letter dated 4 April and received on 8 April 2019, the President of the European Patent Office (hereinafter the EPO President) referred the following questions to the Enlarged Board of Appeal (hereinafter the Enlarged Board) under Article 112(1)(b) EPC:

1. Having regard to Article 164(2) EPC, can the meaning and scope of Article 53 EPC be clarified in the Implementing Regulations to the EPC without this clarification being a priori limited by the interpretation of said Article given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal?
2. If the answer to question 1 is yes, is the exclusion from patentability of plants and animals exclusively obtained by means of an essentially biological process pursuant to Rule 28(2) EPC in conformity with Article 53(b) EPC which neither explicitly excludes nor explicitly allows said subject-matter?

REASONS FOR THE OPINION

The relevant legal provisions

I. Specific reference will be made to the following:

Article 112(1)(b) EPC Decision or opinion of the Enlarged Board of Appeal;
Article 53(b) EPC Exceptions to patentability;
Rule 26(1) and (5) EPC General and definitions, corresponding to Rule 23b(1) and (5) EPC 1973, which was inserted in the Implementing Regulations by decision of the Administrative Council of 16 June 1999 and entered into force on 1 September 1999 (OJ EPO 1999, 437);
Rule 27(b) EPC Patentable biotechnological inventions, as amended by decision of the Administrative Council CA/D 6/17 of 29 June 2017 (OJ EPO 2017, A56) and in force from 1 July 2017;
Rule 28(2) EPC – Exceptions to patentability, introduced by decision of the Administrative Council CA/D 6/17 of 29 June 2017 (OJ EPO 2017, A56) and in force from 1 July 2017;
Articles 31 and 32 Vienna Convention on the Law of Treaties of 23 May 1969 (Vienna Convention);

Articles 1 to 4 Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions (EU Biotech Directive, OJ EU 1998 L 213/13; OJ EPO 1999, 101).

[Article 31  General rule of interpretation

1. A treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose.

2. The context for the purpose of the interpretation of a treaty shall comprise, in addition to the text, including its preamble and annexes:
(a) any agreement relating to the treaty which was made between all the parties in connexion with the conclusion of the treaty; (b) any instrument which was made by one or more parties in connexion with the conclusion of the treaty and accepted by the other parties as an instrument related to the treaty.

3. There shall be taken into account, together with the context:
(a) any subsequent agreement between the parties regarding the interpretation of the treaty or the application of its provisions; (b) any subsequent practice in the application of the treaty which establishes the agreement of the parties regarding its interpretation; (c) any relevant rules of international law applicable in the relations between the parties.


4. A special meaning shall be given to a term if it is established that the parties so intended.

Article 32 Supplementary means of interpretation

Recourse may be had to supplementary means of interpretation, including the preparatory work of the treaty and the circumstances of its conclusion, in order to confirm the meaning resulting from the application of article 31, or to determine the meaning when the interpretation according to article 31:

(a) leaves the meaning ambiguous or obscure; or (b) leads to a result which is manifestly absurd or unreasonable.]

Scope and focus of the referral

II. As an initial matter, before the admissibility and substantive issues of the referral are addressed, it is necessary to analyse the scope and focus of the referred questions and the supporting reasoning. Formally speaking, the present referral addresses two issues: first, the scope of the Administrative Council’s power to adopt or amend Rules of the Implementing Regulations to give effect to an interpretation of an Article of the EPC which differs from that given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal (question 1); secondly, the proper interpretation of Article 53(b) EPC following the adoption of Rule 28(2) EPC, which excludes from patentability plants and animals exclusively obtained by means of an essentially biological process (question 2).

T 0275/15 - Let's continue the ping-pong

Key points

• The OD considered the claims to be not novel over E12 (a US patent). The Board considers the claims novel. The Board has to decide whether to remit the case for a discussion of inventive step.
• “Article 11 RPBA 2020 provides that the Board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so. However, this provision has to be read in conjunction with Article 12(2) RPBA 2020, which provides that it is the primary object of the appeal proceedings to review the decision under appeal in a judicial manner [...]. This principle would not be respected if the Board were to conduct a complete examination of the application. Consequently, in the present case, Article 11 RPBA 2020 does not entail that the Board should carry out a full examination of the application for compliance with the requirements of Article 56 EPC for which no decision of the first instance exists yet.”
• As a comment, this reasoning of the Board is perfectly generic in my view and can be copy/pasted any time the Board would possibly have to deal with a new ground or objection in opposition (new in the sense of: not discussed in the impugned decision).
• I note that the procedure is unusual in that the opponent as respondent did not file any comments in appeal. It's not so clear to me if the opponent can submit inventive step attacks still after remittal, or if he has waived such attacks by not maintaining the attacks in its Statement or response in appeal. So, perhaps, the Board is actually friendly to the opponent by remitting the case.
• In the present case, the application was filed in 2001 and the patent was granted in 2011. Opposition filed in 2012. Appeal filed in 2015. Five years later, the Board remits the case. Quite possibly, after remittal and a further appeal, the opposition will end well after the expiry of the patent term. 

EPO T 0275/15 - link

V. The respondent did not file a reply to the statement of grounds of appeal.

VI. By a communication under Rule 100(2) EPC dated 28 November 2019 the parties were informed that the Board intends to set aside the decision and to remit the case to the department of first instance.

VII. The respondent did not file any observations in reply to this communication within the set time period of two months.

VIII. On 3 April 2020 the registrar of the Board contacted the representative of the respondent who confirmed that no reply to the above communication had been delivered to a recognised postal service provider in due time before expiry of the period. Hence, there are no requests of the respondent on file.

[...]
3. Novelty in view of E12

3.1 The present analysis is based on the wording of claim 1 according to the text annexed to the communication under Rule 71(3) EPC. The published version contained several mistakes.

[...]

3.9 Consequently, the subject-matter of claim 1 is novel over E12 [E12: US 5 035 704].


4. Remittal to the department of first instance

4.1 As said before, the subject-matter of present claim 1 is novel. However, the claims of the main request have not been examined with regard to inventive step by the Opposition Division.

4.2 Under Article 111(1) EPC, the Board may in the present case either proceed further with the examination of the application, in particular with respect to Article 56 EPC, or remit the case to the examining division for further prosecution. Since the present appeal was pending on 1 January 2020, the revised version of the RPBA applies (OJ EPO 2019, A63), subject to the transitional provisions set out in Article 25 of said RPBA. In particular Article 11 RPBA 2020 is applicable.

4.3 Article 11 RPBA 2020 provides that the Board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so. However, this provision has to be read in conjunction with Article 12(2) RPBA 2020, which provides that it is the primary object of the appeal proceedings to review the decision under appeal in a judicial manner (see also T 1966/16 from 20 January 2020, point 2.2 of the reasons and T 0547/14 from 29 January 2020, point 7.1 and 7.2 of the reasons).

4.4 This principle would not be respected if the Board were to conduct a complete examination of the application. Consequently, in the present case, Article 11 RPBA 2020 does not entail that the Board should carry out a full examination of the application for compliance with the requirements of Article 56 EPC for which no decision of the first instance exists yet.

4.5 Consequently, the Board considers it appropriate to exercise its discretion under Article 111(1) EPC to remit the case to the department of first instance for further prosecution.

5. Request for republication of the patent specification

The request for republication of the patent specification must be considered once the definitive version of claim 1 is established.

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.

T 2676/16 - Broad but clear

Key points

• The Board recalls that the clarity requirement of Article 84 EPC does not mean that claims can be refused in examination simply because they are broad.
• “The mere fact that a feature may be implemented in various ways does not necessarily render this feature unclear”.

T 2676/16 -  link


The board further notes with respect to point 2.4 of the reasons of the appealed decision [of the Examining Division] that the mere fact that a feature may be implemented in various ways does not necessarily render this feature unclear.

2.5 Hence, claim 1 of the main request is clear (Article 84 EPC). The same applies mutatis mutandis to independent apparatus claim 7 and the computer-readable memory claim 16. As a consequence, the board is satisfied that claims 1, 7 and 16 of the main request comply with the requirements of Article 84 EPC.

2.6 Furthermore, in view of the above findings, the board is also satisfied that the claimed invention according to the present main request is disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Article 83 EPC), contrary to the obiter dicta statement in point 5 of the reasons of the decision under appeal.

T 1060/19 - Appeal fee

Key points

• The appellant pays the appeal fee in January 2019 at the reduced rate with a debit order in Form 1038 by mistake, it is not an SME. The PDF letter and the remarks of the Form contain a statement that purports to be a debit order in case of underpayment.
• To recap some relevant case law: T 3023/18 considered the underpayment to be no small amount lacking and held that the EPO has no duty to carry out any ex officio enquiry to determine an appellant's entitlement to pay the reduced appeal fee. The fact that the ‘SME declaration’ was missing in that case, did not change this. The Board in T 3023/18 that it is the practice of the Boards of Appeal to accept such declarations at any time during the appeal proceedings. See J8/18 about the EPO Notice OJ 2018, A5 which suggest a requirement for an SME declaration; the Legal Board recalled that “the Board is in no way bound by Notices from the EPO concerning the application or interpretation of legal provisions”. According to J8/19, debit orders can be corrected (see also T 1000/19). According to T2575/19, the validity of a debit order in the remark field of Form 1038E is not ruled out under the ADA in the version valid until 1 October 2019.
• In my view, the present decision does not (expressly) contradict the above case law or departs from that case law. 
• The present appellant argues that the remark in the PDF letter was a valid debit order, because the SME declaration was omitted. I note that the decision does not comment at all on the requirement in the ADA that “debit order must be filed in an electronically processable format (XML)” (point 5.1.2 ADA 2017)
• The present Board undertakes an extensive investigation of whether "the authorisation given in the letter accompanying the notice of appeal, "In case of underpayment ... to debit the legally prescribed amount from our deposit account" had become effective before expiry of the appeal period". I think the Board is here perhaps implicitly applying the conclusion of T2575/19, that a debit order in the remarks tab of Form 1038 (filed before 01.10.2019) is not invalid merely because it is in the remarks tab. 
• The Board: “This would have required the EPO to be in a position before the end of the appeal period to recognise the underpayment, i.e. the fact that the appellant was not eligible for the reduced appeal fee”. The appellant argued that this was the case, because it had not filed the SME declaration, pointing out that EPO Notice OJ 2018, A5 states that "the [SME Declaration] must be filed at the latest by the time of payment of the reduced fee for appeal".
• The Board notes that: “points 3 and 4 of the Notice do not merely interpret decision CA/D 17/17 of the Administrative Council [OJ 2018, A4; i.e. amended Rfees2(1)11], but impose additional duties, i.e. in particular an express declaration (point 3) to be made by the date of payment at the latest (point 4). An assessment must be made therefore of whether legal concepts or legal provisions other than decision CA/D 17/17 provide a basis for these duties.” Implicitly the Board here appears to consider these additional requirements in the Notice to lack legal basis in amended Rfees2(1)11.
• The Board then (immediately) turns to 'legitimate expectations' (which is in my view not legal basis per se) and concludes that this principle does not apply. However, the Board adds that “the board will nevertheless assume arguendo that the provisions of the Notice that are pertinent to the present case are binding.” However, the Board reasons that the provisions of the Notice, when properly interpreted, do not give basis for a legitimate expections as argued by the appellant.  The Board, in particular, notes that point 11 of that Notice allows for remedying a missing declaration until the expiration of the appeal period, such that the Notice does not actually require filing the SME declaration at the latest when paying the appeal fee, as argued by the appellant.
• “The appellant's attempt to convert the EPO's correct response to the appellant's mistake into improper conduct, on the basis of certain provisions of the Notice (points 3 and 4) taken out of their context (point 11), must fail, regardless of the doubts as to their legal basis.
• Note that this whole analysis is about a debit order in the 'Remarks Tab', which is in any case excluded in the ADA in force as of 01.10.2019.

• The Board refuses the request for re-establishment. The representative had signed the Form 1038 himself (at least his signature is placed on it) and had made a mistake. Excessive workload (200 billable hours in one month; the attorney works at the Munich branch of a large USA patent firm; it is not said what he normally bills monthly) is no ground for RE. “Diligent representatives must make sure that the workload they accept is not excessive, i.e. does not go beyond their capacity to carry out the corresponding tasks properly. Otherwise they must bear the consequences of mistakes caused by an excessive workload.”

EPO T 1060/19 -  link

Summary of Facts and Submissions

I. The notice of appeal and the request for re-establishment of rights

[The following text has been taken verbatim from part A of the board's communication annexed to the summons to oral proceedings of 25 November 2019.]

1. The notice of appeal of 28 January 2019

With a letter of 28 January 2019 the applicant gave notice of appeal against the decision by the examining division of 28 November 2018 refusing European patent application 12 855 099.3. The penultimate paragraph reads as follows:

The appeal fee in the amount of EUR 1,880.00 shall be debited from our deposit account no. ... . In case of underpayment and/or missing fees, the EPO is also authorized to debit the legally prescribed amount from our deposit account no. ... .

The EPO form entitled "Letter accompanying subsequently filed items", in its "Fees" box 15-1, was filled out as follows:

"11e Appeal fee for an appeal filed by a natural person or an entity referred to in Rule 6(4) and (5) EPC", together with the total "Amount to be paid" of "EUR 1 880.00".

At the bottom of the letter, under the heading "Annotations", the appellant has added the following statement:

Authorization in case of underpayment and/or missing fees([Name representative]; 27.01.2019)
1. Remark(Annotate)
In case of underpayment and/or missing fees, the EPO is authorized to debit the legally prescribed amount from our deposit account no. ... .

T 2439/17 - No response from the respondent

Key points

• In this opposition appeal, the Board allows the appeal and rejects the opposition, noting that the respondent [opponent] had not reacted in any way during the appeal.
• “Die Beschwerdegegnerin hat im Beschwerdeverfahren weder Eingaben gemacht noch Anträge gestellt.”
• As a comment, the online file does not even show an acknowledgement receipt that the respondent had received the Statement of grounds, which was the only document send to the respondent during the entire course of the appeal (besides the communication about the appeal number). This is quite surprising to me, in view of R7/09 (the first successful petition for review).
• I'm surprised that the decision does not state that it was checked in any way that the respondent was aware of the appeal proceedings.
• update 26.05.2020:  the online file now shows a letter dated 20.05.2020 about a missing advice of delivery from the opponent. 
• The decision is also interesting in that the opponent was a shell company (a Hong Kong Limited, founded by a law firm and a ‘company service provider’. This does not affect the admissibility of the opposition. The extract from the Chamber of Commerce proving the existence of the Limited is enough).

EPO T 2439/17 -  link

Sachverhalt und Anträge

VI. [...] Die Beschwerdegegnerin hat im Beschwerdeverfahren weder Eingaben gemacht noch Anträge gestalt. 

Entscheidungsgründe

2. Die Beschwerde ist zulässig.


3. Zulässigkeit des Einspruchs (Regel 77(2) EPÜ)


Die Beschwerdeführerin hat die Zulässigkeit des Einspruchs bestritten. Die Existenz der Einsprechenden als juristische Person sei nicht nachgewiesen. Als Belege wurden von der Patentinhaberin im Einspruchsverfahren D12 und von der Einsprechenden D13 vorgelegt. Eine Nichtexistenz der Einsprechenden hätte nach Regel 77(2) EPÜ eine Nichtzulässigkeit des Einspruchs zur Folge.


Die Einspruchsabteilung kam zu dem Schluss, dass die Voraussetzungen der Identität der Einsprechenden unter Regel 76(2) i.V.m. Regel 41(2)(c) EPÜ erfüllt sind. Der Registerauszug D13 belege die Existenz der Firma. Sie stellte daher keine Mängel unter Regel 77(2) EPÜ fest und ließ den Einspruch zu.


Die Beschwerdeführerin hat im Beschwerdeverfahren keine weiteren Beweise vorgelegt, sondern argumentiert, die Einsprechende sei unbekannt, in keiner Weise geschäftlich aktiv und ihre Stellung als juristische Person nach Hong Konger Recht sei nicht belegt. Die Kammer kann dem nicht folgen. Der Registerauszug D13 belegt die Existenz der Firma. Die Beschwerdeführerin hat dies nicht glaubhaft anzweifeln können. Weder Bekanntheit noch nachweisliche (hier: im Internet) geschäftliche Aktivität sind im EPÜ geforderte Voraussetzungen für die Erlangung der Einsprechendenstellung.


Die Kammer sieht daher keine Veranlassung, in diesem Punkt von der Entscheidung der Einspruchsabteilung abzuweichen.


Hauptantrag: Patent wie erteilt


[...]

Entscheidungsformel

Aus diesen Gründen wird entschieden:

Die angefochtene Entscheidung wird aufgehoben.

Der Einspruch wird zurückgewiesen.

T 1959/15 - Continue opposition after lapse

Key points

• The Board continues the opposition appeal proceedings upon request of the appellant-opponent after the lapse of the patent. 
• “Having regard to the legitimate interest of the appellant-opponents in attempting to reverse the decision of the opposition division rejecting the opposition and to the circumstance that the board's decision on the patent has an ex tunc effect under Article 68 EPC, the board, exercising its discretion under Rule 84(1) EPC, decided to continue the appeal proceedings.”
• I note, favourably, that this reasoning is quite generic and does not refer to any particular circumstances of the case. It also implicitly recognizes that revocation is ex tunc unlike lapse of the patent, so that the opponent can very well 'gain' something by the continuation of the opposition procedure. Indeed the patent was revoked in this case.
• See also my comments on T 598/98.

EPO T 1959/15 -  link

Reasons for the Decision

1. The appeal is admissible.

2. The European patent in suit has lapsed for all the designated contracting states. Under Rule 84(1) EPC, which is applied mutatis mutandis in opposition appeal proceedings pursuant to Rule 100(1) EPC, the opposition appeal proceedings may be continued at the request of the appellant-opponent filed within two months of a communication from the board informing it of the lapse.

In the reply to the communication of the board informing them of the lapse, the appellant-opponents requested, within the set time limit of two months, continuation of the appeal proceedings and confirmed their requests that the decision under appeal be set aside and that the patent in suit be revoked.
Having regard to the legitimate interest of the appellant-opponents in attempting to reverse the decision of the opposition division rejecting the opposition and to the circumstance that the board's decision on the patent has an ex tunc effect under Article 68 EPC, the board, exercising its discretion under Rule 84(1) EPC, decided to continue the appeal proceedings.


[...]

Order

For these reasons it is decided that:

1. The appealed decision is set aside.

2. The patent is revoked.

T 0605/17 - Losing attacks upon appealing

Key points

• In this opposition appeal, the opponent appeals and does not maintain all attacks that it had presented before the OD with the Statement of grounds. Later in the appeal procedure, it again takes up these attacks.  “Sie [the opponent] argumentierte, dass diese Einwände zugelassen werden sollten, weil sie nur auf bereits aus dem Einspruchsverfahren bekannte Einwände zurückgreifen wolle.”

• The Board does not admit them.
• “Nachdem das Beschwerdeverfahren ein vom Einspruchsverfahren getrenntes Überprüfungsverfahren ist, hätten diese Einwände gemäß Artikel 12 (2) VOBK 2020 spätestens mit der Beschwerdeerwiderung erhoben werden müssen. Weil sie auch nicht durch eine neue Verfahrenssituation veranlasst sind, handelt es sich um verspätet vorgebrachte Einwände, die eine Änderung des Vorbringens der Beschwerdeführerin 2 im Sinne von Artikel 13 VOBK 2020 darstellen.”

EPO T 0605/17 -  link





2. Verspätet vorgebrachte Einwände

2.1 Während der mündlichen Verhandlung erklärte die Beschwerdeführerin 2, sie wolle weitere Einwände in Bezug auf die Neuheit (ausgehend von Dokumenten D2 und D3) und erfinderische Tätigkeit gegen den Hauptantrag erheben. Sie argumentierte, dass diese Einwände zugelassen werden sollten, weil sie nur auf bereits aus dem Einspruchsverfahren bekannte Einwände zurückgreifen wolle. Zudem verwies sie auf ihr Schreiben vom 7. Januar 2020, in dem sie sich das Recht vorbehalten hatte, weitere Neuheitsangriffe aus dem Einspruchsverfahren vorzubringen (siehe Seite 3, 2.1).

2.2 Neuheitseinwände gegenüber dem Hauptantrag ausgehend von D2 oder D3 sowie Einwände in Bezug auf erfinderische Tätigkeit waren bislang nicht Gegenstand des Vorbringens der Beschwerdeführerin 2. Sie hatte als Beschwerdegegnerin im gesamten schriftlichen Verfahren in Bezug auf den Hauptantrag lediglich zur Neuheit gegenüber D6 vorgetragen, aber keinerlei weitere Einwände geltend gemacht. Auch im Schreiben vom 7. Januar 2020 wurden keine konkreten Einwände erhoben - ein allgemeiner Hinweis, dass sie sich das Recht vorbehalte weitere Einwände geltend zu machen, kann nicht als ein substantiierter Einwand betrachtet werden. Folglich gelten diese Einwände als erst während der mündlichen Verhandlung erhoben.

2.3 Nachdem das Beschwerdeverfahren ein vom Einspruchsverfahren getrenntes Überprüfungsverfahren ist, hätten diese Einwände gemäß Artikel 12 (2) VOBK 2020 spätestens mit der Beschwerdeerwiderung erhoben werden müssen. Weil sie auch nicht durch eine neue Verfahrenssituation veranlasst sind, handelt es sich um verspätet vorgebrachte Einwände, die eine Änderung des Vorbringens der Beschwerdeführerin 2 im Sinne von Artikel 13 VOBK 2020 darstellen.

2.4 Da diese Änderung erst nach Zustellung der Ladung zur mündlichen Verhandlung, die noch vor dem Inkrafttreten der VOBK 2020 erging, vorgebracht wurde, unterliegt die Zulassung der verspätet vorgebrachten Einwände gemäß Artikel 25 (3) VOBK 2020 den Bestimmungen des Artikels 13 (3) VOBK 2007. Dieser sieht vor, dass Änderungen des Vorbringens nur dann zugelassen werden sollen, wenn sie keine Fragen aufwerfen, deren Behandlung der Kammer oder der anderen Verfahrensbeteiligten ohne Verlegung der mündlichen Verhandlung zuzumuten sind.

2.5 Weil die Beschwerdeführerin 2 diese Einwände erst in der mündlichen Verhandlung erhoben hat, blieben die Beschwerdeführerin 1 und die Kammer trotz des oben erwähnten Schreibens der Beschwerdeführerin 2 bis zum Tag der mündlichen Verhandlung im Ungewissen, ob und welche Einwände erhoben werden würden und aufgrund welcher Tatsachen und Beweismittel dies geschehen könnte. Ihre Behandlung in diesem extrem späten Verfahrensstadium war der Kammer und der Beschwerdeführerin 1 ohne Vertagung der mündlichen Verhandlung daher nicht zuzumuten.

2.6 Die Kammer hat daher entschieden, die verspäteten Einwände nicht ins Verfahren zuzulassen.

Entscheidungsformel

Aus diesen Gründen wird entschieden:

1. Die angefochtene Entscheidung wird aufgehoben.

2. Das Patent wird aufrechterhalten wie erteilt.

T 0919/17 - No need to put attacks in Statement of grounds

Key points

• In this opposition appeal, the patentee filed 6 auxiliary requests 42 days before the oral proceedings before the OD [with a  letter explaining why the AR's are novel and inventive]. The OD considers the patent as granted to be allowable; the AR's are not discussed during the oral proceedings. The opponent appeals and does not comment on the AR's in the Statement of grounds. The opponent submits attacks against the AR's 1 month before the oral proceedings before the Board.
• The Board admits the attacks. The Board: “Hence, [in the first instance procedure] the opponent (now appellant) had only a short time to react to the newly filed requests and was under no obligation to file its objections in writing before the oral proceedings [before the OD]. Given that the auxiliary requests were not discussed during the oral proceedings before the opposition division, the opponent had no opportunity to raise the objections orally. 
• It is correct that the appellant [=opponent] did not file any objections against the auxiliary requests together with its grounds of appeal. However, it was under no obligation to do so. Since the opposition had been rejected, the appellant correctly argued in its grounds of appeal as to why the decision of the opposition division to reject the opposition was wrong. At that point in time the appellant could not have foreseen which lines of defence the patent proprietor would adopt during the appeal proceedings and there was no reason to assume that it would file the same auxiliary requests as during opposition proceedings.
• “In the present case the objections rely on a limited number of documents which had already been filed together with the grounds of appeal, and are based on lines of argument similar to those submitted together with the grounds of appeal. ”

T 0919/17 - link

Reasons for the Decision

1. Admittance of Late Filed Objections of the Appellant

The respondent requested that the appellant's objections against the auxiliary requests, which were submitted with letter dated 17**(th) January 2020, be not admitted into the proceedings. It argued that, since the requests were based on granted claims and since the same requests had already been filed during the opposition proceedings, the objections should have been raised already during those proceedings and at the latest together with the grounds of appeal.

The auxiliary requests were filed during the opposition proceedings on 26**(th) October 2016, and thus only 42 days before the oral proceedings which took place on 6**(th) December 2016. Hence, the opponent (now appellant) had only a short time to react to the newly filed requests and was under no obligation to file its objections in writing before the oral proceedings. Given that the auxiliary requests were not discussed during the oral proceedings before the opposition division, the opponent had no opportunity to raise the objections orally.

It is correct that the appellant did not file any objections against the auxiliary requests together with its grounds of appeal. However, it was under no obligation to do so. Since the opposition had been rejected, the appellant correctly argued in its grounds of appeal as to why the decision of the opposition division to reject the opposition was wrong. At that point in time the appellant could not have foreseen which lines of defence the patent proprietor would adopt during the appeal proceedings and there was no reason to assume that it would file the same auxiliary requests as during opposition proceedings.

Since these objections have been filed after the grounds of appeal, their admission into the proceedings has to be considered under Article 13 RPBA 2020. Since the parties were notified of the summons to oral proceedings before the entry into force of the RPBA 2020, the transitional provisions under Article 25(3) RPBA apply, according to which Article 13(2) RPBA 2020 shall not apply. Instead, Article 13 RPBA 2007 shall continue to apply.

Therefore, when deciding about the admittance of the objections against the auxiliary requests, the Board's discretion shall be exercised in view of the complexity of the new subject-matter and considering whether they raise issues which the Board and the other party cannot reasonably be expected to deal with without adjournment of the oral proceedings.

In the present case the objections rely on a limited number of documents which had already been filed together with the grounds of appeal, and are based on lines of argument similar to those submitted together with the grounds of appeal. Therefore, it is not considered to be an undue burden for the respondent or for the Board to deal with them in the one month between their submission and the oral proceedings, i.e. without any adjournment of the oral proceedings.

Therefore, the objections against the auxiliary requests filed with letter dated 17**(th) January 2020 are admitted into the proceedings.

T 1323/17 - Losing auxiliary requests upon appealing

Key points

• In this opposition appeal, the OD had considered the claims as granted allowable and had rejected the opposition. The Board considers the claims as granted to lack inventive step.
• The Board does not admit the 16 Auxiliary Requests which corresponded to the auxiliary requests already pending before the OD (but which the OD did not consider and didn't need to consider).
• “ In the absence of any dispute that those auxiliary requests correspond to those filed before the opposition division, the question of whether they should be taken into account by the Board is therefore to be answered having regard to the provision of the Rules of Procedure of the Boards of Appeal, in particular Article 12(4) RPBA 2007 in combination with Article 12(2) RPBA 2007, the latter stipulating that the statement of grounds of appeal and the reply must contain a party's complete case.
  However, neither the [Statement of Reply of Patentee as Respondent in appeal] nor the [later] letter [of Patentee] specify expressly how the amendments introduced are meant to overcome the various objections raised in respect of the main request. Only general statements (e.g. "the process claims are further distinguished from the processes of the prior art" or "This request more narrowly defines the invention in view of the preferred embodiments") devoid of clear analysis are present with the consequence that the first to sixteenth auxiliary requests lack substantiation.
  Although the lack of substantiation of the auxiliary requests was communicated to the respondent in the communication of the Board dated 12 February 2020, no additional submissions were made in this respect. Under these circumstances the first to sixteenth auxiliary requests are held inadmissible under Article 12(4) RPBA 2007 as they do not meet the requirement of Article 12(2) RPBA 2007 (Case Law, supra, V.A.4.12.5).”
• The Board also makes an interesting remark about inventive step, in particular about the technical effect: if the closest prior art and the example in the patent differ in numerous features, but only one of those features is recited in the claim at issue, it must be credible that this singe distinguishing feature provides the technical effect also in the context of the closest prior art. E.g., the claim is a composition with components A, B, and C, and the closest prior art is a composition with components A, B, D, and E (wherein A and B are used in much smaller amounts than in the examples of the patent), then it must be credible that adding C would give the technical effect also in the material of the CPA with small amounts of A and B and in the presence of D and E).
• The Board: “However, considering that the improvement which is sought to be demonstrated by the comparative test is one which is alleged to be achieved over the closest prior art, what counts in the Board's opinion is not only whether a causal link between a distinguishing feature over the closest prior art and an effect is demonstrated in the framework of a comparative test submitted by the applicant or patentee, but also whether the variant of the closest prior art selected as reference (or comparative) example for the comparative test is representative of the closest prior art in the sense that the effect [that was actually] shown to be caused by the distinguishing feature in the context of the comparative test can be expected to take [also] place also in the framework of the closest prior art despite the existence of differences vis-à-vis the reference example of the comparative test.”. 

EPO T 1323/17 -  link





6.3 The main request is therefore not allowable, as the subject-matter of its claim 1 does not involve an inventive step.

Auxiliary requests

7. The respondent indicated in the reply to the statement of grounds of appeal of the opponent submitted with letter of 21 December 2017 that the first to sixteenth auxiliary requests addressed in this reply corresponded to those filed before the opposition division. Those auxiliary requests which however had not been enclosed with the reply were filed with letter of 3 May 2018. In the absence of any dispute that those auxiliary requests correspond to those filed before the opposition division, the question of whether they should be taken into account by the Board is therefore to be answered having regard to the provision of the Rules of Procedure of the Boards of Appeal, in particular Article 12(4) RPBA 2007 in combination with Article 12(2) RPBA 2007, the latter stipulating that the statement of grounds of appeal and the reply must contain a party's complete case. However, neither the reply of the respondent to the statement setting out the grounds of appeal nor the letter of 3 May 2018 specify expressly how the amendments introduced are meant to overcome the various objections raised in respect of the main request. Only general statements (e.g. "the process claims are further distinguished from the processes of the prior art" or "This request more narrowly defines the invention in view of the preferred embodiments") devoid of clear analysis are present with the consequence that the first to sixteenth auxiliary requests lack substantiation. Although the lack of substantiation of the auxiliary requests was communicated to the respondent in the communication of the Board dated 12 February 2020, no additional submissions were made in this respect. Under these circumstances the first to sixteenth auxiliary requests are held inadmissible under Article 12(4) RPBA 2007 as they do not meet the requirement of Article 12(2) RPBA 2007 (Case Law, supra, V.A.4.12.5).

Correction of the minutes

8. Apart from the question whether the request to consider the request for correction of the minutes of the oral proceedings before the opposition division as formulated by the appellant can be considered as a proper request to correct the minutes, it is established case law that the opposition division has sole competence for such a correction (Case Law, supra, III.C.7.10.3). The Board is therefore not empowered to deal with that request.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

T 1450/16 - We decide what the CPA is

Key points

• This examination appeal is about inventive step. Claim 1 is directed to an earphone. The Examining Division considered D1 to be the closest prior art.
• The applicant: “Given that earphones and hearing aids were very different apparatuses, document Dl, being directed to a hearing aid of 1968, was an unrealistic starting point for an application directed to an earphone for sound reproduction.”
• “The board is not persuaded by these arguments for the following reasons.”
• “This board [3.5.03] follows the conclusions drawn, for example, in T 422/93-3.3.01 (see Headnote 1)  [i.e. T 422/93, taken by Board 3.3.01] and T 1140/09-3.4.03 (see Reasons 4.4) that the relevant skilled person is to be defined starting from the objective technical problem. As a consequence, in the board's view, the person skilled in the art within the meaning of Article 56 EPC enters the stage only when the objective technical problem has already been formulated.” (emphasis added)
• “Thus, the skilled person under Article 56 EPC is the person qualified to solve the established objective technical problem [] and not necessarily the person versed in the field of the underlying application or in the field of the selected closest prior art [].
  In conclusion, this board considers that it must be the respective deciding body [board or first instance division] who selects the closest prior art rather than the skilled person mentioned in Article 56 EPC [].”
• I'm not entirely sure how the Board here takes into account that the skilled person is merely notional. The phrase that the skilled person 'decides' something is of course merely a figure of speech; it's the actual humans taking the decision (e.g. the Board members Bengi-Ayürek, Peirs and Romandini in this case) that decide.  
• “The closest prior art D1 discloses the following limiting features of claim 1 of the main request (as labelled by the board): (a) an earphone (page 2, lines 7-9: "hearing-aid") for sound reproduction”
• I suppose that if you interpret the claim feature 'earphone' to encompass 'hearing-aid', the applicant's argument that these are different things indeed does not work.
• The Board also writes in another paragraph (r.2.1.6): “This is all the more so since "hearing aids" and "earphones" are similar in structure” (emphasis added). How a  prior art document mentioning 'hearing-aid' therefore takes away the novelty of the claim feature 'earphone', if hearing aids and earphones are (not identical but only) 'similar' in structure is a question I must leave as an exercise for the reader.
• The Board: “It is generally accepted that the closest prior art is that prior art which, within a single reference, discloses the combination of features which constitutes the most promising starting point for a development leading to the invention.
  One of the established criteria for selecting that starting point is that the closest prior art should typically relate to the same or at least a similar purpose as that of the claimed invention (see e.g. T 1841/11-3.4.03, [Headnote]).”
• I don't think it's a new observation, but saying that a document is the ‘closest prior art’ because it's the ‘most promising starting point’ begs the question how the Board knows that the document is the most promising starting point. 

EPO  T 1450/16 -  link

EPO Headnote
In the application of the problem-solution approach for the assessment of inventive step, the person skilled in the art within the meaning of Article 56 EPC enters the stage only when the objective technical problem has been formulated in view of the selected "closest prior art".
Only then can the notional skilled person's relevant technical field and its extent be appropriately defined. Therefore, it cannot be the "skilled person" who selects the closest prior art in the first step of the problem-solution approach. Rather, this selection is to be made by the relevant deciding body, on the basis of the established criteria, in order to avoid any hindsight analysis (see point 2.1.4 of the Reasons).


Reasons for the Decision

2. Main request: claim 1 - inventive step

The subject-matter of present claim 1 does not involve an inventive step, for the reasons set out below.

2.1 Selection of closest prior art

2.1.1 The board holds that, of the prior art to hand, document D1 constitutes the "closest prior art", the reasons being as follows.

2.1.2 The appellant contended that D1 was not the closest prior art on several grounds. It was evident from paragraph [05] of the description as originally filed, in particular from the formulation "[t]o reduce bulkiness and weight, in-the-ear speakers or earphones have been designed to replace headphones", that the claim, being directed to an "earphone for sound reproduction", was in no way intended to cover a "hearing aid". Given that earphones and hearing aids were very different apparatuses, document Dl, being directed to a hearing aid of 1968, was an unrealistic starting point for an application directed to an earphone for sound reproduction. In that context, the appellant named several selection criteria developed in the jurisprudence of the boards of appeal for choosing a particular document as the "closest prior art":

T 2242/17 - Dependent claim 12 in particular

Key points

• The Board does not admit an auxiliary request filed during oral proceedings in this opposition appeal.
• “The Board sees no reason, for example a change in the case, why such a request was not filed in reaction to the communication under Article 15(1) RPBA shortly after its receipt  [five months before the oral proceedings], which would have allowed the respondent [opponent] and the board to prepare for this new request. It also cannot be argued that such a request was to be expected, since the appellant [patentee] did not put the related arguments forward until the oral proceedings. In addition, the patent as granted contains several dependent claims and there was no indication that there was an intention to limit the claims on file using the features of claim 12 as granted in particular.”
• Claim 12 related to the particle size
• “This request would require a new discussion regarding the issue of particle size vs particle size distribution [], which neither the board nor the respondent could really have expected. In view of the very late submission and the unresolved questions that would have had to be discussed for the first time, the board decided not to admit the request into the proceedings (Article 13 (1),(3) RPBA 2007).”
• Hence, this decision appears to suggest that the fact that granted claim 12 specified a particle size feature, does not mean that the opponent should have expected a discussion about that feature at the oral proceedings. At least, the Board's decision to not admit the requests appears to be based not solely on the feature taken from the description. 

EPO T 2242/17 - link

Fifth auxiliary request

3. Article 13(1),(3) RPBA

This request was filed during oral proceedings before the board after the previous requests had been discussed and the board had given its opinion on said requests with respect to novelty and inventive step. It was thus filed at the latest possible moment.

In the communication under Article 15(1) RPBA, which was issued approximately five months before the oral proceedings, the board had already given its preliminary opinion on novelty and inventive step, thereby granting the appellant's request to also deal with said grounds of opposition. At that point in time, the appellant was aware that the requests then on file were most likely to be held not allowable.

The appellant based its main argument with respect to the problem to be solved on the weight percentage of the calcium hydroxide for the first time during oral proceedings. Only after it was informed that said arguments were not convincing for the board did it file the fifth auxiliary request.

This request is a combination of claims 1 and 12 as granted in combination with a feature ("lowering the temperature") originating from the description. The Board sees no reason, for example a change in the case, why such a request was not filed in reaction to the communication under Article 15(1) RPBA shortly after its receipt, which would have allowed the respondent and the board to prepare for this new request. It also cannot be argued that such a request was to be expected, since the appellant did not put the related arguments forward until the oral proceedings. In addition, the patent as granted contains several dependent claims and there was no indication that there was an intention to limit the claims on file using the features of claim 12 as granted in particular.

This request would require a new discussion regarding the issue of particle size vs particle size distribution (see point 1.5 above), which neither the board nor the respondent could really have expected.

In view of the very late submission and the unresolved questions that would have had to be discussed for the first time, the board decided not to admit the request into the proceedings (Article 13 (1),(3) RPBA 2007).

Order

For these reasons it is decided that:

The appeal is dismissed.

G 3/19 - Plants by biological process not patentable

" The Enlarged Board of Appeal of the European Patent Office adopted a dynamic interpretation of the exception to patentability under Article 53(b) of the European Patent Convention (EPC) and held that the non-patentability of essentially biological processes for the production of plants or animals also extends to plant or animal products that are exclusively obtained by means of an essentially biological process." 

" In order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the Enlarged Board ruled that the new interpretation of Article 53(b) EPC given in G 3/19 had no retroactive effect on European patents containing such claims which were granted before 1 July 2017, or on pending European patent applications seeking protection for such claims which were filed before that date." 

EPO - News item

Decision:
https://www.epo.org/law-practice/case-law-appeals/recent/g190003ex1.html




The EPO President has now also reacted: ‘I strongly welcome the opinion of the Enlarged Board of Appeal. It will bring greater legal certainty for patent applicants, and the general public, on what is a sensitive and complex issue that has legal, societal and economic implications.'

"The Office will act in accordance with the clarifications provided in the Enlarged Board's opinion and implement them in its examination practice in close consultation with stakeholders."
https://www.epo.org/news-events/news/2020/20200514a.html

T 0394/15 - Combining claims as granted

Key points

• If patentee combines  two claims as granted one month before oral proceedings before the OD, do new documents filed by opponent with its statement of grounds in response to the claim amendment fall under the 'should have been filed' rule of Art.12(4) RPBA 2007 / Art.12(6)(s.2)(i) RPBA 2020?
• The Board: “The filing of D12 to D19 [with the Statement of grounds] to support objections against this request is considered to be a justified and timely reaction to the proprietor's filing of the request at that late stage of the first instance proceedings, even if claim 1 is a combination of granted claims 1 and 7, as the proprietor argued.”

EPO T 0394/15 -  link


3. Admission of documents D12 to D19

Since 1 January 2020 the revised RPBA ("RPBA 2020") apply (OJ 2019, A63). By virtue of the transitional provisions of Article 25(2) RPBA 2020, for the present case Article 12(4) RPBA 2007 applies.

D12 to D19 were submitted by the opponent in relation to the case under appeal at the earliest possible stage of the appeal proceedings, i.e. with the statement of grounds, in compliance with Article 12(3) RPBA 2020. Under Article 12(4) RPBA 2007 these documents are to be taken into account, although the Board retains the power to hold them inadmissible if they could have been presented in the first instance proceedings.

The Board notes that the request allowed by the Opposition Division was filed for the first time one month before the oral proceedings at first instance. The filing of D12 to D19 to support objections against this request is considered to be a justified and timely reaction to the proprietor's filing of the request at that late stage of the first instance proceedings, even if claim 1 is a combination of granted claims 1 and 7, as the proprietor argued . Under these circumstances the Board, in exercising its discretion under Article 12(4) RPBA 2007, sees no need to consider the prima facie relevance of D12 to D19 and admits these documents into the appeal proceedings.

T 1430/15 - Perpetual motion devices and the GL

Key points

• This examination appeal is directed to an 'energy transducer' which is specified in claim 1 to be able to ‘generate useful work’. According to the Examiner (para. 1.1 of this Communication), it is a perpetual motion device. 
• “Claim 1 is directed to an energy transducer [...], which is able to generate useful work by lowering the internal energy of the material. Since the claimed transducer is limited to exhibiting this effect, the disclosure has to enable a skilled person to achieve it in order to meet the requirements of Article 83 EPC.”
• The Board then analyses the application as filed and the physics involved.
• “To summarise, the Board is not convinced that the model predictions [submitted by the applicant] are correct, there is no disclosure in the application as filed concerning the transduction of internal energy to useful work, merely a hypothesis to this effect, and there is no experimental evidence that the transduction from internal energy, as hypothesised in the application as filed, will necessarily occur when the claim prescriptions regarding the application of forces and choice of material are followed. For these reasons, the application in the version of the main request does not meet the requirements of Article 83 EPC.”
• This analysis is perhaps not very surprising. However, it's interesting to compare this case with the  - in my view rather cryptic - remark in the GL G-III.1 that “An objection could arise under Art. 57 only in so far as the claim specifies the intended function or purpose of the invention, but if, say, a perpetual motion machine is claimed merely as an article having a particular specified construction, then an objection is made under Art. 83”.
• I find this remark in the GL rather confusing. Say I have a claim directed to 'a stack of hexagonal copper plates and pentagonal gold plates' (i.e. merely as a device having this configuration) and the description says that it will generate net energy when exposed to some magnetic field. The skilled person can easily manufacture the stack of plates, still the rejection is under Art. 83 according to the cited GL passage. If on the other hand, the claim has additionally the functional feature ‘the stack is capable of generating net energy’, which is something the skilled person can not reduce to practice according to thermodynamics, the rejection is under Art.57, still according to the GL. The other way around would make much more sense to me (i.e. the impossible functional feature causes a problem under Article 83; merely specifying a structure of a device without plausible function give a problem under Art.57).
• T0541/96 explains that "An invention or an application for a patent for an alleged invention which would not comply with the generally accepted laws of physics would be incompatible with the requirements of Articles 57 and 83 because it cannot be used and therefore lacks industrial application. Also the description would be insufficient to the extent that the applicant would not be able to describe how it could be made to work." 
• GL F-III,3 state that: If the claims for such a machine are directed to its function, and not merely to its structure, an objection arises not only under Art. 83 but also under Art. 52(1) in that the invention is not "susceptible of industrial application". Implicitly, if the claims merely specify a structure, the objection is supposed to be under Art.83.
• In the auxiliary request, the functional feature was deleted. This is not accepted under Art.123(2), because “the application as filed consistently discloses that the transducer produces useful work by lowering the internal energy of a material”.

T 1430/15 -  link

Reasons for the Decision

1. The appeal is admissible.

2. Main request

2.1 The patent application does not meet the requirements of Article 83 EPC because it does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a skilled person.

2.2 Claim 1 is directed to an energy transducer containing a material with unequal cross coupling coefficients between first and second forces and corresponding energy conjugate physical properties, such as for example strain and magnetisation, which is able to generate useful work by lowering the internal energy of the material. Since the claimed transducer is limited to exhibiting this effect, the disclosure has to enable a skilled person to achieve it in order to meet the requirements of Article 83 EPC.

T 0700/15 - Claim amendments and the RPBA

Key points

• The Board does not admit the auxiliary requests of patentee filed after the Statement of grounds. The patentee raises the question of what exactly the legal basis is for holding amended claims inadmissible in appeal. 
• T 1914/12 held that Article 114(2) EPC does provide a legal basis for holding arguments inadmissible (with the result that arguments are now called 'facts' by the Boards). Article 114 EPC does not mention amended claims either. T 1914/12 also recalled that "The RPBA, although they could provide more detail on and help in interpreting the EPC, could not give the boards powers that the EPC did not" (CLBA V.A.4.10.1).
• “Weder unter Geltung der VOBK 2007 noch bei den Beratungen zur Neufassung der revidierten Fassung der VOBK 2020 ist zu irgendeinem Zeitpunkt in Frage gestellt worden, dass das nun in den Artikeln 12 und 13 VOBK 2020 geregelte Ermessen der Kammern bei der Zulassung von geänderten Patentansprüchen im Beschwerdeverfahren und somit auch die eindeutige und langjährige Rechtsprechung der Großen Beschwerdekammer und der Beschwerdekammern des EPA nach Artikel 23 VOBK in Widerspruch zu dem Geist und Ziel des Übereinkommens stehen würde.”
• “Dieses Ermessen [to hold arguments inadmissible] der Kammern steht daher nach Artikel 23 VOBK 2020 weder in Widerspruch zu Artikel 114(2) EPÜ noch besteht aus dem selben Grund eine rechtliche Grundlage dafür, im Umkehrschluss aus Artikel 114(2) EPÜ zu folgern, dass die dort nicht erwähnten, auf Änderung von Patentansprüchen gerichteten verspäteten Anträge jederzeit und ohne weiteres zuzulassen wären”.

• See also T 0754/16 where the Board said that  "Neither does Article 114(2) EPC provide a basis for disregarding these requests, since, firstly, it does not apply to late filed requests in the form of amended claims, but only to late filed facts and arguments (see Bühler in Singer/Stauder, Europäisches Patentübereinkommen, 7. Auflage 2016, Artikel 114, point 52). "
• The present Board: “Die Kammer stellt zunächst fest, dass die Verfahrensordnung der Beschwerdekammern ihre Rechtsgrundlage in Artikel 23(4) EPÜ i.V.m. Regel 12c(2) AOEPÜ hat. ”
• As a comment, I find it unclear why the Board refers to the procedure of amending the RPBA of Article 23(4) EPC. If Article 23(4) EPC provides a general competence to give the Boards a competence to hold arguments inadmissible, without further legal basis in the EPC being necessary,  then clearly contrary to T 1914/12  the RPBA can give new powers to the Boards "that the EPC did not". This seems remarkably similar to the question of whether Article 33(1)(c) EPC provides the Administrative Council with the competence to forbid plant-related inventions. If the procedure of Article 23 EPC provides the legal basis for putting anything in the RPBA that the competent body wishes (constrained only by Article 164(2) EPC), without any need for a further legal basis in the EPC, the same could apply for Article 33 EPC.
• Note that Article 123(1) EPC also applies to patents. I would say that Rule 79(1) corresponding to Rule 57 EPC 1973 (and Rule 100(1) EPC) could be relevant in view of T 0406/86 (as of yet cited in GL D-VI 4.2), in particular r.3.1.5. That decision did not rely on Article 114(2) for holding the late-filed claim amendments of patentee inadmissible. 

EPO T 0700/15 - link

XX. Mit Schriftsatz vom 8. Januar 2020 hat die Beschwerdeführerin beantragt, der Großen Beschwerdekammer folgende Fragen vorzulegen:

 "1. Ist Art. 12(2) VOBK derart auszulegen, dass die im letzten Teilsatz des 2. Satzes genannten Tatsachen, Argumente und Beweismittel auch Anträge auf Änderungen der Patentansprüche einschließen?

Falls nein, erfordert der in dem 1. Satz von Art. 12(2) genannte vollständige Sachvortrag eines Beteiligten zwingend die Stellung der Anträge auf Änderungen der Patentansprüche? 

2. Sind im Falle der Ermessensabhängigkeit gemäß Art. 13(1) von Anträgen auf Änderungen der Patentansprüche, die im Beschwerdeverfahren gestellt werden, diese Anträge in Ausübung des Ermessens zuzulassen, wenn zum Zeitpunkt der Antragstellung der Berichterstatter weder gemäß Art. 5 (3) noch gemäß Art. 5 (5) die sachliche Bearbeitung der Abfassung eines Bescheids oder des Entwurfs der Entscheidung aufgenommen hat? Ist die Zulassung dieser Anträge jedenfalls dann zu bejahen, wenn dem Beschwerdeführer kein anderer Beteiligter gegenübersteht?" 

Die Beschwerdeführerin hat zu den unter Ziffer 1. genannten Fragen einerseits auf den Unterschied im Wortlaut von Art. 12(2) und Art. 13(1), anderseits auf Art. 23 VOBK und die Anwendung der Verfahrensordnung im Hinblick auf Artikel 113(2) und 114(2) und Regel 76(1)c) und 116(1) des Übereinkommens verwiesen. Zu den unter Ziffer 2. genannten Fragen hat die Beschwerdeführerin vorgetragen, dass die zwischen der Einreichung der in Frage stehenden Hilfsanträge und der Mitteilung der Kammer liegende Zeitspanne weder dazu führte, dass dadurch eine Verzögerung des Verfahrens verursacht noch eine Verlegung der mündlichen Verhandlung nötig würde. Infolge der Rücknahme des Einspruchs sei die Einsprechende nicht mehr am Verfahren beteiligt, so dass ihr deshalb keine Gelegenheit zur Äußerung mehr gegeben werden müsste.

Entscheidungsgründe

Rücknahme des Einspruchs

1. Durch die Rücknahme ihres Einspruchs ist die Einsprechende/Beschwerdegegnerin in Bezug auf die Hauptsache, d. h. die materiell-rechtlichen Fragen betreffend Bestand und Umfang des Patentrechts, nicht mehr am Beschwerdeverfahren beteiligt (siehe T 789/89, ABl. EPA 1994, 482).

2. In einem solchen Fall hat die Kammer die Entscheidung der Einspruchsabteilung inhaltlich zu prüfen. Dabei können Beweismittel und Argumente, die von der Beschwerdegegnerin vor der Zurücknahme ihres Einspruchs vorgebracht worden sind, herangezogen werden (siehe T 629/90, ABl. EPA 1992, 654; T 46/10).

T 2398/16 - Deleting alternative from claim 1, unexpected shift

Key points

• Claim 1 of the Main Request specified two shapes for a hook, namely J-shaped and 'palm tree-shaped'. The Board in this opposition case considers the embodiment with the J-shaped hook to be obvious. The Patentee then files in oral proceedings a 'new main request' wherein the first alternative (J-shaped) is deleted from claim 1, leaving only the 'palm-tree shaped' embodiment. 
• The Board does not admit the request.
• “The auxiliary request deletes the alternative with J-shape overhanging in a single direction, thus limiting the claim to the palm tree-shaped hook. J-shape hooks [...] had always been the main focus of the opposition and of the following appeal proceedings to date. Nor was the palm tree shape [...] ever the sole subject of any request. The New Main Request therefore represents an unexpected shift of the subject of the debate. It is highly questionable whether either the Appellant-Opponent or the Board can fairly be expected to deal with this unexpected shift within the framework of the oral proceedings.”
• Moreover, the embodiment is prima facie not inventive.

EPO T 2398/16 - link

3. New Main Request filed in the oral proceedings before the Board

3.1 The New Main Request was filed at the oral proceedings before the Board, and amounts to an amendment to the Appellant-Proprietor's case in the sense of Article 13 of the Rules of Procedure of the boards of Appeal (RPBA) in the applicable version of 2007 pursuant Article 25(3) of the revised Rules of Procedure in effect from 1 January 2020. According to Art 13(3) RPBA 2007, any amendment sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the Board or the parties cannot reasonably be expected to deal with without an adjournment.

3.2 The approach consistently adopted by the boards when exercising their discretion in admitting an amendment filed at the very last stage during oral proceedings consists in identifying whether good reasons exist for filing the amendment so far into the proceedings - for example if it is occasioned by developments in the proceedings. Unless such a justification exists, amendment to a party's case will be admitted only if it does not extend the scope or framework of discussion as determined by the decision under appeal and the statement of the grounds of appeal, and is moreover clearly allowable, see Case Law of the boards of Appeal, 9th edition, 2019 (CLBA) V.A.4.5.1 b) and the case law cited therein.

3.3 The auxiliary request deletes the alternative with J-shape overhanging in a single direction, thus limiting the claim to the palm tree shaped hook. J shape hooks further supplemented by the additional parameter of the thickness had always been the main focus of the opposition and of the following appeal proceedings to date. Nor was the palm tree shape in combination with the same minimum base thickness as molded ever the sole subject of any request. The New Main Request therefore represents an unexpected shift of the subject of the debate. It is highly questionable whether either the Appellant-Opponent or the Board can fairly be expected to deal with this unexpected shift within the framework of the oral proceedings.

3.4 Moreover, the Board observes that D1 at column 15, lines 3-6, mentions palm tree hooks as a possible application of its teaching. Consequently, it is by no means immediately apparent that this amendment overcomes the lack of inventive step as held above. Thus, the New Main Request is not clearly allowable.

4. For these reasons, the Board decided to use its discretion under Articles 13(1) and (3) RPBA 2007 with Article 114 (2) EPC not to admit this request in the proceedings.

5. As the claim 1 of the Main Request fails to meet the requirements of Art.52(1) and 56 EPC and the New Main Request filed at the oral proceedings before the Board is not admitted, the patent must be revoked pursuant to Article 101(3)(b) EPC.

T 0023/17 - Art.13(1) RPBA 2020 retroactive, but

Key points

• In this opposition appeal, the Board notes that Art. 13(1) RPBA 2020 is to be applied to submissions involving amendments of a party's appeal case that were made already before 01.01.2020.
• In this case, the opponent had filed new documents with letter of 08.02.2019, stating that they were filed in response to the comparative results included in the Statement of response of the patentee as respondent. The Board considers this to be a sufficient justification for the late filing, as required by Art.13(1), first sentence, RPBA 2020 (or possibly a sufficient indication of reasons for filing it, as required by Art.13(1)(s.3)), taking into account that the letter was filed at a time that Art. 13(1) RPBA 2020 was not yet in force and its text was not even public.
• “Die Beschwerdeführerin hat zur Begründung für die späte Einreichung der Dokumente lediglich angegeben, dass diese in Reaktion auf die von der Beschwerdeführerin in ihrer Beschwerdeerwiderung (Seite 4 oben) vorgelegten Versuchsdaten erfolge. Die Kammer hält diese Begründung im vorliegenden Fall für ausreichend und eine Forderung nach der Angabe weiterer rechtfertigender Gründe, wie sie in Artikel 13(1) VOBK vorgeschrieben ist, unter den gegebenen Umständen für nicht gerechtfertigt. Denn obwohl nach Artikel 25(1) VOBK 2020 die revidierte Fassung des Artikels 13(1) VOBK anzuwenden ist, ist zu berücksichtigen, dass diese Vorschrift tatsächlich zum Zeitpunkt der Einreichung der D9 und D10 noch nicht in Kraft oder gar in der jetzigen Fassung bekannt war und somit von der Beschwerdeführerin noch nicht beachtet werden konnte.“
• Moreover, Patentee’s inadmissibility objection was also late filed. “Da im übrigen die Nichtzulassung der D9 und D10 von der Beschwerdegegnerin erstmals in der mündlichen Verhandlung beantragt wurde, bestand auch insoweit nach der Einreichung dieser Dokumente für die Beschwerdeführerin kein Anlass, rechtfertigende Gründe für die späte Einreichung vorzutragen.”

EPO T 0023/17 -  link

Entscheidungsgründe

1. Zulassung der Dokument D9 und D10

1.1 Anzuwendendes Recht

1.1.1 Die Kammer hat die von der Beschwerdeführerin mit Schreiben vom 8. Februar 2019 eingereichten Dokumente D9 und D10 durch die in der mündlichen Verhandlung am 30. Januar 2020 verkündete Entscheidung in das Verfahren zugelassen. Die Einreichung der Dokumente erfolgte damit nach Einreichung der Beschwerdebegründung am 3. März 2017 und vor der Zustellung der Ladung vom 1. Juli 2019 zur mündlichen Verhandlung vor der Kammer.