T 0437/17 - Superfluous, unnecessary and misleading

Key points

• In this opposition appeal, oral proceedings took place on 23.06.2020 and the patent was revoked, despite the patentee having requested postponement because of Covid-19. 
• Furthermore, the ‘essentially test’ was discussed by the Board. The Board concludes that it “[is] superfluous, unnecessary and misleading and shall not be applied”.
• The postponement had been requested on the ground that "considering the ongoing COVID-19 pandemic and continued health risk associated with travel to and from the Boards of Appeal".
• The Board: “The Board closely followed the development of the Coronavirus pandemic in particular in Germany and in the other EPC Contracting States and was thus aware that, despite of singular incidences of infection, the overall situation in particular in Germany has eased in the course of June 2020 to allow a lift of previous travel restrictions within that country. Against this background the Board did not consider the rather general and unspecific reasons given by the respondent as serious reasons justifying the fixing of a new date in the meaning of Article 15(2) RPBA 2020. With a communication of 2 July 2020, the Board, noting that the respondent was effectively represented by a professional representative established in Berlin (Germany) and in view of no apparent travel restrictions that would hinder the respondent to attend the oral proceedings at the premises of the Boards of Appeal, did not grant the respondent's request for postponement of the oral proceedings and maintained the oral proceedings for the scheduled date.”
• “On 8 July 2020 the oral proceedings took place in the presence of the appellant, who travelled from Padova (Italy), but in the absence of the respondent in accordance with Article 15(3) RPBA 2020 and Rule 115(2) EPC. As a consequence, the respondent was treated as relying on their written case.”

Essentiality test

• The patentee had submitted that  the removal of the feature "of a bottom" does not violate Article 123(2) EPC, arguing that the 3 condiditions of the "so-called essentiality or three-point test" were met. 
• “The Board notes that these conditions above correspond to the so-called essentiality or three-point test set out in the decision T 331/87 []which is also reflected in the Guidelines for Examination H-V, 3.1 - November 2019 version. The Board, in line with several decisions such as T 1472/15, point 2.3 of the reasons, and T 1852/13, point 2.2.3 of the reasons [], holds that the criteria (i)-(iii) listed above are to be seen as condiciones sine quibus non, which means that fulfilment of these criteria is a necessary requirement but not a sufficient one for the compliance of Article 123(2) EPC. 
• In the present case, the Board is convinced that the consequence of the application of the essentiality test has been misinterpreted by the opposition division, by considering that the removal of the feature meeting the criteria (i) to (iii) of the test, inevitably results in the compliance of Article 123(2) EPC.
• It must be further underlined, that this test cannot in any case replace of the "gold standard" and should not lead to another result than when applying the "gold standard" directly.
• Consequently, the Board concludes that in cases where it can be established whether an amendment is made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the content of the application as originally filed, i.e. whether the amendment meets the "gold standard", the so-called three point essentiality test set out by decision T 331/87 is superfluous, unnecessary and misleading and shall not be applied (see Case Law of the Boards of Appeal, supra, II.E.1.4.2 and II.E.1.4.4.c), in particular T 2599/12, point 3.2 of the reasons [].
• In the present case, as it has been discussed in point 3.2 above, the result after applying the "gold standard" is that the subject-matter of claim 1 of the patent as granted extends beyond the original disclosure, so that the requirements of Article 123(2) EPC are not met.”
• Emphasis added.

EPO T 0437/17 -   link