J 0005/23 - Interpreting the EPC in the Rules, under the VCLT

Key points

•  What is a signature in the sense of Art.72 EPC? And who decides?
• The focus of this post is on the institutional considerations. In particular, is the President of the EPO and/or the Administrative Council competent to provide interpretations of the Articles of the EPC that are binding on the Boards of Appeal? That question was left unanswered by G 3/19, where the Enlarged Board did not comment on the legal status of Rule 28(2), which rule purports to give a binding interpretation of Art.53(b). 
• As G 3/19 was politically rather sensitive, leaving the institutional housekeeping to the Legal Board probably made sense. The present case, about such an obscure topic as the definition of signatures, is an excellent vehicle. The present decision will be cited or studied for many years, each time the EPO wishes to establish some "clarification" of the EPC Articles that binds the Boards of Appeal. 
• The Legal Board: "When interpreting the provisions of the EPC, the principles of interpretation laid down in Articles 31 and 32 of the Vienna Convention on the Law of Treaties 1969 (VCLT) must be applied (G 5/83 ... )."
• "According to the Enlarged Board of Appeal, the starting point of interpretation under Article 31 VCLT is the wording, i.e. the "objective" meaning of the term to be interpreted, regardless of the original "subjective" intention of the contracting parties "

Article 31  VCLT - 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 connection with the conclusion of the treaty; (b) any instrument which was made by one or more parties in connection 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.

• "the Board provides the following dictionary extracts by way of example only, as a first approximation for establishing the most common usage of the term "signature" in the context in which this term is used in Article 72 EPC, i.e. in the context of signing a contract."
• "When applying the "general rule of interpretation" pursuant to Article 31 VCLT, account must be taken of the object and purpose of the treaty to be interpreted. This includes taking account of the underlying purpose of the specific provision to be interpreted"
• " According to the "general rule of interpretation" pursuant to Article 31 VCLT, legal terms must be interpreted in their context. The immediate context of the term "signature" in Article 72 EPC, i.e. the other terms contained in this legal provision - which provide the context of the document on which the "signature" must be provided (i.e. the assignment contract) - was already taken into account in the above analysis and interpretation. The material to be taken into account for a systematic interpretation is, however, not limited to this immediate context. For the following reasons, it in fact includes the entirety of the articles of the EPC, as well as the Implementing Regulations to it."
• "At the Munich diplomatic conference 1973, not only the articles but also the Implementing Regulations to the EPC 1973 were directly concluded between the contracting states"
• " Article 164(1) EPC (1973) states that the Implementing Regulations "shall be integral parts of this Convention". Through this definition, the contracting states made the Implementing Regulations to the EPC 1973 part of the "text" of the treaty to be taken into account as context within the meaning of Article 31(2) VCLT. Even if this were not the case, the context to be taken into account under Article 31(2) VCLT includes not only the text of the treaty but also, according to point (a), "any agreement relating to the treaty which was made between all the parties in connection with the conclusion of the treaty". At the very least, the Implementing Regulations to the EPC 1973 must be deemed such an agreement."
• "The legal situation is less clear with regard to subsequent amendments to the Implementing Regulations. In Article 33(1)(c) EPC, the contracting states to the EPC empowered the Administrative Council, as an organ of the international organisation created by the EPC, to amend the Implementing Regulations. Accordingly, none of the subsequent amendments to the original Implementing Regulations were concluded between the contracting states to the EPC themselves but were adopted by the Administrative Council."
• "the question arises whether the current Implementing Regulations are also to be regarded as part of the "text" of the treaty within the meaning of Article 31(2) VCLT. In favour of this view is the fact that Article 164(1) EPC - the content of which was reconfirmed by the contracting states at the Munich diplomatic conference 2000 - does not contain any qualification to the effect that only the original Implementing Regulations to the EPC 1973 constituted integral parts of the EPC "
• "The Enlarged Board of Appeal confirmed that subsequent amendments to the Implementing Regulations are to be taken into account when interpreting an article of the EPC (see G 2/12, VII.4(1))"
• This deals with the Biotech Directive provisions in the Implementing Regulation, where the AC began codifying interpretations of Art.53 EPC in the Implementing Regulations. Those provisions are considered binding for the Boards in some case law, but this raises the question of the competence of the AC to lay down interpretations of the EPC articles, in a manner that binds the  Boards, is unfettered, or what the restrictions are (e.g. the AC can lay down any interpretation that is not directly contradicting the EPC wording, to 
• "In G 2/12, Reasons VII.4(1), the Enlarged Board of Appeal referred to the interpretative means under Article 31(3) VCLT concerning, in point (a), any subsequent agreement between the parties regarding the interpretation of the treaty or its application and, in point (b), any subsequent practice in the application of the treaty which establishes the agreement of the parties regarding its interpretation. The present Board notes that the mandatory interpretative means to be taken into account for interpretation under Article 31(3)(a) and (b) VCLT "together with the context" have the same interpretative weight as the "context" under Article 31(2) VCLT. Hence, regardless of whether subsequent amendments to the Implementing Regulations are subsumed under Article 31(2) VCLT or under Article 31(3)(a) and (b) VCLT, they are to be taken into account in a systematic interpretation of an article of the EPC."
• The point about "regardless" is the following: " the question arises whether the current Implementing Regulations are also to be regarded as part of the "text" of the treaty within the meaning of Article 31(2) VCLT. In favour of this view is the fact that Article 164(1) EPC - the content of which was reconfirmed by the contracting states at the Munich diplomatic conference 2000 - does not contain any qualification to the effect that only the original Implementing Regulations to the EPC 1973 constituted integral parts of the EPC (i.e. the "treaty" under Article 31(2) VCLT). Rather, the statement in said Article is applicable to the current Implementing Regulations as well. Articles 33(1)(c) and 164(1) EPC could accordingly be understood as provisions by which the contracting states empowered the Administrative Council of the European Patent Organisation ("EPOrg") to implement the articles of the EPC in the Implementing Regulations such that they can also change the context in which the articles themselves have to be interpreted."
• "While under the present legal framework the term "signature" must be understood as referring to handwritten signatures only, Article 72 EPC does, as such, not prohibit the legislator of the Implementing Regulations to the EPC, i.e. the Administrative Council, from specifying the meaning of the term "signature" in the Implementing Regulations (see G 3/19, Reasons XXVI.4)
• Note, G 3/19 point XXVI.4 does not say so. The introductory signal see here is probably used in a rather specific Bluebook meaning ("See indicates that the source clearly, though indirectly, supports a proposition. That is, the source does not directly state your proposition, but if a reader checked the source, it would be immediately clear to her that it supports your proposition." (link))
• "Taking due account of the rationale underlying Article 72 EPC (see points 2.4.2 and 2.4.3 above), such a definition could include a reference to some form of electronic signature and still respect the boundaries set by Articles 72 and 164(2) EPC. Providing such a definition in the Implementing Regulations would then change the context in which the term "signature" in Article 72 EPC is interpreted pursuant to Article 31 VCLT (see points 2.5 to 2.5.6 above), both by the departments of the EPO and by national courts.'"
• Note, the legal status of the Rules can differ: 1) an original Rule adopted at the 1973 Munich Conference, being "contemporary" context under Art.31(2)(a), 2) a provision that implements a delegation of legislative power in an Article (e.g. all formal requirements under Art.78(1) EPC), or 3) interpretative provisions that are subsequent agreement under Art.31(3) VCLT. 
• Note, the envisaged Rule would not be binding. It would be 'context' under the VCLT. Hence, it would be one factor under the general rule of Art. 31 VCLT: "The "general rule of interpretation" is a single rule of interpretation. It requires several methods of interpretation - in particular the grammatical, systematic and teleological methods - to be applied in a holistic manner. The "ordinary meaning" of a certain term is not to be determined in the abstract, but only emerges in the specific context in which it is used, taking account of the rationale underlying the legal provision to be interpreted."
• "The appellant also referred to the "Notice from the European Patent Office dated 22 October 2021 concerning electronic signatures on documents submitted as evidence to support requests for registration of a transfer of rights under Rules 22 and 85 EPC and requests for registration of a licence or other rights under Rule 23 EPC" (OJ EPO 2021, A86; hereinafter referred to as the "Notice"). The Notice provides inter alia "information about the practice of the Legal Division" in respect of electronic signatures attached to documents submitted as evidence to support requests for registration of a transfer of rights. For the following reasons, [the Notice] is not to be taken into account for the interpretation of Article 72 EPC either."
• "the Notice on which the Legal Division based its decision does indeed deviate from a provision of the EPC, namely from Article 72 EPC as interpreted by the Board as per the above analysis (and as understood by the Legal Division until the publication of the Notice). The Notice's aim of "facilitat[ing] communication by electronic means" with users is commendable. In the context of Article 72 EPC, however, a notice from the EPO is the wrong means to achieve this. While a notice from the EPO may be a source of legitimate expectations (see J 10/20, Reasons 1.15), it is, as such, only a document providing information. In particular, the Notice is not a legal instrument passed by a competent legislative body, so it can neither implement nor specify any articles of the EPC (or, for that matter, of the Implementing Regulations to it). It is not part of the material referred to in Article 31(2) and (3) VCLT, and therefore is not to be taken into account for a systematic interpretation of Article 72 EPC. Hence, the contents of the Notice have no bearing on the interpretation of the term "signature" in Article 72 EPC."

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1993/21 - Support under Art. 84 and the subjective technical problem

Key points

• Suppose claim 1 of the application is novel, inventive, clear, the same as claim 1 as originally filed, and can be carried out by the skilled person without any difficulties. Can the claim then be rejected under the support requirement of Art. 84?
• "The appellant [applicant] argued that the invention claimed in the main request was fully supported by the description, because the fact that the detailed embodiment included a plurality of magnetic detection devices related to further improvements of the claimed invention, not to the invention actually claimed in claim 1 according to the main request. The board does not agree with the appellant. The application as originally filed defines in paragraph [0015] as its technical problem: "to provide ... a vehicle ... able to detect a rotational position of a rotor with an improved detection accuracy"."
• "Therefore, the subject-matter of claim 1 does not include the technical features necessary for solving the technical problem defined in the application."
• As a comment, what if claim 1 solves some other technical problem, that the applicant could validly rely on under G 2/21?
• "In contrast thereto, the described embodiment, for example according to paragraph [0077], includes such technical features as the use of four magnetic detection devices wherein the magnetic flux input surfaces of the first to third magnetic detection devices are arranged [in some configuration]"
• "The specification does not comprise any other embodiment which would provide the described detection accuracy while using a single magnetic detector whose position relative to the rotor is undefined, as it is in claim 1. "
• "The questions of whether it is evident for the person skilled in the art how to carry out the invention with a different number of magnetic detection devices, as suggested by the appellant, or whether the device according to document D6 requires only a single magnetic detection device, are irrelevant for the question of support under Article 84 EPC because they relate to the requirement of Article 83 EPC, which is not part of the reasoning in the contested decision and is thus not part of the appeal proceedings "
• The auxiliary request addressing the issue is not admitted under Art. 13(2).
• " the objection that claim 1 according to both the main request and the auxiliary request did not include a definition of where the magnetic detection device is positioned had consistently been part of the proceedings since the oral proceedings before the examining division. The fact that the appellant reacted to this objection for the first time during the oral proceedings before the board can thus not be regarded as exceptional circumstances in the sense of Article 13(2) RPBA, justifying admittance of the present auxiliary request."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0763/20 - Baking ovens and steam ovens

Key points

• A decision on novelty and inventive step in opposition with a certain EQE Paper C vibe:  "E1 and E4 both disclose a steam cooking oven. A steam cooking oven is not the same as a baking oven as defined in claim 1 of the patent. Steam cooking is limited to 100°C (normal pressure) and does not result in browning of the food but leaves the surface of the cooked food with a moist, soft surface. In contrast to this, baking achieves browning and results in the formation of a crust on the surface of the baked food. Hence, a baking oven has to be suitable for achieving a Maillard reaction on the surface of the food, which typically proceeds from around 140 to 165°C. This is not the case for a steam cooking oven. E1 and E4 do not disclose that the steam cooking oven can be heated to such an extent that the oven is suitable as a baking oven, i.e. is suitable for achieving a temperature required for a baking process."
• "It is true that E4 discloses, in column 4, lines 7 to 11, that the side walls and the bottom wall of the steam cooking oven can be heated to minimise condensation: ... However, heating elements which are adapted to avoid condensation are neither foreseen nor suitable for heating the oven to the temperatures required for baking. This is also confirmed by the low power (120 W, 50 W) disclosed in E4 in this context, which is far lower than the power usually consumed by a baking oven (more than 1 kW). Hence, E4 also does not contain any additional disclosure which could imply that the steam cooking oven could be used at temperatures higher than 100°C, contrary to the conventional understanding that the skilled person has of a steam cooking oven."
• The claim is novel over E4.
• Inventive step, starting from E2: "E2 discloses a baking oven with a water evaporation system."
• "the subject-matter of claim 1 differs from the disclosure in E2 in that the baking oven comprises

  - an outlet section of the tubular conduit that is external to the volume generated by a translation of the opening of the reservoir along the physical vertical; - means for conveying the water from said outlet section of the tubular conduit to the reservoir; - a portion of the delimiting walls that comprises the means for conveying the water; - said conveying means being exterior to said volume."

• "the objective technical problem could be formulated as that of providing a baking oven which is easier to clean after use."
• "El and E4 are documents which would not be considered by the skilled person because they do not relate to the same type of device as that in E2, i.e. a baking oven. Even if the skilled person considered the disclosure in relation to a steam cooking oven according to E1 or E4 for modifying the baking oven in E2, neither E1 nor E4 would prompt them to make the necessary structural changes in order to solve the underlying problem."
• Inventive step starting from E4: "E1 and E4 relate to steam cooking devices, and therefore, do not have the same purpose as the patent, which can be considered to be providing a baking oven. Hence, E1 and E4 do not represent an appropriate starting point for the assessment of inventive step, since the skilled person would not consider them when seeking to provide a baking oven.

  Even if the skilled person started from either E1 or E4, they would not completely change the nature of the cooking device and redesign it to be suitable as a baking oven, as the cited prior art gives them no motivation or incentive to do so.

  Therefore, in line with the finding in point II.3.2.3 of the contested decision, the Board concludes that the subject-matter of claim 1 is not obvious when starting from E1 or E4."

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• EPO 

The link to the decision is provided after the jump. 

T 1362/20 - The request filed at 19:41 before the OD

Key points

•  The OD decided to maintain the patent in amended form based on the auxiliary request filed on 19:41. The opponent appeals and presents new clarity objections, which are not inadmissible under G 3/14. The Board has to decide whether to admit them under Art. 12(4) RPBA. The patentee argues that the objections could have been submitted during the oral proceedings before the OD.
• The Board in translation: "During the oral proceedings before the opposition division, the patent proprietor did not defend any of the auxiliary requests filed in the written procedure. After the main request - as already explained in the preliminary opinion of the opposition division - had fallen because of an inadmissible intermediate generalization, the patent proprietor filed new auxiliary requests. Auxiliary requests 1a, 1b and 2a and the auxiliary request (19:41) [which contained, for the first time, the amendment objected to as rendering the claims unclear] were not filed before the opposition division until the afternoon of the oral proceedings and each contained features taken from the description. The complainant had about half an hour to deal with the newly submitted applications."
• "The Board is of the opinion that it would have been possible to identify a lack of clarity within this time frame. The [opponent] could therefore have raised the objection. However, in view of the tight time frame, this could not be demanded of her, so that the objection should not have been raised within the meaning of Article 12(6), second sentence, RPBA 2020 [i.e. the opponent was not obliged to raise the objection]. Since the amendments were taken from the description and were admitted into the opposition proceedings at a very late point in time, it is fair to allow new objections to the amended claims if these objections are raised at the first opportunity in the appeal proceedings."
• Moreover, the objection is highly relevant (note: the Board does not say prima facie highly relevant, which seems important and is consistent with the wording of Art.12(4). The objection is admitted.
• The claim is found to be unclear.
• All other auxiliary requests contain the feature.
• The patent is revoked. 

EPO 

The link to the decision is provided after the jump,

Ninth edition Singer/Stauder/Luginbühl EPÜ

The new ninth edition (2023) of Singer/Stauder/Luginbühl EPÜ  is now available through Kluwer IP Law if  your organisation has a subscription:

https://www.kluweriplaw.com/document/KLI-KIPL-Singer-2023-a001

T 0558/20 - Compound for surgical method

Key points

• The patentee appeals. Claim 1 of Auxiliary Request 2 reads as follows: 
  " A bone regenerative material comprising calcium sulfate [or some other compounds] for use in a method of treating a patient suffering from a degenerative bone condition that can be characterized by a loss of bone mineral density (BMD), the method comprising: forming a channel into the interior of a localized area of intact bone, using the channel as access, forming a void of dimensions greater than the channel in the localized area of intact bone by clearing degenerated bone material and optionally removing a portion of the degenerated bone material, at least partially filling the formed void with a bone regenerative material that facilitates formation of new, non-degenerated bone material in the void." 
• The feature in italics is added compared to the main request.
• As a comment, I note that the claim specifies " the method comprising ... filling the formed void with a bone regenerative material", not "the bone regenerative material" . 
• The OD found that "The method defined in the claim did not involve a new technical teaching, as required by decision G 02/08, and was thus not novel. Therefore the claim had to be read as defining compositions suitable for this method. Since the materials defined in the claim are well-known ... the claim was then held to lack novelty" 
• In connection with the Main Request, the Board notes that "it was uncontested that the material used in D3 is according to the claim. It was likewise uncontested that the method used in D3 is according to the claim."
• " D3 states clinical trials to be under way, however, no results of any such trial are on file." 
•  "  The appellant [proprietor] defended novelty of the claim arguing that D3 failed to disclose the formation of "non-degenerated bone material" as required by the claim." This argument fails. 
• "The description of the patent does not support the interpretation of "non-degenerated bone material" as exclusively referring to bone material corresponding to a 30-year old healthy subject, or bone material having certain physical characteristics relating to the BMD or T-score. The feature "new, non-degenerated bone material" may as well be interpreted as relating to newly formed bone material not yet affected by degenerative processes, as brought forward by the respondent [opponent]. In that sense the respondent's argument that newly formed bone material is, by definition, non-degenerated, has some merit."
• On the general interpretation of second medical use claims:   After assuring that the method defined in the claim falls under the exclusion of Article 53(c) EPC, the use and the method steps are considered as limiting features of the claim. Following this approach it then has to be examined whether the specific use of the substance or composition defined in the claim is novel or not. If this specific use is already known, the claim is not novel over the document disclosing the specific use of the substance or composition defined in the claim."
• "The approach proposed by the appellant, i. e. reading the claim as it is drafted, assuring that the method falls under Article 53(c) EPC, then considering the use and method features as limiting and assessing whether the specific use defined by them is already known from the prior art is, in the Board's view, aligned with the wording of Article 54(5) EPC and follows its logic. ... This approach is also the one generally used by EPO departments when assessing patentability of second medical use claims, and the Board will adhere to it in the present decision."
• Turning to AR-2: "D3 does not disclose forming a channel and using this channel as an access to form a void greater than the the channel in the bone. In D3 a hole is drilled, and nothing more, see figure 3."
• "Requiring additional surgical steps clearly provides a new technical teaching compared to the disclosure of D3 already because additional physical actions must be undertaken. The method defined in the claim is thus not just verbally different from the method disclosed in D3, but differs in tangible, physical method steps."
• On inventive step: "A skilled person, reading D3, would have had no reason to create a bigger void inside the bone, using the channel as an access. There is no indication anywhere in D3 that the drill hole alone could not accommodate the bone graft material injected into the bone, or that the amount of injected material was considered insufficient. "
• "The least ambitious technical problem that can be formulated starting from D3 is the provision of an alternative treatment of bone degenerative diseases."
• The Board does not expressly reject the more ambitious problem.
• The claim is considered to be inventive.
• By way of brief comment: a claim for a device for a surgical method does not benefit from Art.54(5) as a device is not a substance; and some other decisions reject claims for a gel for a medical use because the gel had no therapeutic activity in the method. This claim escapes all traps. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2407/19 - Sole substantive condition priority

Key points

•  "As established by the Enlarged Board of Appeal in its opinion G 2/98 (OJ EPO 2001, 413) and confirmed in its decision G 1/15 (OJ EPO 2017, 82), the sole substantive condition laid down by the EPC (and the Paris Convention) for the right of priority to be validly claimed is that the priority document and the subsequent filing are directed to the same invention (Article 87(1) EPC). Article 4C(4) of the Paris Convention mentions "the same subject". However, the meaning is identical (see G 1/15, point 4.2 of the Reasons)."
• "The requirement for claiming priority of "the same invention", referred to in Article 87(1) EPC, means that priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole (see G 2/98, Conclusion of the Opinion).

  Moreover, the "same invention" must be disclosed in an enabling manner in the priority document (see G 1/15, Order of the decision)."

• As a first comment, an open question is how this case law relates to the plausibility/technical teaching requirement of G2/21.

• A second question is whether this means, under T1482/21, that the Opposition Division is not competent to review the decision of the Examining Division that the priority claim of the granted application is valid as far as the formal issue of entitlement is concerned (G 1/22).

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• EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1482/21 - Review of grant of re-establishment priority

Key points

• If the EPO grants re-establishment in the priority period in the course of the grant proceedings, can the validity of the priority be contested on this ground later in opposition? (assuming that the priority date is relied on by the proprietor)
• Generally, a procedural defect in the grant proceedings is not a ground for opposition, e.g., an unjustified re-establishment for paying a renewal fee with a surcharge. On the other hand, the validity of the priority is examined in opposition. However, certain procedural aspects of claiming priority can not be contested in opposition, as far as as I know, i.e. non-compliance with Rule 52 EPC, e.g. whether the priority claim and priority document were timely filed (I admit I can't find quickly any case law on point). 
• The Technical Board considers itself not competent to review the decision to grant re-establishment in this opposition case.
• The headnote: " Based on its competence for the examination on filing and as to formal requirements up to the time when the Examining Division becomes responsible, the Receiving Section is under Rule 136(4) EPC also competent to decide on a request for re-establishment of rights in respect of the priority period. If the Receiving Section grants such a request, its decision becomes final immediately. Other departments of the EPO such as an Opposition Division or a technical Board of Appeal which decide on questions of priority in other, subsequent proceedings are prevented from reviewing and overturning the Receiving Section's decision granting the request for re-establishment of rights "
• The Board: " the effect of granting a request for re-establishment of rights is specifically regulated in Article 122(3) EPC. According to this provision, if a request for re-establishment of rights is granted, the legal consequences of the failure to observe the time limit concerned are deemed not to have ensued. The wording of Article 122(3) EPC does not limit the effect of granting a request for re-establishment of rights to the proceedings in which the decision to grant that request was taken." 
• " Secondly, while an examination of the same patentability requirements under Article 114(1) EPC may be undertaken by different departments in different proceedings (e.g. first in examination and then in opposition proceedings), a decision on re-establishment of rights presupposes that there is a corresponding request to be decided upon. In the case in hand, such a request was neither present in the opposition nor in the opposition appeal proceedings. Rather, it was only made in the proceedings before the Receiving Section, and decided upon only in these proceedings. As the Legal Board of Appeal is under Article 21(2) EPC exclusively competent to review decisions of the Receiving Section (G 1/11, Reasons 9, second paragraph), neither the Opposition Division nor the present technical Board of Appeal have any power to review the Receiving Section's decision on re-establishment of rights. They may also not do so indirectly by reassessing the same matter again of their own motion." 
• As a comment, G1/11 held in r.9 that: "  This, together with the Legal Board's (exclusive) competence for appeals against decisions of the Receiving Section or the Legal Division (Article 21(2) EPC), which by definition do not involve technical matters, results in an "efficient" composition of the boards geared towards the issues on which each case turns, and conducive to procedural economy."  This does not deal with any review by other first-instance departments but with whether the Legal Board or a technical board of appeal is competent to decide on an appeal against a decision of the Receiving Section.
• " Thirdly, any subsequent reopening of a favourable decision of the Receiving Section on re-establishment of rights would lead to considerable legal uncertainty for the party whose request was granted. It would also be in conflict with the principle of protection of legitimate expectations, as a party whose request for re-establishment of rights was granted in ex parte proceedings has every reason to believe that it can rely on this decision in its subsequent procedural conduct." 
• As a comment, the principle of protection of legitimate expectations is commonly understood to refer to expectations the party has before a decision is taken, based e.g. on incorrect information from the EPO or the EPO not drawing attention to an error while there is still sufficient time for the party to remedy (J10/84; T14/89). Possibly the Board implies that even if the re-establishment was incorrectly granted and theoretically open to review by the Examining Division, the applicant would thereafter be protected by a legitimate expectation.
• Note that decisions of the Receiving Section under R.56 can be reviewed by the Examining Division (C-III,1.1.1) (the GL speak of "findings"  of the Receiving Section; see however also B-XI 2.1, which speaks of a decision of the Receiving Section).
•  On a high level, the decision of the Examining Division to grant the patent with the priority claim also "becomes final immediately", and whether the OD can review it as to the issue of entitlement to the priority right, is the subject of referral G 1/22 (pending at the time of writing).
• As a general comment, there are two aspects to this decision: how to treat, in post-grant proceedings, the allegation that the priority of the patent is invalid because of an incorrect re-establishment in the priority period; and secondly, the power of the Examining Division to review decisions of the Receiving Section in the grant procedure. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

New design of this weblog

Due to technical issues, the former design of this weblog was lost. I had to create this new design from scratch, and it is still a bit of a work in progress. 

T 1738/21 - OD should have heard witness

Key points

•  " The appellant [opponent] contended in its statement of grounds of appeal that its right to be heard was infringed during the opposition proceedings." 
• " The appellant argued that the opposition division should have heard the witnesses who had been offered to corroborate its case, before deciding that the alleged public prior use did not show a cut-off wheel with the features of claim 1 as granted." 
• " The board notes that it is established case law that an opposition division has violated an opponent's right to be heard under Article 113(1) EPC if witnesses have been offered in connection with the disclosure of certain features of an alleged public prior use considered as adequately substantiated, but the opposition division decides that the alleged public prior use does not constitute novelty-destroying state of the art without hearing the witnesses" 
• " Therefore, if witnesses have been offered to corroborate alleged facts which are decisive for the decision to be taken, then the opposition division should hear the witnesses regarding the alleged facts in order to be in a position to take a decision on the basis of all the available evidence" 
• "  It is therefore necessary to consider which alleged facts the appellants intended the witnesses to corroborate and if these facts were decisive for the outcome of the decision under appeal." 
• " Five witnesses were offered by the appellant (see notice of opposition, pages 5, 6 and 13) to corroborate the following alleged facts: ..."  
• " In the decision under appeal the opposition division found that the alleged public prior use cut-off wheel did not show the subject-matter of claim 1 because: (a) the public prior use cut-off wheel did not disclose a specific cut-off wheel with all the features of claim 1; and (b) it was not proven that the BAKELITE® coating was still present in the finished cut-off wheel. " 
• " In the board's view, the witnesses who had been offered, were in a position to corroborate the alleged facts which were found not convincing by the opposition division." 
• " The witnesses, Mr Härtelt and Mr Schmale, were however offered by the appellant to confirm the alleged fact that the public prior use cut-off wheel disclosed the features of claim 1 as granted, demonstrated by the list of materials E19 and the reinforcement scheme E20 as well as the declarations E15 and E17. Although witnesses should be heard in order to corroborate what has been alleged and not to fill in gaps in facts, additional clarifications provided by a witness to close a potential gap in the documentary evidence on file cannot be considered per se new facts, or the hearing of witnesses would be futile " 
• " The board can find no mention in the decision under appeal of the appellant's offer of witnesses nor any indication of the opposition division's reasons for not hearing the witnesses who were offered. The board therefore cannot review which principles the opposition division took into account, nor how it applied these principles, when it decided not to hear the witnesses."
• The opponent had re-iterated the witness offer in reply to the first summons, wherein the OD had indicated that it would not hear the witnesses. I note that re-iterating the request to hear the witnesses may be important to preserve the issue for appeal. 
• " Article 117(1) EPC and Article 113(1) EPC embody a basic procedural right, namely that a party can give evidence in an appropriate form and have that evidence heard. If the evidence offered relates to alleged facts that are decisive to the decision to be taken, the department hearing the case must as a rule order it to be taken" 
• " the appellant had also contested the opposition division's findings relating to inventive step of the claims of the granted patent, to which the respondent also provided its argument in its reply. Therefore, for the sake of procedural economy, the board also considered the question of inventive step, rather than remitting the case to the opposition division with no decision on this ground of opposition for the patent as granted." 
• " The appellant [opponent] has therefore convincingly shown that the opposition division was incorrect in finding that the subject-matter of claim 1 was inventive [over patent document E1]. The decision under appeal should therefore be set aside." 
• As to the remittal: The OD had not dealt with the auxiliary requests. The substantial procedural violation regarding the hearing of the witnesses is used by the Board as "special reason" under Art. 11 RPBA to remit the case. 
• As a comment, the Board does not indicate if the public prior use is relevant for the further examination of the auxiliary requests. If the substantial procedural violation has no effect on the examination of the auxiliary requests, then, in my view, it can hardly be considered as a "special reason" for remittal. 
• The Board also mentions the fact that the OD did not deal with the auxiliary requests as a special reason for remitting the case. That is clearly a reason for remitting, but I doubt if it can be considered special. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2381/19 - Reject, appeal, revise, repeat

Key points

• The grant of interlocutory revision in an appeal against a refusal does not mean that the patent is granted. In the present case, the applicant accordingly had to file two appeal fees before having its application considered by the Board.
• In this case, the applicant requested reimbursement of the appeal fee. The Board found the claims to be not allowable, so the Board's extensive analysis of the point seems obiter.
• "In the present case the examining division granted interlocutory revision by a separate decision dated 26 November 2018. This decision did not revise the decision in the sense of immediately replacing it with a decision dealing with the substantive issues, but only set the decision aside and continued the examination proceedings ("cassatory revision", cf. J 5/08 (point 19 of the Reasons), T 0919/95 (point 2 of the Reasons, last paragraph), both cited in the "Case Law of the Boards of Appeal of the EPO" [CLBA], 10**(th) edition, 2022, section V.A.2.9.5). In its second decision refusing the application, the division added additional objections (under Articles 123(2), 84, 52(1) and 56 EPC), although the requests remained unchanged. This is not recommended by the Guidelines, but is possible (Guidelines E-XII, 7.4.1, version of November 2018). In this case, the Guidelines provide that the Examining Division should order the reimbursement of one appeal fee if a substantial procedural violation occurred (Guidelines E-XII, 7.4.1). However, this was not the case here and no reimbursement was ordered. The appellant also did not argue in its first appeal that a substantial procedural violation occurred in the procedure leading to the issuance of the first refusal. It also did not argue in its second appeal that not reimbursing the first appeal fee in the interlocutory decision in itself constituted a procedural violation."
• "the Guidelines recommend that if the requests remain unchanged - as in the present case - and the objections that led to the refusal are upheld (in the present case the objections under Article 123(2) EPC), the examining division should refer the appeal to the Boards of Appeal within three months (Guidelines E-XII, 7.4.1)."
• Without checking the file wrapper in detail, an essential point of interlocutory revision in general seems to me to be that the objections supporting the original refusal decision are abandoned by the Examining Division in the interlocutory revision. Interlocutory revision is not an opportunity to tidy up (the written reasons for) the refusal decision at the expense of the applicant. Raising new objections would be possible, but repeating the same objections again seems unfair as the applicant is then prevented from obtaining a review of those objections by the Board. 
• Incidentally, the USPTO practice on point seems undesirable to me. 
• The Board does comment on this issue: "once the examining division reopens the examination, it is formally not prevented from re-examining all the issues which were already the subject of the previous decision. The principle of prohibition of reformatio in peius does not apply in this situation.[*] As explained above, the decision whether or not to allow interlocutory revision must be taken by the examining division relatively expeditiously and only on the basis of the first decision and the appeal against it. However, once the substantive examination of the application is reopened, the ensuing in-depth examination of the case with respect to other patentability requirements may well reveal that the problems under Article 123(2) EPC are still not resolved, as the present proceedings before the board have shown. It is therefore certainly undesirable, but not excluded, that the same issues are raised again in a second decision of the examining division." 
• [*] Comment: the fact that the prohibition of reformatio in peius does not apply does not exclude that there is no other procedural principle objecting to such an approach to Art.109
• 
  
• EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0803/20 - Review of decision to admit

Key points

• "The board notes that documents E9 and E9a were admitted into the opposition proceedings by the opposition division and therefore became part of the opposition proceedings. 
• "The board further notes that while under Article 12(6) RPBA 2020, ... it is possible to admit documents that were not admitted in the first-instance proceedings, there is no basis in the said provision or elsewhere in the RPBA or the EPC for not admitting documents which were admitted in the first-instance proceedings. Therefore, the board takes the view that it has no discretion not to admit documents E9 and E9a into the appeal proceedings under Article 12(4) or (6) RPBA 2020. However, the opposition division's discretionary decision to admit these documents is open to review. When reviewing, it must be taken into account that in the case of discretionary decisions, the opposition division's exercise of discretion is usually reviewable only to a limited extent (see Case Law of the Boards of Appeal, 10th edition 2022, V.A.3.4.1). Such a discretionary decision should only be overruled in appeal if the discretion has been exercised according to the wrong principles, or without taking into account the right principles, or in an unreasonable way. "
• "The Board cannot see that the opposition division exercised its discretion incorrectly."
• As a comment, and upon giving the topic some thought over the last months, I think the decision to admit as such is not a violation of the right to be heard but possibly a subsequent lack of a suitable opportunity to reply for the other party before the OD took its decision. This can be remedied by setting aside the impugned decision so that the OD can give the other party a more complete opportunity to reply and take a new decision based on the admitted document and the other party's reply.
  
  
• The Board considers AR-1 to lack an inventive step (over E9 and common general knowledge) and remits the case, against the protest of the opponent. "The appealed decision only dealt with objections to claim 1 of the patent as granted (main request) and the present first auxiliary request. In the case at hand, examining new features and deciding whether they comply with all the requirements of the EPC goes beyond the task of an appellate instance. The "special reasons" within the meaning of Article 11 RPBA 2020 are that it would be unduly burdensome for the board to have to deal with six auxiliary requests for the first time in the appeal proceedings and that the opponent had raised several objections under Articles 54(1), 56, 84, 123(2) and/or 123(3) EPC against at least some of these six auxiliary requests during the written procedure. Moreover, contrary to what the opponent suggested, there is no legal basis for the board to limit in its remittal decision the scope of further examination by the opposition division to the current second to fifth auxiliary requests."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0450/20 - A Communication under Art.15(9) RPBA

Key points

•  The decision was taken during oral proceedings of 09.03.2023 and issued in writing on 12.07.2023, i.e. more than 3 months after the oral proceedings.
• In this case, a notification under Art. 15(9) RPBA is visible in the file, dated 09.06.2023, informing about the delay in issuing the decision and giving reasons.
• I'm very pleased to see this happening. It shows that the Board takes the mutual obligations of the parties and the Board in the appeal proceedings seriously.

EPO 

https://new.epo.org/en/boards-of-appeal/decisions/t200450eu1 

T 0149/21 - Sufficiency in the mechanical arts

Key points

• The Board in machine translation in this case about a method of operating a rolling mill, regarding Art. 83:
• "During the proceedings before the board, the respondent [proprietor] argued that, according to the case law of the boards of appeal, it was sufficient that at least one way of carrying out the invention was indicated in the original application in order to meet the requirement of Article 83 EPC.  Whether other "exotic" scenarios also fall under the subject matter of protection is irrelevant in this context.
• "The board agrees that the patent in suit specifies at least one way of carrying out the claimed invention in detail (see point 1.4 above) and thus at least complies with Rule 42(1)(e) EPC. According to the settled case law of the boards of appeal, however, the claimed invention must be capable of being carried out over the entire claimed area (see e.g. T 409/91, reasons 2; T 435/91, reasons 2.2.3; T 862/11, reasons 5.2 (b); T 941/16, reasons 9; all in the field of chemistry). Accordingly, the indication of at least one way of carrying out the claimed invention, while necessary, is not sufficient to meet the requirement of Article 83 EPC.  
• This jurisprudence is usually not limited in any way to the respective subject area:

- Electrical engineering (see e.g. T 1542/12, reasons 2.1.1; T 2210/16, reasons 3.2; T 1306/17, reasons 4.2),- Physics (see e.g. T 2305/14, reasons 3.2; T 222/17, reasons 12; T 1921/19, reasons 1.1.3), and- mechanics (see e.g. T 1905/10, reasons 1.3.3 and T 2431/11, reasons 4.2 and 4.10)

• " However, recent decisions in the field of mechanics (see T 2773/18, reasons 3.2; T 500/20, reasons 3.6 [post] and T 1983/19, reasons 2.1.3) have suggested that this is in the field of chemistry criterion "in the entire claimed area" is not necessarily applicable to other technical fields such as mechanics. In particular, z. B. in T 1983/19 (reasons 2.1.3) emphasized that the case law developed primarily in the context of chemistry, according to which the invention must be capable of being carried out "over the entire claimed range", cannot be transferred to mechanics without making compromises, since any number of exemplary embodiments that would not be executable could be devised for almost any mechanical requirement. However, this does not lead to that the "invention as such" could not be carried out. Rather, it is sufficient that the patent only shows the person skilled in the art a way of carrying out the invention (cf. point 3.2 above)."
• "the board is of the view that while the indication of a way of carrying out the claimed invention may be sufficient to satisfy the description requirement under Rule 42(1)(e) EPC, it is not necessarily sufficient to satisfy Article 83 EPC . Rather, according to the case law, the person skilled in the art named in this article should be able to use the patent in suit and his general specialist knowledge across all technical areas, across all technical areas, to use the claimed invention across the entire area, i.e. according to all technically possible interpretation variants which the expert reader can objectively understand would use criteria based on his common knowledge. In other words, in the Board's view, all "technically reasonable" claim interpretations should be taken into account when examining under Article 83 EPC, and not only those claim interpretations which are deemed to meet the requirements of the EPC can be considered "technically reasonable" (cf. T 2210/16, reasons 3.12). The requirement that the disclosure must enable the claimed invention to be carried out "in its entire scope" is also in line with the fundamental legal and political concern that, in principle, the exclusive right conferred by a patent with regard to its scope of protection is to be limited by the actual contribution of the patent to the state of the art should be justified (see T 435/91, Reasons 2.2.1, fourth paragraph).
• Turning to the patent in suit, after a detailed analysis, the Board concludes that: " In summary, the patent in suit does not disclose how the person skilled in the art can actually carry out an "automatic identification" for the method claimed in claim 1 and also determine the probable "duration of the rolling pause" for unknown faults."
  
  
• "2. Main request: Claim 1 - Interpretation
2.1 In the Board's view, the skilled reader would readily understand that feature d) not only involves manual identification (ie performed by the "roller operator") covered by paragraphs [0008] and [0025] of the patent in suit, but also automatic identification the nature of the disorder. ... With regard to feature e), the determination of a probable duration of the rolling break based on a disruption matrix, as set out in paragraph [0025] of the patent in suit, can, according to the Chamber's assessment, only be made for disruptions that are already known. However, the subject-matter of claim 1 is not limited to only such disturbances. Namely, the features d) and e) could also relate to previously unknown disturbances. Also, the disorder mentioned in claim 1 is in no way limited to a "frequent" or "typical" disorder."


• The patent is revoked.

EPO 

The link to the decision is provided after the jump.

T 1946/21 - (II) A case where the OTP is not how to achieve the technical effect

Key points

• The objective technical problem can usually be formulated as "how to achieve the technical effect" (see e.g. G 2/21, r. 24). See also T1148/15: "In most cases, the objective technical problem can be formulated as how to achieve the technical effect. "
• However, the Report for Paper C of the EQE often states that the objective technical problem and the technical effect are not the same. ( "typically, the objective technical problem and the technical effect are not identical."- 2023 Report)
• The present case provides an illustration. 
• "the technical effect of the distinguishing features is [an] increased strength of the hanging parts, resulting in the ability [of the claimed swimming pool] to withstand higher internal pressures of the inflatable air chamber."
• "The [opponent] argued that the objective technical problem - according to the problem-solution approach - was thus "how to achieve the technical effect of the distinguishing features".
• "However, the technical effect invoked by the [opponent] (i.e. the hanging element can withstand higher internal pressures) does not solve a technical problem per se but has to be considered in context. Increasing the strength of the hanging parts is not an end in itself but leads to a technical effect whereby the device is able to improve the maintenance of the pool's shape, e.g. when a user is sitting on the top wall or in the pool, as explained in paragraphs [0043] and [0047] of the patent specification."
• The objective definition of the problem to be solved by the invention should normally start from the problem described in the contested patent (Case Law, I.D.4.2.2). The (subjective) problem formulated in paragraphs [0043] and [0047] of the patent, namely to maintain the shape of the pool, is convincingly solved. It is true that D28 already provides an inflatable pool constructed in such a way that it does not easily collapse when external pressure is applied. However, in view of [the CPA] D28 and the technical effect of the distinguishing features, the objective technical problem is to provide a pool with further improved maintenance of its shape when external pressure is applied (e.g. by a user sitting on it).
  
• "For inventive step to be assessed fairly and objectively, it is important not to formulate the objective technical problem either too narrowly or too broadly. The same is true for the technical effect to be considered. The Board finds no justification for formulating the objective technical problem in the narrow terms proposed by the [opponent] since this would take the effect out of its technical context and imply that increasing the strength of the hanging parts is an aim in itself for the skilled person without further considerations [incorrectly, I understand]. This already points to the solution and results in an analysis tainted by an ex-post facto approach."
• As a comment, the technical effect could perhaps also have been formulated as "improved maintenance of the swimming pool's shape when external pressure is applied".

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://new.epo.org/en/boards-of-appeal/decisions/t211946eu1.html

3.3.4 There is consensus that the technical effect of the distinguishing features is increased strength of the hanging parts, resulting in the ability to withstand higher internal pressures of the inflatable air chamber.

The appellant [opponent] and the intervener argued that the objective technical problem - according to the problem-solution approach - was thus "how to achieve the technical effect of the distinguishing features".

However, the technical effect invoked by the appellant/intervener (i.e. the hanging element can withstand higher internal pressures) does not solve a technical problem per se but has to be considered in context. Increasing the strength of the hanging parts is not an end in itself but leads to a technical effect whereby the device is able to improve the maintenance of the pool's shape, e.g. when a user is sitting on the top wall or in the pool, as explained in paragraphs [0043] and [0047] of the patent specification.

D28 discloses hanging parts which partially address this problem (see D28.1, paragraph under the heading "Operational advantage of the invention" on page 5). However, this does not change the fact that the distinguishing features in question further improve on the aim of D28, i.e. the maintenance of the pool's shape "when external pressure is applied from the top side".

The objective definition of the problem to be solved by the invention should normally start from the problem described in the contested patent (Case Law, I.D.4.2.2). The (subjective) problem formulated in paragraphs [0043] and [0047] of the patent, namely to maintain the shape of the pool, is convincingly solved. It is true that D28 already provides an inflatable pool constructed in such a way that it does not easily collapse when external pressure is applied. However, in view of D28 and the technical effect of the distinguishing features, the objective technical problem is to provide a pool with further improved maintenance of its shape when external pressure is applied (e.g. by a user sitting on it).

For inventive step to be assessed fairly and objectively, it is important not to formulate the objective technical problem either too narrowly or too broadly. The same is true for the technical effect to be considered. The Board finds no justification for formulating the objective technical problem in the narrow terms proposed by the appellant and the intervener since this would take the effect out of its technical context and imply that increasing the strength of the hanging parts is an aim in itself for the skilled person without further considerations. This already points to the solution and results in an analysis tainted by an ex-post facto approach.

T 1316/20 - Pendency of parent in opposition

Key points

• The patent is granted from a divisional application. According to the opponent, the parent was not pending on the day the divisional was filed. If the EPO finds so during examination, the divisional has no filing date and will be refused.
•  In what possibly has a relation with recent decision T 1482/21 (no review of the decision to grant re-establishment in the priority period during opposition), the Board decides that the pendency oft the parent can not be reviewed in appeal. 
• The Board, in machine translation:  "whether the deficiency of a pending parent application can be challenged in opposition or appeal proceedings. This is to be denied in the present case. First of all, it is recognized that not all deficiencies in an application can also be objected to in opposition proceedings, but only those mentioned in Article 100 EPC. This also applies to deficiencies that are not formalities: a lack of clarity is just as little a reason for an objection as the lack of payment of fees." 
• " According to the appellant, the absence of a pending parent application is a ground for opposition under Article 100(c) EPC. In the opposition, it could be objected that the divisional application went beyond the content of the parent application. However, if there was never a pending parent application, each divisional application went beyond that. This may be formally the case; however, the Board is of the opinion that the provision is concerned with the technical content of the parent application and not with its pendency. To put it another way: the content of the divisional application does not go beyond the parent application simply because the latter was never pending and should therefore be regarded as meaningless nullity, so to speak. From the Board's point of view, the fact that the parent application is not pending cannot mean that priority has not been validly claimed, because claiming priority under Art. 87(2) EPC only requires a valid prior application and not a valid parent application . " 
• As a comment, the switch to Art.87 in the last sentence is not very clear to me. Though I can see why it was brought up, as Art.87 is more frequently examined in opposition.
• Let's see if the Enlarged Board in G 1/22 * declares the issue of the formal entitlement to priority similarly non-reviewable in opposition. (* - not yet available at the time of writing)
• For the examination of novelty under Art.54, you need to know the filing date of the patent, right? How do we know it? Is the filing date mentioned in the DTG irrefutable, i.e. a non-reviewable decision of the Examining Division?
• The issue with the pendency of the parent is that the divisional application was filed in April 2010, and before the expiry of the 31-month period for the parent application, which was a PCT application, and without a request for early processing, and on the same day as the acts for entering the European phase were performed.
• Under the then applicable version of Rule 164(2), with the EPO as ISA, the filing of the divisional made sense.
• Under J 18/09, the divisional could only be filed "once the international application has entered the [regional phase before the EPO]: "It is the very essence of the unitary filing system drawn up by the PCT that in the international phase the international application is subject to the procedural rules of the PCT and not to those of the national laws (possibly divergent from those of the PCT) which may become applicable once the international application has entered the national or regional phase before the competent national or regional office. ", see also r.14 and r.15.
• 
  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0967/18 - Interuption of proceedings

Key points

• The proprietor appeals the decision of the OD issued on 05.02.2018.
• "the patent proprietor informed the EPO's Legal Division by submission dated 19 July 2019 that ... an  external administrator for [the then proprietor] had been appointed on 26 September 2016 as part of the company entering voluntary administration."
• The grant was published on 10.02.2016, avoiding a few other procedural complications.
• "The EPO's Legal Division informed the patent proprietor - with the communication dated 26 July 2019 - that the opposition proceedings had been interrupted in accordance with Rule 142(1)(b) EPC with effect from 11 November 2016 and that the proceedings would be resumed on 4 November 2019."
• The opponent filed an appeal against the decision of the Legal Division to not set aside the communication of 26.07.2019, case J 9/21 (post). The Legal Board dismissed the appeal because " it is not possible to set aside a declaration of interruption by the Legal Division with retroactive effect, not even if it was declared erroneously (for an interruption see T 1389/18, Reasons 6, and J 10/19, Reasons 4 to 13; for a stay see J 14/19, Reasons 3.5, with further references). "
• The present Board: "As correctly explained by the Legal Board of Appeal (J 9/21, Reason 3.3), in accordance with previous decisions of the boards, where the proceedings have been interrupted under Rule 142(1)(b) EPC, acts done by the parties or the competent body of the EPO during the period of interruption are considered "invalid"."
• "the appeal and the appeal proceedings have no valid subject eligible for judicial review. In line with established case law, an admissible appeal requires the existence of an appealable decision. Thus, the appeal in question must be regarded as not satisfying the requirements set out in Article 106(1) EPC. Hence, the board considers the appeal to be inadmissible."
• The Board refuse the requests for apportionment of costs. As to the conduct of the proprietor: "there is no evidence of an abusive behaviour of the patent proprietor. The patent proprietor did not request an interruption. The latter was ordered ex officio by the Legal Division under Rule 142(1)(b) EPC, after the patent proprietor had requested the registering of a change of ownership. It is not apparent that the patent proprietor was aware that the request for the change of ownership with the relevant information concerning the voluntary administration would have triggered an interruption of the proceedings. There is no evidence that the patent proprietor was aware that the legal situation created under Australian law required an interruption in the EPO proceedings. There is also no evidence that it deliberately waited for the outcome of the opposition proceedings to provide information which would have led to an interruption."
• "the board is not convinced that the failure to recognise the implications of the entry into voluntary administration for the EPO proceedings constitutes a serious and gross lack of diligence on the part of the patent proprietor. As the proceedings before the Legal Division and the Legal Board of Appeal confirmed, a complex analysis was required to properly assess the legal consequences."
• The OD can now open the file again on this patent with a filing date in 2009.

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0969/18 - Isoprenoids (and acetate)

Key points

• Issued deep in the summer holidays on 07.08.2023, the written decision of this case where the oral proceedings took place on 25 March ... 2022!
• The public online file shows no communications under Art. 15(9) RPBA regarding the delay between taking the decision and putting it in writing.
• Perhaps such communications are part of the non-public part of the file.

• "The appellant did not dispute the allowability of the current main request in the light of Articles 83, 54 and 56 EPC. Since no reasons to depart from the findings in the decision under appeal appear from the file, the subject-matter and the invention as claimed according to the current main request meet the patentability requirements of the EPC."

• See also T 0862/17, taken 05.05.2021, issued in writing on 08.08.2023. 

EPO 

The link to the decision is provided after the jump, 

https://new.epo.org/en/boards-of-appeal/decisions/t180969eu1 

T 0350/19 - OD refuses to adjourn

Key points

• On this blog, I sometimes say that if you need more time during the oral proceedings, you need to request a break or adjournment. The proprietor in this case did, and the adjournment was refused by the OD. The proprietor presents the issue in appeal, with the purpose of getting an auxiliary request admitted. The Board does not evade passing judgment on the conduct of the OD, seeing no error in it. 
• The Board summarizes the precise conduct of the oral proceedings and gives a quite detailed analysis, to conclude that "At the oral proceedings before the opposition division, the appellant was given the opportunity to substantiate its request for an adjournment of the oral proceedings. In the board's view, the rejection of this request in the decision under appeal is justified by the fact that the appellant had been given sufficient opportunities to overcome the objections raised in the oral proceedings before the opposition division. The appellant was also given sufficient time to formulate a new request each time. Therefore, the board cannot see any violation of the appellant's right to be heard in the refusal of the request for an adjournment."
• The OD did not admit auxiliary requests 4-13 after having rejected auxiliary request 3B.
• "If the opposition division did indeed indicate to the appellant that it did not intend to admit any further requests after auxiliary request 3B-O, as argued by the appellant and possibly implied by the sentence "The proprietor was given one more opportunity to file patentable claims" in point 9.3 of the minutes, such a statement would indeed be inappropriate. However, in view of the fact that, as stated above, the appellant was given sufficient opportunities to overcome the existing objections, the board cannot see this as a violation of the appellant's right to be heard. If the appellant's argument were to be accepted, this would ultimately mean that the patent proprietor could prevent the opposition division from taking a decision by filing a series of new requests. Not only is there no legal basis for this in the EPC, it would also clearly run counter to procedural economy."
• This decision illustrates the importance of correctly "preserving the error" both before the OD and in the initial appeal submissions, to borrow USA civil procedure terminology, to ensure that the Board reviews whether the conduct of the oral proceedings involved a violation of Article 113(1) EPC or not, as is now necessary to get a decision on the merits of the request or attack affected by the (perceived) procedural irregularity in the first instance procedure. 
• 
  
• EPO  T 0350/19

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1946/21 - (I) Transfer of priority, partial priority, and no shield effect of priority

Key points

• In this decision issued on 21.07.2023, the Board clarifies whether an assignment of a priority right must be executed at the latest on the day before the filing date of the subsequent application or can be executed on the day the subsequent application is filed but before the filing.
• "It is disputed whether the right to priority was validly transferred to the respondent and whether, therefore, the respondent was entitled to claim priority from the CN'506 application"
• "At the oral proceedings, the opponents agreed that the last question was decisive for the case in hand; if it were decided that in order to validly claim priority, the assignment could have been made on the day on which the subsequent application is filed, all the other issues would no longer be relevant."
• "It is settled case law that for the requirement of Article 87(1) EPC it is insufficient if the transfer agreement was concluded after the subsequent application was filed. The succession in title has to have taken place by the time the subsequent application is filed (T 577/11, Reasons 6.5.2; see also T 1201/14, Reasons 3.1.1.3). "
• There is no prior case law of the Boards about a same-day assignment.
• "There is a simple reason why the assignment of the right to priority need not be effective before the filing date of the subsequent application in order to meet the requirement of "successor in title" under Article 87(1) EPC: that is not what the law says."
• Introducing the requirement "would lead to the situation where a successor in title who obtained the right to priority on a certain day by way of an assignment always has to wait for the next day to file the subsequent application in order to enjoy its right to priority. In other words, the successor in title entitled to the right to priority because it was transferred to it on a certain day could not benefit from this right on that day. The Board cannot see any convincing reasons why this should be the case."
• "The applicant who on that day becomes successor in title could not file the subsequent application and enjoy a right to priority - they would have to wait until the next day but would then miss the deadline and be unable to enjoy the right to priority. The Board sees no reason for such unequal treatment."
• "It is down to the patent proprietor relying on the right to priority to demonstrate that the assignment was effective before the subsequent application is filed. Thus, if only the date on which the subsequent application was filed can be determined but not the exact time in the course of a day, the application may have to be considered to be filed at any time on the day of filing. If the assignment of the right to priority was then effective on that same date, the patent proprietor will not be able to successfully demonstrate that the then applicant had been the "successor in title" at the moment of the filing, i.e. that the assignment had been effective before the subsequent application was filed. This is not a question of legal certainty or treating applicants unequally; it is a question of fact which has to be proven by the applicant of the subsequent application claiming the right to priority.
• Indeed, it is down to the applicant filing the subsequent application to decide whether it is worth taking the risk of having to prove not only the filing date of the application and the assignment date but also the exact time of day of both. This may also depend on the chosen means of filing (delivery, postal services, electronic means) - the exact time of filing may be easier to prove for some means of filing than for others. It may thus be very much advisable, in order to avoid any issues of proof in this respect, to complete the transfer on the day before the subsequent application is filed. However, this is a decision for the applicant to make."
• As a practical tip, the applicant can just include a copy of the assignment with the filing documents of the subsequent application.
• "Taking into account the evidence on file, the Board considers that the respondent has indeed demonstrated that the contracts regarding the transfer of the right to priority had been validly concluded when it filed the subsequent application on 5 September 2014. This was not contested by the appellant or the intervener (see point 2.2 above). In view of the above considerations, the Board thus concludes that the then applicant was indeed the "successor in title" who enjoyed the right to priority within the meaning of Article 87(1) EPC.'

Partial priority

• Now turning to truly EQE D stuff.
• The application claims the priority of 8 Chinese patent and utility model applications applications and one Dutch patent application. The applicant is a US legal entity, the inventors are Chinese. The CN utility model application was published in the priority year.
• "The appellant and the intervener argued that the disclosure of [Chinese utility model application] D29 could not provide a priority right for the general subject-matter of claim 1 as granted. Consequently, the content of D29 - corresponding to a particular embodiment of the general subject-matter claimed in the contested patent - anticipated the subject-matter of claim 1, which was therefore not novel. In particular, no partial priority of claim 1 could be acknowledged in the light of the decision of the Enlarged Board of Appeal in case G 2/98 since D29 did not concern an alternative among a limited number of alternative subjects with regard to claim 1 as granted. Rather, claim 1 encompassed an unlimited number of alternatives when compared with the disclosure of D29.| 
• "The Board finds, however, that the principles established in G 1/15 apply to the case in hand."
• "In this Board's opinion, the Enlarged Board has indeed used the term "or otherwise" in the conclusion of G 1/15 to include all kinds of generalisations and thus to not be limited to the use in the subsequent application of a generic expression or a broadening of a chemical formula, etc."
• The Board does not admit the inventive step attack starting from D29. "the line of attack starting from D29 as the closest prior art is not taken into consideration (Article 13(2) RPBA 2020)."
• Question for the readers: how can D29 be cited as the closest prior art, given that the partial priority is found to be valid?
•  Assume that D29 teaches "gold" and the claim specifies "metal", the priority is invalid for the embodiments other than gold. Because D29 was published in the priority year, it can be fully cited against the claim embodiments lacking priority. The EPO does not have the shield theory of priority (see my post of 01.09.2017). It does not matter that the priority of D29 is claimed.
• Generally, a prior disclosure of "gold" would make it obvious to use other metals. However, this is a matter of fact and can depend on the circumstances. In the case at hand, the attack was late filed under Art.13(2) and the Board could dismiss it as not prima facie relevant because "Document D29 only discloses laminated elements arranged vertically in an annular array (see claim 1, and also page 3, lines 27-29, and paragraphs [0011] and [0025] of D29.1). The skilled person could not infer from D29 that the laminated elements could be arranged in a different orientation or so as to form an array which is not annular. " ... "the modification of the annular arrangement disclosed in D29 is not a mere design choice but would require a pointer in order to be considered by the skilled person. The appellant and the intervener have failed to indicate where the skilled person would find this pointer or why it belongs to the common general knowledge."
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EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.