T 0855/96 - Rechtsfrieden

Key points

• At the end of the year, a moment of reflection in the German original because Rechtsfrieden is quite untranslatable.
• "Für die Beurteilung, ob ein neues Dokument die Entscheidung wesentlich beeinflussen kann, und der Aufrechterhaltung des Patents entgegenstehen würde, ist eine eingehende Kenntnisname vom Inhalt des Dokuments unerläßlich. Wenn sich dabei herausstellt, daß das Dokument nicht so relevant ist, ist seine Berücksichtigung nicht zwingend. Es dient jedoch dem Rechtsfrieden sowie der Akzeptanz der Entscheidungen der Beschwerdekammern und trägt ihrer Bedeutung als der einzigen gerichtlichen Instanz Rechnung, die über die Patentierbarkeit des Patents mit Wirkung für alle benannten Vertragsstaaten entscheidet, wenn diese Entscheidungen den gesamten, im Beschwerdeverfahren unterbreiteten Streitstoff berücksichtigen. Die Kammer ist daher der Auffassung, daß ein im Beschwerdeverfahren vorgelegtes Dokument berücksichtigt werden sollte, wenn immer es verfahrensökonomisch vertretbar ist und das verspätet vorgebrachte Dokument nicht völlig irrelevant ist (vgl. T 339/92 vom 17. Februar 1995, Punkt 2 der Gründe).
  
  
• Wishing you peaceful holidays!

EPO 

The link to the decision can be found after the jump.

T 0056/21 - Revisiting the need to adapt the description

Key points

• Board 3.3.04 in the end decided to refer no questions to the Enlarged Board and kept to its view that the description of the application does not need to be adapted to amended claims.
• The decision is lengthy and contains a broad survey of all legal aspects of claim interpretation and many sensible observations, some of a general nature.   I will highlight a few points. The interested reader should certainly read the entire well-written decision. 
• The Board:  "The description may only be taken into consideration in determining the extent of protection of a patent in so far as it refers to a part or element of a claim. Matter disclosed in the description which is not linked to a part or element of a claim, is not to be considered (G 1/93, OJ EPO 1994, 541, point 14 of the Reasons)."
• G 1/93 r.14 "The Enlarged Board also agrees with the opponent that there is no basis under the EPC for a "footnote solution" of the kind referred to in paragraph 6 above. This follows from the mandatory character and effect of Article 123(2) and (3) EPC as discussed in the previous paragraph, as well as from the functions of the description and claims of a patent granted under the European patent system." ... "If a technically meaningful feature is included in a claim of a granted patent, Article 69(1) EPC requires that such feature, in combination with the other technical features of the claim, should be taken into account by a national court when it determines the extent of protection conferred by the patent, during infringement proceedings under national law pursuant to Article 64(3) EPC, for example". The TBA seems to apply an a contrario reasoning.
• "The Board has reservations about the view that there is a link between Articles 84 and 69 EPC which justifies the use of the description to interpret the claims for the purpose of examining an application. In fact, the assessment of patentability, which is a task entrusted to the examining divisions of the EPO alone, should be kept separate from the determination of the extent of protection conferred by a patent, which is a matter for consideration by national courts in infringement proceedings. "
• "Article 69(1) EPC and the Protocol can also not be considered to provide, by analogy, a general methodology for claim construction in grant proceedings. Applying the guidance of the Protocol in grant proceedings would amount to putting the cart before the horse. Indeed, the purpose of the grant proceedings is to arrive at an allowable definition in one or more claims of the matter for which protection is sought, rather than to establish before grant what the appropriate protection derived from such wording might be. Moreover, relying on the description to "interpret" the features in the claims before assessing their compliance with the requirements for patentability of the EPC would serve a different purpose than in the context of Article 69(1) EPC and would also have implications for the relationship between the claims and the description."
• We will see if the pending referral G 1/24 gives us any guidance on this point.
• "In summary, Article 84 EPC is not mutually complementary or subordinate to Article 69(1) EPC and the Protocol. Article 69(1) EPC and the Protocol are therefore not to be applied in examination"
  
  
• "The refusal by the examining division is also based on Rule 48(1)(c) EPC. According to this provision, a European patent application must not contain any statement or other matter obviously irrelevant or unnecessary under the circumstances."
• I understand the rule is based on Article 78 EPC.
• "Rule 48 EPC is about offending, disparaging, or irrelevant statements in a patent application, which statements may be omitted from the publication of the application. This provision is not about the patent specification and even less about purported discrepancies between the description and the claims intended for grant. As is apparent from paragraphs 2 and 3, Rule 48 EPC does not provide for a ground for refusal based on the inclusion of merely "irrelevant or unnecessary" matter. There is simply no room for an argument that irrelevant statements are to be handled more restrictively than statements that offend the public or competitors, and that maintaining such irrelevant statements can even lead to a rejection of the patent application."
• The Board's reasoning is different from the one in T1989/18 (see my post on T1444/20 where I also discussed T1989/18): "Rule 48(2) and (3) seem to indicate an additional measure, in my view, namely omitting the offensive statements from the A publication, in addition to the general sanction of refusal of the patent application when not complying with Rule 48(1) EPC. These measures were added in the course of the drafting, suggesting, in my view, that they are additions to the general sanction of refusal of the application [in case of non-compliance with a requirement specified under Article 78(1)), final clause] (see BR/135 e/71 p.25 / p.18 of the English Travaux to Rule 34 EPC; in view of BR/51 e/70 p.11 / p. 24 of the PDF; admittedly the Travaux are not very clear)" ( the link to the travaux is dead after the EPO's website upgrade and I can no longer link to individual documents in the travaux). 
• The TBA now discusses the history of the PCT provision. In the PCT provision, there is no sanction of refusal, but under the PCT, that can very well be the decision of the designated offices. The institutional set-up is different.
• There is more to say about Rule 48(1) EPC, but that is for another time.  
  
  
• For sure, the Habermassian non-coercive discourse ("herrschaftsfreier Diskurs") between the Boards will now continue (link).

The link to the decision can be found after the jump.

T 0980/22 - A purely mental design method

Key points

• Claim 1 is directed to a design process, in translation: "Claim 1: Design process for the manufacture of long-body railway carriages with different seating capacities, comprising:"
• The claim is rejected under Article 52(2)(c) as a purely mental activity.
• The Board, in translation: "claim 1 does not include a computer, nor a feature that is implemented (explicitly or implicitly) by a computer program."
• "The understanding that the manufacture itself is not a step of the construction process is also supported by the granted, independent claim 6. This is directed to the manufacture of the rail vehicle using the construction process. No further restriction would arise from claim 6 if the construction process already included the manufacture."
• It is an opposition appeal; a patent was granted with this claim 1.
• In auxiliary claim 3, claim 1 is deleted, and claim 6 is the new claim 1. Only Article 123(2) is examined. The Board reverses the OD and finds that the requirement has been complied with.  The case is remitted. 
• It seems there was no attempt to amend claim 1 into a computer-implemented design method.

EPO 

The link to the decision and an extract of it can be found after the jump.

T 0323/21 - Mathematical device

Key points

• "The invention relates to an applied cipher technique and, in particular, to a method for determining whether a nondecreasing sequence exists, without revealing input data"
• "There is a method, known from the prior art, called secure computation, for computing encrypted results from encrypted data without decrypting any of the encrypted data. Encryption is performed that distributes pieces of a numerical value among a plurality of secure computers which cooperate to perform a computation in such a manner that the result is distributed among the secure computers without reconstructing the numerical value, that is, with the result and the original value being kept encrypted"
•  Claim 1 is directed to "A nondecreasing sequence determining device (2), "
•  The device of claim 1 according to the main request consists of a combination of functional units that cooperate to assess whether a nondecreasing sequence can be created from a sequence of sets of numbers. This is achieved by selecting elements, one by one from each set in the sequence. The claim does not contain any reference to any concrete use of the result. The various functional units of the device are defined by their mathematical roles in the determination of whether or not there is a nondecreasing sequence."
• "The technical nature of the claimed subject-matter is limited to the existence of the software code running on the claimed device."
• "the mathematical functionalities defined in claim 1, to the extent that they do not interact with technical features to produce a technical effect, cannot justify the existence of an inventive step. "
• "The algorithm underlying the claimed device is exclusively of a mathematical nature. It is without any interaction with the device on which it operates. The technicality of the claimed device lies only in its materiality. Concretely, its technicality is limited to the combination of software code with the associated processing unit. The claimed device with its program code implements a purely mathematical method deprived, in its generality, of any technical purpose."
• "Independent claim 1 does not contain any concrete reference to a use of the claimed device and method. Therefore, independently of the fact that text matching is not technical in itself, no technical contribution can be derived from any specific use of the claimed invention if it cannot be derived, explicitly or implicitly, from the claimed subject-matter. "
• " More fundamentally, the effect put forward by the applicant is also not sufficient to confer technical character to a method which is mathematical by nature. In the absence of interaction with the device on which the algorithm is to be run, the recited method does not add to its technical character."
• Note, the ED rejected the application for lack of clarity. The Board's preliminary opinion was that the claims were clear and sufficiently disclosed, with a single sentence about 'technical contribution' under the inventive step. 
• There was no auxiliary request specifically directed to secure computing, it seems.
• 
  
  

EPO 

The link to the decision can be found after the jump.

T 1311/21 - Standard of proof, prior use, sale by a related company

Key points

• E7 is a user manual written by the company Sensors, Inc. for the product SEMTECH-DS sold by Sensors, Inc.
• "the board concurs with the patentee that the evidence on the question of whether E7 is part of the prior art is not in a neutral sphere of control, inter alia due to the undisputed business relationship between the opponent and Sensors, Inc., the board is of the opinion that the patentee did have opportunities to search for counter-evidence. In particular, as discussed during oral proceedings, the patentee could have directly contacted not only Sensors, Inc., but also the purchaser of SEMTECH-DS explicitly mentioned in document E7d, namely "The Texas Transportation Institute", whose contact details were even given in E7d, or searched for any other purchaser. 
• "Since the user manual E7 whose public availability prior to the priority date of the patent is at issue is neither within the sphere of control of the opponent nor within a neutral sphere of control to which both parties have access, the board is of the opinion that neither standard of proof is applicable. "
• "in certain cases, such as the present one, this binary approach to proof standards can turn out to be overly formalistic and simplistic. On the one hand, since E7 originates not from the opponent but from a third party, it cannot simply be said that the evidence "lies within the sphere of the opponent". Hence, the higher standard of proof "beyond reasonable doubt" is not to be applied without further thought. On the other hand, the arguments put forward by the patentee (see point 3.2.1 (c) above) show that there is an imbalance between the parties in the access to E7 and thus the possibility to establish whether E7 is part of the prior art, so that it can also not simply be said that both parties had access to this evidence. Hence, the lower standard of proof "balance of probabilities" is also not to be applied without further thought. Already based on these basic considerations, neither standard appears to be suitable for application. The question then arises how to assess the evidence on the public availability of E7."
• "what matters, in plain language and as concluded in T 1138/20, Reasons 1.2.1, is the deciding body's conviction on the occurrence of an alleged fact, taking into account the particular circumstances of the case and the relevant evidence before it."
• "For the above reasons, the dispute between the parties about which exact standard of proof is to be applied to the present situation can be left undecided."
• "The board is convinced that, in view of the evidence E7 and E7d, the user manual E7 was made publicly available before the priority date of the patent, i.e. 19 May 2014, for the following reasons:" (follow detailed reasons)
• "The subject-matter of claim 1 is not novel in view of document E7 (Article 54(1) EPC). 
  
  
• Turning to an auxiliary erquest, and a further document E6: "It is undisputed between the parties that the standard of proof to be applied for assessing the public availability of E6 prior to the priority date of the patent is "beyond reasonable doubt"."
• "(a) The board is convinced beyond reasonable doubt that E6 forms part of the prior art under Article 54(2) EPC for the following reasons:

  (i) E6 is a handbook for a software with the title "AVL M.O.V.E System Control 2013". In the headnote of E6 are mentioned the date "M rz 2013", the reference "AT3732D" and the revision number "Rev. 02". In the delivery note E6c, page 2, the handbook E6 is identified as item "01.30.12" and described as "M.O.V.E SYSTEM CONTROL SOFTWARE, UG DOCU, AT3732D". According to E6cc, the handbook E6 was delivered to Daimler AG on 6 December 2013. While the actual version of the handbook E6 is not mentioned in the delivery note E6c, this missing information is to be found in E6e, the veracity and context of which is certified in E6f. In fact, as explained by the opponent during oral proceedings, according to E6e in conjunction with E6f, page A14, the version 02 of E6 was valid (in German in E6f: "g ltig ab") from 8 March 2013 to 09 December 2013, i.e. on the date of the delivery of E6 to Daimler AG. It follows that there is no doubt that a handbook E6, version Rev. 2, was delivered to Daimler AG before the priority date of the patent."

• 
  
• "E6 is a user manual intended to be delivered to all purchasers of an AVL M.O.V.E system and, as a user manual, only describes how to use a product already purchased by the customer. "
• "There is no presumption recognised in the jurisprudence for the existence of a non-disclosure agreement when it comes to the delivery of goods to one of many other end customers. On the contrary, the sale of a product to one of many other end customers, who generally wishes to dispose of the product freely (e.g., as the opponent stated during oral proceedings, the product will be used by an uncontrolled and unlimited number of employees of the customer), is considered to be a typical case of an unrestricted disclosure to the public. "
  
  
• The Board remits the case as the OD had concluded that E6 was no prior art.

EPO 

The link to the decision and an extract of it can be found after the jump.

T 0123/22 - Rule 80

Key points

• The proprietor appeals against the revocation of the patent. Claim 1 as granted was held to be not novel. The proprietor in the main request splitted up claim 1 into three independent claims.
• The opponent objects under Rule 80 EPC.
• The Board turns to T295/87. "In this regard, it should first be noted that Rule 57a EPC 1973 - the predecessor provision to Rule 80 EPC - was only introduced by the Administrative Council's decision of 13 December 1994 (see (OJ EPO 1995, [page] 9 ff.). Accordingly, T 295/87 does not directly concern this provision, but rather the question of whether the amendment made to the patent claims was necessary and appropriate within the meaning of Rules 57 and 58 EPC 1973. For this reason alone, it seems questionable whether the statements made in T 295/87 [point 3]- and adopted in some later decisions - can be applied to the application of Rule 80 EPC."
• T 295/87 seems to have concerned the addition of dependent claims.
• " the board called upon to decide the present case is of the opinion that no general guidelines can be derived from Rule 80 EPC as to the form in which a patent proprietor may amend claims in order for this amendment to be regarded as being prompted by a ground for opposition (see also T 2982/18, point 2.4 of the Reasons and T 359/13, point 1.1 of the Reasons, last paragraph). In particular, Rule 80 EPC makes no distinction as to whether the additional features included in an opposed claim originate from dependent claims or from the description. The only relevant factor for assessing the requirement of Rule 80 EPC is whether the amendment made is prompted by a ground for opposition. In this case, it must be examined whether the amendment is to be regarded as a serious attempt to counter a ground for opposition (see T 750/11, point 2.3.2 of the Reasons on the latter)."
• "Whether the additional features included in an independent claim under attack originate from dependent claims or from the description can affect the complexity of the amendment and play a role in discretionary decisions to admit late submissions. However, such admission decisions must be distinguished from the application of Rule 80 EPC. Rule 80 EPC is not designed as a discretionary rule - as is clear in the German version from the use of the imperative present tense - but concerns a substantive requirement for the allowability of an amendment made in opposition proceedings. The preparatory work also confirms this (see CA/12/94 Rev 1, No. 6.2 of the Reasons: "The new Rule 57a proposes a lex specialis for amendments in opposition proceedings. It is a purely substantive regulation of the right to amend. No regulation is made here about the point in time up to which amendments are permissible [...]"). Whether the requirement of Rule 80 EPC is met can therefore - like other substantive rules - only be taken into account in decisions on the admission of claims in the context of the prima facie allowability of a claim set. Prima facie allowability, like the complexity of the amendment, can be a criterion for the exercise of discretion in the admission of late submissions."
• As far as I know, Administrative Council document CA/12/94 is not public. I leave the issue of citing non-public preparatory documents as a basis for a legal interpretation aside here because largely the same statement was published in the Notice in OJ 1995, p.416: ""  [New Rule 57a] addresses the purely substantive aspects of the proprietor´s entitlement to amend his patent, and does not specify the point in time up to which amendment is allowed: here existing practice would remain unchanged"." (link to weblog post)
• The key part of Rule 80 is "even if that ground has not been invoked by the opponent", which puts a gloss on "necessary"  in Rule 81(3) EPC (not the "appropriate" requirement in Rule 81(3)). See my post on T256/19.
• "As regards the replacement of an independent claim affected by a ground of opposition by several independent claims, the board agrees with decision T 431/22, point 1 of the Reasons, according to which Rule 80 EPC does not preclude such an amendment provided that the subject-matter of the new independent claims is restricted or modified compared to the subject-matter of the contested claim. As explained in T 431/22, it is in principle legitimate for a patent proprietor to try to cover parts of the contested independent claim in order to overcome a ground of opposition, possibly by means of two or more independent claims (see in this regard also T 2290/12, point 4.1 of the Reasons, third paragraph). As explained in T 99/04, point 13 of the Reasons, the purpose of Rule 80 EPC is not to prevent a patent proprietor from maintaining the patent as broadly as possible, taking into account the grounds of opposition. "
• "As with the inclusion of features from the description, the replacement of an independent claim by several other independent claims may affect the complexity of the amendment and play a role in discretionary decisions to admit late-filed submissions. However, as explained in point 3.7 above, such admission decisions must be distinguished from the application of Rule 80 EPC. Also to be distinguished from Rule 80 EPC is the examination of whether the requirements of Article 84 EPC are met (on the latter, see T 2290/12, point 4.1 of the Reasons, last paragraph). 
• "In summary, the question of whether the replacement of an independent claim by several other independent claims within the meaning of Rule 80 EPC was caused by a ground for opposition cannot be answered in the negative in principle [...]"
• As a comment, G1/91 can be mentioned: lack of unity is no restriction in opposition. Rule 80 EPC can not be used to undermine G1/91 by the backdoor.
• See also T 0431/22: "a limit should be drawn if such an approach of replacing an independent claim [with multiple independent claims] appears to be [...] an abuse of procedure."
• 
  

EPO 

The link to the decision and an extract of it can be found after the jump.

T 1975/19 - Transfer of priority

Key points

• The presumption of G 1/22 is rebuttable. However, the question is: how can it be rebutted? 
• R.110: "The presumption that the subsequent applicant is entitled to the priority right is a strong presumption under normal circumstances since the other priority requirements (which establish the basis for the presumption of priority entitlement) can usually only be fulfilled with the consent and even cooperation of the priority applicant (see above points 104 ff). The party challenging the entitlement to priority can thus not just raise speculative doubts but must demonstrate that specific facts support serious doubts about the subsequent applicant's entitlement to priority."
• The Enlarged Board seems to say here (and in r.113) that the presumption can be rebutted by the opponent (when contesting the priority of a patent) by "demonstrate[ing] that specific facts support serious doubts about the subsequent applicant's entitlement to priority"
• However, the Enlarged Board also states, in point 110: "The rebuttable presumption involves the reversal of the burden of proof, i.e. the party challenging the subsequent applicant's entitlement to priority has to prove that this entitlement is missing."
• The present Board: "The party challenging the subsequent applicant's entitlement to priority has to prove that this entitlement is missing (see point 110 of the reasons [of G1/22]). The presumption that the subsequent applicant is entitled to the priority right is a strong presumption under normal circumstances. The party challenging the entitlement to priority cannot just raise speculative doubts but must demonstrate that specific facts support serious doubts about the subsequent applicant's entitlement to priority."
• "Here, the evidence on file does not establish that the priority applicants did not allow the subsequent applicant to rely on the priority."
• "However, in the Board's view, considering that G 1/22 establishes a strong presumption of validity and places the burden on the opponents to prove the contrary, the lack of evidence of a transfer of the right to priority to the subsequent applicant cannot be equated with a proof that this transfer did not take place."
• The question is how point 110 of G 1/22, as a whole, must be interpreted: as prescribing that the opponent must show that something (an assignment, not even a tacit one) did not take place, or if it is sufficient for the opponent to raise substantiated "serious doubts", after which the normal rules of evidence apply?
•  "Absent any further circumstances, evidence of a transfer of the right to priority to a third party other than the subsequent applicant, such as to Alcon Inc. (see T 2431/17, point 1.5.5 of the reasons, third paragraph), does not amount either to a proof that this right to priority was not, in turn, further transferred to the subsequent applicant. "
• In this case, the inventors (applicants of the US provisional serving as the priority application) had assigned their rights to Alcon Inc. in advance in their employment contracts; there is proof of that.  Indeed, there could be an assignment (e.g. a simple email) from Alon Inc. to the applicant of the PCT application (Alcon Research Ltd.). 
• "considering the low standards applicable under the autonomous law of the EPC, in which even informal or tacit transfers of priority rights are normally accepted (see G 1/22, points 99-100 of the reasons), the fact that document D61 is entitled "License agreement" does not prima facie demonstrate either that the transfer to the subsequent applicant did not take place."
• There is indeed a license agreement between the PCT applicant and another legal entity in the group that was said to have acquired the IP rights of Alcon Inc. (see T2431/17 r.1.5.4.(c)). The proprietor had filed this document and a declaration about it in the T2431/17 procedure. 
• "as explained in G 1/22 (see point 106 of the reasons), the presumption also applies if the title to the subsequent application has not been acquired from the priority applicant but from a third party having the right to the invention in the respective territory. 
• "The presumption also applies if the title to the subsequent application has not been acquired from the priority applicant but from a third party having the right to the invention in the respective territory (for example, from the inventor, see above the figure in point 74). Also in this situation, the priority applicant must provide the necessary support under Article 88(1) EPC, and the common predecessor with respect to the title to the two applications must be deemed to consent to the subsequent applicant's reliance on the priority right like any priority applicant assigning the title to the subsequent application."
• "This presumption applies all the more in the case at hand considering that all parties involved are legal persons belonging to the same group and their employees. 
• "Accordingly, the appellants' [opponents'] late submissions are not prima facie convincing."
• The newly filed documents and objections are not admitted under Art. 12(4) RPBA 2007. 

Cross-case binding effect

• "The patent in suit derives from a divisional application. The present Board issued decision T 2431/17 in respect of the patent deriving from the parent application. In this decision, the Board, following the established case law at the time, which placed the burden of proof on the applicant asserting that priority is rightly claimed (see point 1.5.3 of the reasons), found the priority to be invalid because the succession in title had not been credibly established. The appellants invoke a binding effect of this earlier decision. The Board does not agree."

• "At most, the principle of res judicata may be applicable, though some Boards have questioned whether a final decision taken in opposition appeal proceedings could have any "cross-procedural" res judicata effect at all on separate opposition (or opposition appeal) proceedings concerning a patent granted on a divisional "

• Cross-case res iudicata was accepted in T 51/08. 

• "Res judicata is a matter finally settled by a court of competent jurisdiction, rendering that matter conclusive as to the rights of the parties and their privies, such a final judgment constituting an absolute bar to a subsequent legal action involving the same claim, demand or cause of action, and the same parties or their privies ([CLBA] V.A.10.1). As explained in T 167/93 (see point 2.5 of the reasons), this principle is of extremely narrow scope and supposes, among others, not only that the parties are the same but also that the issues of fact are the same. This is however not the case here, considering at least that the claim requests are different (in which the present case differs from T 51/08 cited by the appellants) and that the admittance of the priority issue was not under debate in the parent case T 2431/17. For these reasons already, the Board considers that the principle of res judicata is not applicable, i.e. that it neither precludes the respondent from pursuing the present different claim requests in the divisional case at hand, nor mandates that the issue of priority entitlement be admitted in the present appeal proceedings, and even less that it be considered settled."

• I'm not sure if the relevant facts are different between the two cases. Howeve, the Board does not seem to imply that if the facts would have been the same, it would have followed T51/08.

EPO 

The link to the decision and an extract of it can be found after the jump.

T 2036/22 - Please ignore that 'final' date for written submissions

Key points

• The OD revokes the patent. The proprietor appeals
•  "The appellant stated that the filing of A043 [an experimental report] represented a reaction to D41 [a report filed by the opponent]. However, even if this argument was accepted, it would not be convincing. D41 was filed on 25 April 2022, i.e. more than two months in advance of the oral proceedings before the opposition division. 
• "D41 is an experimental report filed by opponent 1 by letter dated [Monday] 25 April 2022, i.e. in advance of the final date (28 April 2022) for making written submissions before the oral proceedings set by the opposition division under Rule 116 EPC."
• The Board: "There is no reason apparent to the board to explain why a period of two months was not sufficient for submission of A043. In fact, as set out above, A043 does not contain new experimental data but merely specifies the experimental conditions under which the examples of the patent and the appellant's examples filed with the reply to the notice of opposition had been carried out. These experimental conditions must have been well-known to the appellant, meaning that A043 should have been filed before the opposition division, at the latest in the oral proceedings."
• Note, the Board does not say that the proprietor had an obligation to file A043 before the filing of A041 

EPO 

The link to the decision and an extract of it can be found after the jump.

T 1278/23 - Re-establishment

Key points

• The proprietor missed the time limit for filing a notice of appeal (and paying the appeal fee, i.e. filed neither a notice of appeal nor paid the appeal fee) and the time limit for filing a Statement of grounds.
• The proprietor files two re-establishment requests (not on the same date, incidentally).
• The re-establishment request for the appeal period was rejected because "all due care" was not proven. The appeal fee, paid with the re-establishment request, is reimbursed.
• There is only one re-establishment fee due for the appeal fee and the Notice of appeal together. 
• The re-establishment request for the statement of ground is rejected as inadmissible. The (second) re-establishment fee paid for this re-establishment request is not refunded.

EPO 

The link to the decision  can be found after the jump.

T 1741/21 - A remittal in patent year 20

Key points

•  The PCT application was filed in 2004, EPO was ISA, IPER drawn up by the EPO as IPEA, EP entry 2005, search report in 2008 with a Communication  [search report issued after an invitation under a Rule 112 EPC 1973 in 2006, see here], second communication Examining Division in 2013, summons in 2016 (after some voluntary amendments by the applicant), refusal in 2016, appeal decision in 2018 remitting to the Examining Division, grant in 2019, decision OD in 2021 rejection all sets of claims (claim requests) under Art. 100(c) due to intermediate generalision.
• The Board reverses on Art. 100(c) EPC and remits the case to the OD.

EPO 

The link to the decision can be found after the jump.

T 1798/22 - Inventive step of intermediate products

Key points

• " The [opponent /] appellant further put forward (also at the oral proceedings before the Board) that, considering that claim 1 of the patent in suit was directed to an ethylene polymer composition per se and not to a blend of polymers, the consideration whether D3 pointed towards the combination of two or more polymers was not relevant. Rather, what was to be considered was whether it would have been obvious, based on D3, to develop a polymer composition as defined in claim 1 of the patent in suit, with the aim of providing a composition which had good impact strength and optical properties, so the appellant"
• "[Based on the still leading decision T 65/82], As state of the art in relation to intermediates there are two different areas to be taken into account."
•  One is the "close-to-the-intermediate" state of the art. These are all compounds identified from their chemical composition as lying close to the intermediates. On the other hand the "close-to-the-product" state of the art must also be taken into account, i.e. those compounds identified from their chemical composition as lying close to the subsequent products."
• " With respect to the "close-to-the intermediate" state of the art, the question is whether or not the skilled man [the Board is citing T65/82] could have deduced from it the need to carry out certain purposive modifications to known compounds in order to obtain that intermediate which alone could enable him to solve the problem of making the subsequent products by means of a specific analogy process."
• T 65/82 r.12 adds: "Since the assumption is that this problem does not exist in the prior art, the answer must be in the negative, provided there is no compound already available which reacts in the same manner with substantially identical results. "
•  With respect to the "close-to-the product" state of the art, a further question then was whether or not the skilled man could have derived from it the claimed intermediate in an obvious fashion."
• As I understand it: the claimed intermediate I is used in the patent to make product P, the prior art teaches a similar compound P', the question is if the skilled person would, when trying to synthesize the known compound P', have used the same intermediate I. 
• " the Board considers that D3 does not constitute a relevant "close-to-the-product" state of the art (since it does not address at all the use as impact modifier and impact modified compositions) but rather that it could at most constitute a "close-to-the-intermediate" state of the art. "
• "However, since the problem of providing an impact modifier is not derivable from D3 itself, the answer to the question whether or not the skilled man could have deduced from it the need to carry out certain purposive modifications to known compounds in order to obtain that intermediate which alone could enable him to solve the problem of making the subsequent products can only be in the negative (see point 12 of the reasons of T 65/82)."
• The Board does not discuss the 'bonus effect' rule, perhaps this was not argued by the opponent, or perhaps this rule is not applicable in the context of T65/82, or perhaps this has to do with the fact that the Board dismisses D3 as not the closest prior art instead of holding the claim non-obvious over D3. 

EPO 

The link to the decision and an extract of it can be found after the jump.

G 2/24 - Referral - Intervention in appeal - T 1286/23

Key points

• The proprietor (only) appeals the (interlocutory) decision that the patent can be maintained in amended form. An admissible intervention is filed in appeal. The proprietor withdraws the appeal.
• G 3/04 held that (headnote) : "After withdrawal of the sole appeal, the proceedings may not be continued with a third party who intervened during the appeal proceedings." 
• Following G 3/04, the current appeal would have to be closed without decision, such that the decision of the OD that the patent can be maintained in amended form becomes final. The proprietor can then file the amended claims under Rule 82 EPC and the formal decision to maintain the patent in amended form can be issued.
• The present Board requests the EBA to reconsider the holding of G 3/04 and refers a corresponding question to the EBA.
• "if the intervener is permitted to enter at the appeal stage, and the intervener is to be considered an opponent with full rights (consistent with the above-mentioned case law), then it is inequitable to demand from the intervener the impossible, namely to retroactively establish themselves as parties who have also been parties to the earlier proceedings, in order to satisfy the requirements of Article 107 EPC, either first or second sentence."
• " Based on the above, the intervener should thus be regarded as satisfying the requirements of Article 107 EPC alone by way of the fiction derived from Article 105 EPC: the intervener becomes either one of the parties of the "any party to proceedings adversely affected by a decision" or simply an "other party to the proceedings". 
• "The adverse effect requirement can be retained and the expected adverse effect can also be defined in a straightforward manner. This can be done without requiring the intervener to have been a party to the proceedings, namely by defining the adverse effect in substantive terms as the continued existence of the very patent the intervener is alleged to have infringed."
• "Accordingly, depending on the outcome of the appealed decision, the intervener must be given the choice of entering the proceedings in any party position open to them, as above. In particular, they must be given the opportunity to file their own appeal in a given case, of course upon payment of the appeal fee."
• "In the Board's view, it follows from the above that the intervener Geske by advancing their grounds of opposition and by properly paying the opposition and appeal fee within the three-months time period of Article 105 EPC is entitled to continue appeal proceedings even upon a withdrawal of Beurer's appeal. This result is however at odds with decision G 03/04. "
• " For all these reasons, the Board decides to refer a question to the Enlarged Board of Appeal for decision, as set out in the order. It is understood that the term "all appeals" is intended to cover all appeal situations, irrespective of the number of original appellants, whether only one or several, so that the question referred encompasses the situation of the "sole appeal" within the meaning of G 03/04."
• Question presented: "After withdrawal of all appeals, may the proceedings be continued with a third party who intervened during the appeal proceedings? In particular, may the third party acquire an appellant status corresponding to the status of a person entitled to appeal within the meaning of Article 107, first sentence, EPC?"
• In case you wonder, there is no divergence in the case law. That is no requirement for a referral by a TBA (Article 112 EPC) as confirmed by Art. 21 RPBA: "Should a Board consider it necessary to deviate from an interpretation or explanation of the Convention contained in an earlier decision or opinion of the Enlarged Board of Appeal according to Article 112, paragraph 1, EPC, the question shall be referred to the Enlarged Board of Appeal".
• 
  
• EPO 

The link to the decision and an extract of it can be found after the jump.

T 2149/22 - Offering to cancel independent claims

Key points

•  The OD revoked the patent. The proprietor appeals. In translation: "the patent proprietor as appellant requests [in the statement of grounds], in the alternative, that the patent be maintained to the extent of auxiliary request 1 [], or, further, in the alternative, "to the extent  the independent patent claims and the corresponding dependent claims are considered to be new and inventive" ("im Umfang der als neu und erfinderisch angesehenen unabhängigen Patentansprüchen und den davon abhängigen Unteransprüchen"). 
• The proprietor does not submit the written-out auxiliary requests with the statement of grounds.
• The Board; "The request for maintenance in the scope of the independent patent claims considered to be new and inventive and the dependent subclaims, which was filed with the statement of grounds of appeal [] comprises in the present case seven possible combinations of independent claims, namely (a) independent claims 1, 2 and 6 of auxiliary request 1, b) independent claims 1 and 2, c) independent claims 1 and 6, d) independent claims 2 and 6, e) only independent claim 1, f) only independent claim 2, or g) only independent claim 6."
• AR-2 was filed during the oral proceedings before the Board and directed to combination d) of the above list, i.e. original claims 2 and 6 which were independent claims in the patent as granted. 
• "The board considers it excessive formalism to require in the present case that fully worded auxiliary requests directed at the seven possible combinations mentioned above should have been filed with the statement of grounds of appeal."
• Note, this is the reason why the Board considers Art. 12(3) RPBA ("specify expressly all requests" to be complied with. 
• "Thankfully, in the present case the opposition division, after finding that claim 1 of auxiliary request 1 lacked novelty, also examined the requirements of novelty and inventive step for its other independent claims 2 and 6, see paragraphs 6-9 of the contested decision. Therefore, the subject matter of the appeal proceedings has already been fully dealt with by the opposition division and neither the parties nor the board have to deal with substantively new arguments that have not yet been dealt with in the previous proceedings. "
• Note, this is the reason why it is no case amendment in the sense of Art. 12(4). It is unclear to me if the OD considered claims 2 and 6 to be allowable and/or how the parties presented their arguments on those claims in appeal. 
• "Therefore, in the exercise of its discretion under Article 114(2) EPC and Article 13(1)RPBA, the board decided to admit auxiliary request 2". 

EPO 

The link to the decision and an extract of it can be found after the jump.

T 2043/22 - Combinations of features

Key points

• "In the auxiliary requests, several amendments are made and differently combined. The individual amendments are:
  
  Amendment A1 concerns feature 1.2.2:
  
  "a leaflet assembly (102) mounted on and positioned within the frame (104), [...]" [the PDF file of the decision uses funderlining to show the amendments)
  
  Amendment A2 also concerns feature 1.2.2:
  
  "[...] a plurality of leaflets (106) that are connected to each other at commissure tabs to form commissures of the leaflet assembly (102);"
  
  Amendment A3 adds ...
  
  [...] Amendment A5' is based on corrected amendment A5 and also submitted as an alternative to A5. [...]
  
  Additionally claims 2, 3, 6 and 11 to 14 as granted are deleted.
• Auxiliary request 1 includes amendment A1.
  
  Auxiliary request 2 includes amendment A2.
  
  Auxiliary request 3 includes amendment A3.
  
  Auxiliary request 4 includes amendment A4.
  
  Auxiliary request 5 includes amendment A5.
  
  Auxiliary request 6 includes amendments A1 and A2.
  
  Auxiliary request 7 includes amendments A1 and A3.
  
  Auxiliary request 8 includes amendments A1 and A4.
  
  Auxiliary request 9 includes amendments A1 and A5.
  
  Auxiliary request 10 includes amendments A1, A2 and A3.
  
  Auxiliary request 11 includes amendments A1, A3 and A4.
  
  Auxiliary request 12 includes amendments A1, A2, A3 and A4.
  
  Auxiliary request 13 includes amendments A2 and A3.
  
  Auxiliary request 14 includes amendments A2 and A4.
  
  Auxiliary request 15 includes amendments A2, A3 and A4.
  
  Auxiliary request 16 includes amendments A2, A3, A4 and A5.
  
  Auxiliary request 17 includes amendments A3 and A4.
  
  Auxiliary request 18 includes amendments A3, A4 and A5.
  
  Auxiliary request 19 includes amendments A4 and A5.
  
  Auxiliary request 20 includes amendments A1, A2, A3, A4 and A5.
  
  Corrected auxiliary request 5 includes corrected amendment A5.
  
  Corrected auxiliary request 9 includes amendment A1 and corrected amendment A5.
  
  Corrected auxiliary request 16 includes amendments A2, A3, A4 and corrected amendment A5.
  
  Corrected auxiliary request 18 includes amendments A3, A4 and corrected amendment A5.
  
  Corrected auxiliary request 19 includes amendment A4 and corrected amendment A5.
  
  Corrected auxiliary request 20 includes amendments A1, A2, A3, A4 and corrected amendment A5.
  
  Auxiliary request 5' includes amendment A5'.
  
  Auxiliary request 9' includes amendments A1 and A5'.
  
  Auxiliary request 16' includes amendments A2, A3, A4 and A5'.
  
  Auxiliary request 18' includes amendments A3, A4 and A5'.
  
  Auxiliary request 19' includes amendments A4 and A5'.
  
  Auxiliary request 20' includes amendments A1, A2, A3, A4 and A5'."
  
  

• " Auxiliary request 20' does not meet the requirements of Article 54 EPC for the same reasons as auxiliary request 16'."

• " In claim 1 of all other requests (auxiliary requests 1 to 20, corrected auxiliary requests 5, 9, 16, 18 to 20 and auxiliary requests 5', 9', 18' and 19') the amendments A1 to A5 (alternatively corrected amendment A5 or amendment A5') are combined in various ways. The subject-matter of claim 1 of all of these auxiliary requests is broader than the subject-matter of claim 1 of auxiliary request 20'. As auxiliary request 20' does not meet the requirements of Article 54 EPC, also all other auxiliary requests are not allowable for the same reasons as set out in points 2 and 3 above."

• 
  

EPO 

The link to the decision can be found after the jump.

T 2053/20 - A remedy for the opponent/appellant

Key points

• The opponent pays the appeal fee using automatic debit order...
• Question for EQE candidates: what goes wrong?
• AAD 3.2 excludes "all fees not payable by the applicant or patent proprietor", meaning "all fees payable by a party other than the applicant or patent proprietor".
• The fee payment is invalid.
• Another question for EQE candidates: what are the available remedies?
• The Board, in translation: "It is undisputed that the appellant expressed its intention to pay the appeal fee in the notice of appeal dated 18 December 2020 and the accompanying letter. The methods used to do so, namely the automatic debit order on the one hand and the direct debit from the current account, which was not issued in the correct electronic format, on the other hand, were not permitted under the provisions of the ADA and its annexes for payment of the appeal fee. This would certainly have been apparent to the appellant if she had studied the ADA carefully. However, the corresponding notification from the EPO regarding the non-execution of the payment request, as mentioned above and actually provided for in the ADA, was not sent. Such a notification might have led to the timely payment of the appeal fee, since the corresponding two-month period did not expire until 7 January 2021, 19 days after receipt of the notice of appeal."
• "Moreover, in previous cases the EPO has accepted without comment the payment of fees by the appellant by invoking the automatic debiting procedure and debited the appeal fee from the appellant's deposit account even in situations where the appellant acted as opponent, even though this was not in accordance with the applicable rules. The appellant was also not informed of any change in the EPO's practice in this regard."
• "The board therefore grants the opponent protection of legitimate expectations (EPO case law, 10th edition 2022, III.A). ["Die Kammer gewährt daher der Einsprechenden Vertrauensschutz"]
  In the absence of any communication to the contrary from the EPO, the appellant could assume under the circumstances that its payment instructions for debiting the appeal fee made on 18 December 2020 had been accepted and executed. It only became aware that this was not the case with the board's decision of 21 September 2023. The appeal fee was then paid within the time limit set by the board."
• As a comment, the Board here applies the rule that "In accordance with the principle of good faith, the EPO is obliged to warn users of the European patent system of omissions or errors which could lead to a final loss of rights. A warning would always be necessary when one could be expected in all good faith (G 2/97)" together with the rule that "The Legal Board held in J 13/90 (OJ 1994, 456) that if the applicant could expect to receive a communication warning him of an impending loss of rights, but that communication was not issued in due time, the EPO must set a new period allowing the applicant to remedy the deficiency and perform the omitted procedural act in due time (see also T 14/89)."
• The CLBA discusses these rules in III.A.4, part of chapter III.A "The principle of the protection of legitimate expectations": "The protection of the legitimate expectations of users of the European patent system has two main principles. [1] It requires that the user must not suffer a disadvantage as a result of having relied on erroneous information or a misleading communication received from the EPO (see in this chapter III.A.3.). [2] It also requires the EPO to warn the applicant of any loss of right if such a warning can be expected in good faith. This presupposes that the deficiency can be readily identified by the EPO (see in this chapter III.A.4.)." The requirements for both rules are quite different. 
• Furthermore, in the case at hand, the instruction "turning on" the automatic debiting was given in the Form accompanying the Notice of appeal. 
• In the case at hand, the opponent had paid the appeal fee after receipt of a Communication of the Board under Rule 100(2) EPC, which pointed out that the appeal fee had not been paid (the deposit account of the opponent was not charged by the EPO). The Board therein did not set a time limit for paying the appeal fee under J13/90, but the opponent/appellant paid the fee with a debit order in the period set for replying to the Communication. 

The link to the decision and an extract of it can be found after the jump.

T 3122/19 - Functional compositions for second medical uses

Key points

• Claim 1 reads: "1. A compound having FGFR inhibitory activity or a pharmaceutically acceptable salt thereof for use in a method of treating or preventing cancer
  - in a patient who has been identified to express a fusion polypeptide comprising an FGFR3 polypeptide and a BAIAP2L1 polypeptide or to carry a polynucleotide encoding the fusion polypeptide, [wherein the polypeptide expressed in the patient has a certain sequence]
  - wherein the compound or a pharmaceutically acceptable salt thereof is capable of inhibiting a growth of a cancer cell expressing the fusion polypeptide or having a nucleotide encoding the fusion polypeptide."
• The compound is hence only defined in functional terms. 
• The Board: "Claim 1 (see section I.) is a purpose-restricted product claim directed to a compound having "FGFR inhibitory activity" for use in a method of treating or preventing cancer in a patient who has been identified as expressing a particular biomarker or as carrying a polynucleotide encoding it. This biomarker is a fusion polypeptide comprising an FGFR3 polypeptide and a BAIAP2L1 polypeptide, each polypeptide being defined by particular sequences. The claim further specifies that the claimed compound is capable of inhibiting the growth of a cancer cell expressing this fusion polypeptide or having a nucleotide encoding it."
• The Board, under sufficiency: "[the question is]  (1) whether the skilled person would have been able, based on the disclosure in the application as filed and/or on their common general knowledge, to obtain compounds as defined in claim 1 without undue burden. These compounds are defined by two functional features, namely that (i) they have FGFR inhibitory activity and that (ii) they are capable of inhibiting the growth of a cancer cell expressing the fusion polypeptide comprising an FGFR3 polypeptide and a BAIAP2L1 polypeptide."
• "in addressing issue (1), [the opponent] referred to the approach developed in particular in decision T 1063/06 (OJ EPO 2009, 516) in the context of so-called "reach-through" claims. The appellant [opponent] argued that the patent did not enable the skilled person to identify all compounds falling within the broad dual-function definition of the claim without undue burden and, accordingly, such alternatives were not available to the skilled person.

• " The board is of the opinion that the situation underlying decision T 1063/06 is not the same as that in the case at hand. The invention at stake in T 1063/06 was based on the discovery that a known illness (in this case cardiovascular disease) could be treated by compounds having the capability of stimulating the soluble guanylate cyclase enzyme independently of the heme group in the enzyme, i.e. the compounds stimulated both the heme-containing soluble guanylate cyclase enzyme and the heme-free soluble guanylate cyclase enzyme. No compounds having this capability were known in the art and such compounds could only be identified by means of a newly disclosed screening method as a new research tool. The claim under consideration in that decision was thus for the use of (hitherto unidentified and thus unknown) compounds, which were defined solely in terms of the specific new capability (function), for the manufacture of a medicament to treat a known illness.

• " By contrast, the invention underlying the case at hand relates to the identification of a subgroup of cancer patients which is susceptible to treatment with FGFR inhibitors. The inventors found that a known human cancer cell line (SW780), which was known to be susceptible to the antiproliferative effect of known FGFR inhibitors, expresses a fusion polypeptide of the FGFR3 polypeptide and the BAIAP2L1 polypeptide which was also identified in various other types of human-derived cancer cells. The claim under consideration is for FGFR inhibitors which have the capability of inhibiting the growth of cancer cells expressing a FGFR3-BAIAP2L1 fusion polypeptide for use in a method of treating cancer in patients who express a FGFR3-BAIAP2L1 fusion polypeptide. This is not the same situation as in T 1063/06, in which any kind of compound (without guidance in terms of chemical structure or other selection rules) would have to be screened for the desired enzyme-stimulating activity."

• "Numerous FGFR inhibitors were known from and made available in the art, and are also identified by their chemical names or structures in the application as filed. These constitute a large pool of candidates. Together with the general structural and functional requirements mentioned in the application as filed, this information would, moreover, have provided some orientation to the person skilled in the art for identifying further FGFR inhibitors, if required"

• "Testing for the second level activity against cancer cells (as described in the application as filed) would not have had to be carried out by trial and error on randomly selected compounds, but only on a limited selection of compounds, i.e. compounds chosen from the class of FGFR inhibitors. No evidence was provided to show that a large proportion of FGFR inhibitors would fail this test (in which case identifying active compounds would be an undue burden on the skilled person). "

• Regarding another decision:" In the case underlying T 1959/15, the invention resided in providing a further class of compounds for treating the disease; in the present case, the invention resides in the identification of the specific genetic make-up of a subgroup of patients who are particularly susceptible to treatment with a known class of compounds. For this reason alone, the findings in decision T 1959/15 do not directly apply to the facts and circumstances of the case at hand."

• In a way, we are patenting a diagnostic method, it seems.

• "unlike the conclusion in T 1959/15 for the claim at stake therein, for the reasons already set out in point 57. above this board takes the view that under the circumstances of the case at hand, the mere fact that claim 1 also covers compounds beyond those shown to be suitable for the therapeutic use does not automatically equate to an undue burden of screening arbitrary compounds. Moreover, this does not result in the claim being able to be classified as a "reach-through" claim."

• There are more interesting issues in the case, e.g. making the claim novel and inventive by adding "wherein said patient is a human patient"

EPO 

The link to the decision and an extract of it can be found after the jump.

T 1563/22 - The prevailing proprietor

Key points

• The Board, in translation: "6. Auxiliary request 4 - Admission
• "6.1 Auxiliary request 4 was filed for the first time with the reply to the appeal and thus represents a change in the respondent's case, the admissibility of which is subject to the discretion of the Board, Article 12(2), (4) RPBA."
• "6.2 Since the opposition division found the existence of novelty and inventive step in its summons supplement and confirmed this in the decision, the patent proprietor had no reason to file auxiliary requests restricted in this regard in the opposition proceedings, contrary to the appellant's view. Therefore, auxiliary request 4 cannot be refused as inadmissible under Article 12(6) RPBA."
• " In this context, the appellant [opponent] cited three decisions (T847/20, T825/20, T1326/21) in the oral proceedings, which it found in chapters VA4.3.7.d) and VA4.3.7.f) of the case law of the boards of appeal. It did not provide any substantive arguments on the relevance of these decisions (in fact, the opposition division appears to have affirmed the existence of a ground for opposition in each case, unlike in the present case), and the board does not consider itself obliged to carry out an independent examination of their relevance. On the contrary, this would be a violation of the principle of impartiality."
• "6.3 Since the Board considers the filing of auxiliary request 4 together with the reply to the appeal to be a timely and appropriate response by the patent proprietor to the opponent's appeal, it has admitted it into the proceedings in the exercise of its discretion under Article 12(4) RPBA.
• AR-4 contains additionally the feature of original claim 2. The opponent/appellant commented on that feature in the Statement of grounds.
• "the process of claim 1 according to auxiliary request 4 involves an inventive step within the meaning of Article 56 EPC in the light of the prior art cited."

EPO 

The link to the decision can be found after the jump.

T 1132/20 - A cloud-computing provider's non-technical business decision

Key points

• As for difference (a), although document D3 does not disclose any other "middleware function" such as firewall or encryption/decryption functionality, these types of functionality are well known in the art. In the context of document D3, a cloud-computing provider's decision to provide such functionality on an optional basis and configured in accordance with the tenants' individual preferences (as negotiated in per-tenant policy agreements or "contracts") is a non-technical business decision.
• It's been a while since we saw the CardinalCommerce business person on this blog. Apparently, he/she/they moved on from insurance, gambling and tax advice to cloud computing services. 
• "the problem-and-solution approach as developed in the case law of the board of appeal is not a mechanistic tool for assessing inventive step but should rather be seen as a useful framework which can help answering in an objective manner the question whether, having regard to the state of the art, the skilled per son could and would have arrived at the invention. The problem-and-solution approach must be applied having in mind the purpose of Article 56 EPC, which is to prevent a patent from being granted on routine or otherwise obvious modifications of what, at the effective filing date, had been available to the public. "

EPO 

The link to the decision can be found after the jump.

R 0008/19 - Objective technical problem, length of review procedure

Key points

• "In the present case, a cornerstone of the Board's inventive step reasoning [in T1537/16]  with respect to claim 1 of auxiliary request 1 was the construction of the objective problem solved by the claimed subject-matter. In line with its reasoning concerning the main request, the Board did not follow the proprietor's view that the objective problem consisted of the provision of an improved pharmaceutical formulation with reduced variability in its pharmacokinetic parameters, since it considered that a corresponding effect had not been demonstrated. But it also did not follow the petitioner's view that the problem was merely the provision of an alternative tablet. Instead, it considered that the objective problem solved was the provision of a pharmaceutical formulation with a zero order release profile."
• The TBA on the main request: The TBA could not follow the argument of the proprietor that "the eroding matrix of claim 1 of the main request necessarily provides a zero order release profile, which is not the case of D1". "An eroding matrix is not necessarily a matrix with a zero order release. Said term is not necessarily connected with specific release properties, it only defines a way of releasing by slow dissolution". The Technical Board also found that the dosage form of example 16 of D1, with a matrix system and a water-insoluble rate-controlling polymer, inherently provided an eroding matrix.
• The TBA on auxiliary request 1: "contrary to claim 1 of the main request which referred generally to a "rate-controlling agent" [of the erosion matrix, I understand], claim 1 of auxiliary request 1 has been restricted to a water-soluble rate-controlling polymer". "it is clear that the distinct nature of the rate-controlling agent shows an effect on the release of the fumaric acid ester from the core tablet. Accordingly, the technical problem is the provision of a pharmaceutical formulation showing a zero order release."
• The Enlarged Board: "The question arises, whether the Board's reliance on an objective problem that was never mentioned to the petitioner amounts to a fundamental violation of the right to be heard. In the Enlarged Board's view, this question cannot generally be answered in the affirmative. The application of the problem-solution approach can be viewed as a method of determining and reasoning whether a claimed invention fulfils the requirement of inventive step (Articles 52 and 56 EPC). "
• "For the reasons given below, the Enlarged Board comes to the conclusion that the Board based its decision only on grounds that were objectively foreseeable by the parties, in view of their submissions and the Board's statements during the appeal proceedings. During the entire proceedings leading to the decision under review, the zero order release profile - the provision of which was eventually adopted by the Board as the objective technical problem - was discussed, either as a quality of the erosion matrix or as a feature that was desirable per see."
• Follows a detailed analysis of the facts of the specific case in points 19 - 27.
• "Under these circumstances, it could not be surprising that the Board connected the additional limiting feature of claim 1 of auxiliary request 1 ("wherein the rate-controlling agent is a water-soluble polymer") with the generally acknowledged advantages of a zero-release profile, which profile was also set out for examples 18 and 22 in Figure 1 of the patent."
• The Enlarged Board also includes a general remark: "In the context of the problem-solution approach, there should normally have been a discussion on the relevant prior art, the differences between the prior art and the claimed invention, and the technical relevance of these differences. Within the framework of what has been addressed in the course of these discussions, the deciding organ should be free to apply the problem-solution approach as it sees fit, and even identify an objective problem that has not been explicitly spelled out as such during the proceedings. In any case, the objective problem eventually used in the reasoning has to be based on technical effects (or the lack of any) and the features of the invention causally linked to such effects, upon which the parties had an opportunity to comment."
  
  
• The decision in case R 8/19 was issued in writing on 20.09.2024. The decision was taken on 12.04.2024. The petition for review was filed on 25.09.2019, so the Enlarged Board took five years (minus a few days) to decide on the case. The decision was taken by a five-member panel.  
• The Enlarged Board also needed more than three months to issue the decision, but Art. 15(9) RPBA has no counterpart in the RPEBA.
• At the time of writing, R12/20 is still awaiting the written decision, and three petitions that were filed in 2021 are still pending. It seems the Enlarged Board is clearing up a (corona-induced?) backlog. 
• The application was filed as a PCT application in 2010. The overall length of the procedure was 14 years. 
• No interruption of the procedure is visible in the Register (Rule 143(1)(t) EPC).

EPO 

The link to the decision and an extract of it can be found after the jump.

J 0003/24 - Late FP request granted

Key points

• "The present application EP 22 155 454.6 was filed on 7 February 2022. The examination and designation fees were due on 10 February 2023 (Friday). These fees were paid on Monday 13 February 2023. By letter of 12 February 2023, the appellant's representative requested that the payment be considered as being on time, as he had assumed that he had given an automatic debit order at the time of taking over representation from the previous representative, but on checking the deposit account on 12 February 2023 it turned out that this was not the case."
• Note, 'due' is here not used in the EPC sense of the first day a fee can be paid validly (Visser's Annotated EPC, 2024, page 855). 
• The Receiving Section allowed the appeal. As the decision is not reasoned, we don't know why.
• "On 21 February 2023, a notification of loss of rights pursuant to Rule 112(1) EPC was sent undated, and was sent again on 7 March 2023, informing the appellant that the application was deemed to be withdrawn because the examination fee and the designation fee had been paid after expiry of the prescribed period for payment. The notification indicated as available means of redress a request for a decision under Rule 112(2) EPC, a request for further processing under Article 121 EPC and a request to consider the fee to have been paid in due time under Article 7(3), (4) Rules relating to Fees (RFees), each with a two-month time limit for filing. 
• IV. On 1 June 2023, the appellant submitted an enquiry regarding his request of 12 February 2023."
• " By a communication of 22 June 2023, the appellant was informed that no valid request for further processing had been filed as the relevant fee had not been paid in due time. "
• "By letter of 29 June 2023, the appellant reiterated his request that the payment of the fees be considered as having been made in time. He explained that he had not interpreted the notification of loss of rights as a reaction to his request filed on 12 February 2023, but as an automatically generated letter. As an auxiliary request he claimed further processing and requested that the required fees be debited from his deposit account."
• Interestingly enough, for some reason, the FP request of 29 June 2023 was apparently granted in appeal by the Receiving Section by interlocutory revision.
• The Legal Board: " In the present case, it must be conceded to the appellant that the notification of loss of rights of 21 February / 7 March 2023 according to Rule 112 EPC made reference to the late payment but did not expressly address the appellant's request of 12 February 2023 for the late payment to be considered as having been made on time. From an objective point of view, it was therefore not clearly apparent whether the Receiving Section had taken this request into account in its communication.
However, on an objective basis and under the present circumstances, it was not reasonable for the appellant to completely disregard this communication. Even if the appellant's representative had considered the notification as having been generated automatically without taking into account the request of 12 February 2023, it is expected that communications from the European Patent Office will be observed. The present notification pointed out the legal remedies available to overcome the loss of rights caused by the late payment of the examination and designation fees and, in particular, indicated the time limit for filing a request for further processing (Article 121 EPC, Rule 135(1) EPC). Such an official communication cannot simply be ignored and set aside. Rather, it was the appellant's own responsibility to enquire about the situation regarding his request of 12 February 2023 before expiry of the triggered time limits in order to ensure that he did not suffer any loss of rights. The fact that he only contacted the Receiving Section on 1 June 2023 must be attributed solely to the appellant."
The appellant could also have requested a decision under Rule 112 on whether the notice of loss of rights was correct; suitably with an auxiliary request for further processing.
• However, the Receiving Section granted the FP request in interlocutory revision, and that decision stands. 
• The request for reimbursement of the appeal fee is rejected.

•  

 

 

 

EPO 

The link to the decision and an extract of it can be found after the jump.