T 2020/20 - Change of ED composition between OP and decision taken in writing

Key points

•  "At the end of the oral proceedings, the examining division informed the appellant that it could expect a communication pursuant to Rule 71(3) EPC on the basis of auxiliary request 2, provided that a clean copy of the application documents was filed."
• "On 21 August 2019, the examining division issued a third communication pursuant to Rule 71(3) EPC expressing its intention to grant a European patent based on auxiliary request 2. In an annex, the examining division set out the reasons why it had admitted the third-party observations and why it considered the claims of the main request and auxiliary request 1 to be unclear and thus not allowable."
• " By letter dated 20 December 2019, the appellant indicated that it did not approve the text proposed for grant in the third communication pursuant to Rule 71(3) EPC. It requested a decision which could be appealed if the examining division was not able to grant a patent based on either the main request or auxiliary request 1."'
• "On 25 June 2020, the examining division issued the decision under appeal. The reasoning given for the admittance of the third-party observations and the non-allowability of the main request and auxiliary request 1 is an almost verbatim copy of the reasoning annexed to the third communication pursuant to Rule 71(3) EPC. Compared to the composition of the examining division which had conducted the oral proceedings and which had issued the third communication pursuant to Rule 71(3) EPC, the composition of the examining division which signed the decision under appeal was changed: the first examiner was no longer part of the division, the previous chairman had become the first examiner and a new chairman had been appointed."
• "It is established case law that a signed written decision issued after oral proceedings should be taken by the same members of the first-instance division who conducted the oral proceedings. If a change in the composition of the division occurs after oral proceedings, parties should therefore be offered new oral proceedings."
• "According to Article 18 EPC, oral proceedings should be held before the examining division itself. The right under Article 116(1) EPC to have oral proceedings can therefore only mean a right to have oral proceedings before the examining division in a composition which also takes the final decision on the case. If the division conducting the oral proceedings could be different from that taking the final decision, oral proceedings would be deprived of its purpose and Article 116(1) EPC would be meaningless."
• The decision is set aside, and the appeal fee is reimbursed.
• Compare T 0229/18, where the Chair of the Board retired between the oral proceeding and the issuing of the written decision. These two decisions may not be inconsistent with each other, but it is a rather delicate balance. 

EPO 

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

T 1625/21 - Shuffling auxiliary requests in appeal

Key points

• Some auxiliary requests were admissibly filed before the OD and were substantiated in the proprietor's statement of grounds. The OD had maintained the patent in amended form. Can the Board hold these auxiliary requests inadmissible? 
• If yes, on what ground?
• The answer is that the requests were renumbered in appeal, from Auxiliary Requests 8-9 before the OD to requests 3-4 in appeal. I understand that AR-1 before the OD was filed during the oral proceedings before the OD (see the minutes), was held allowable by the OD, and was narrower than AR's 8 and 9.  
• The Board, in German: " Diese Anträge sind aus im Wesentlichen den gleichen Gründen nicht zulässig, da sie auf den erstinstanzlichen Hilfsanträgen 8-9 (in der mündlichen Verhandlung umnummeriert zu Hilfsantrag 9 bzw. 10) beruhen, die die Patentinhaberin zugunsten des damaligen Hilfsantrags 1 der Einspruchsabteilung nicht zur Entscheidung vorgelegt hat. Auch diese Anträge versuchen die Einschränkung auf w-Wert zwischen 20 und 40 (Hilfsantrag 5) bzw. auf die Verwendung des nichtionische Tensids (Hilfsantrag 3 und 4) rückgängig zu machen bzw. durch andere Einschränkungen zu ersetzten. Einsprechende Anträge hätten jedoch bereits erstinstanzlich eingereicht werden können und sollen (Artikel 12(4) und (6) VOBK)." 

EPO 

The link to the decision is provided after the jump.

T 0600/21 - Admissibility, complexity, and matters the OD did not arrive at

Key points

• The Board decides not to admit AR-3 in this opposition appeal.
• The proprietor filed these requests in their reply to the appeal of the opponent. The Board in machine translation notes that: "it did not explain which objections the respective changes address and why the changes are suitable for overcoming the objections raised against the main application. Without this information, the requirement of Article 12(3) RPBA that the response to the complaint must contain the respondent's complete complaint is not fulfilled, unless the changes are self-explanatory in this respect. However, this is not the case." 
• The amendment is limiting the claimed detergent composition to a solid detergent composition.
• The Board: "solid dishwashing detergents are undisputedly part of the state of the art, so it is not self-explanatory why the inclusion of this feature eliminates the objection of lack of inventive step." (the higher ranking request was rejected as obvious over D12).
• The Board, however, also acknowledges that D12 is about liquid detergents, not about solid detergents. The Board does not explain why it is not self-evident that an amendment that changes the closest prior art is not a suitable amendment in reply to an inventive step attack.
• The Board notes that if these auxiliary requests are admitted, then D25 filed by the opponent also has to be admitted, and inventive step starting from D25 has to be discussed. This would run against procedural economy and would be a further reason for not admitting the auxiliary request under Article 12(4) RPBA.
• The Board does not indicate that the amended claim would be obvious starting from D12. In fact, the need to consider inventive step starting from D25 speaks against this, it seems to me.
• The Board does not indicate that the amended claims should have been submitted in the first instance proceedings under Art. 12(6).
• The Board does  not (or at least not explicitly) acknowledge that Art. 12(4) fifth sentence, mandates the consideration of all three of the following factors: "The Board shall exercise its discretion in view of, inter alia, (i) the complexity of the amendment, (ii) the suitability of the amendment to address the issues which led to the decision under appeal, (ii) and the need for procedural economy." (emphasis and numerals added).
• The Board does not consider, or at least not explicitly, factor (ii), which is the only factor in the list that is by its nature in favour of admitting any amendment (i.e. a high score on factor (ii) is a reason for admitting the amendment, a high score of factors (i) and (iii) is a reason for not admitting the amendment).
• The analysis that the responsive filing of D25 by the opponent can be considered under the factor complexity (factor i) seems in line with Müller and Mulder's Proceedings before the European Patent Office, 2^nd ed., 2020, p.125.  
• The OD found the set of claims inventive over D12. So, the OD would not have arrived at the amended set of claims even if AR-3 had been filed before the OD, and the Board would have no reasoning by the OD to review, it seems to me. The filing of AR-3 at the beginning of the appeal, in that sense, does not add procedural complexity, compared to the case where it would have been filed before the OD. Moreover, the OD would have no reason to consider inventive step over D25 for a request that it would not have arrived at had the request been pending in the first instance proceedings (at least the OD would not have to include any reasoning on that point in the decision because the OD considered a higher-ranking request to be allowable). So, introducing D25 in appeal does not seem to increase complexity. 
• As I understand it, AR-3 was the highest-ranking request after the set of claims held allowable by the OD. 
• The application was filed in 2005 as a PCT application and granted in 2018.

• EPO 

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

T 1656/17 - Dealing with a partiality objection

Key points

• This decision was issued in October 2023 after a five-year appeal procedure (but with a separate decision on a partiality objection). The grant was in 2014. The PCT filing date is in 2008. A petition for review is pending.
• The first oral proceedings took place on 5 July 2022. The Board concluded that claim 1 was obvious over D10. The oral proceedings were adjourned to 14 July 2022, as vico, with the consent of the parties.  The appellant/proprietor withdrew his consent on 8 July. Oral proceedings were resumed on 21 October 2022 after a new summons. 
• The Board refused to reopen the debate, giving rise to a first objection under Rule 106.
• Two further objections were raised under Rule 106.
• " The oral proceedings were interrupted at 17.49 hrs for deliberation by the board on the admittance of documents D38a, D46, D47 and D48.
• " At 18.20 hrs, one of the respondent's representatives entered the room where the board was deliberating and closed the door behind him ("the room incident"). He asked about the timetable of the oral proceedings on that day as the respondent's representatives had to catch a plane to London. The chair immediately asked him to leave the room as the board was deliberating, adding that the parties would be called in in a few minutes. The representative immediately left the room at 18.21 hrs." 

• A new objection under Rule 106 was filed by the proprietor.

• " On 27 October 2022, the board issued summons to in-person oral proceedings, according to which the oral proceedings were to be resumed on 11 January 2023."  These summons were for three days.

• " By letter dated 28 December 2022, the appellant raised objections of suspected partiality under Article 24(3) EPC against the members of the board." 

• " On 11 January 2023, at 14.05 hrs, the oral proceedings before the board in its original composition were interrupted and an alternate board was appointed. After the alternate board decided [on 12 January, with oral proceedings before the alternate Board on 11 and 12 January] that the objection of suspected partiality against the members of the board in its original composition be refused, the oral proceedings before the board in its original composition were resumed on 13 January 2023, at 9.02 hrs. 

• " At 09.04 hrs, shortly after the resumption of the oral proceedings before the board in its original composition on 13 January 2023, the appellant filed the following objection under Rule 106 EPC" 

• " At 16.53 hrs, the appellant filed a further objection under Rule 106 EPC ("objection 6"), which reads as follows: ..." 

• The Board, on 13 January 2023, dismissed the appeal.

• The Board issued the decision, 173 pages in writing, in October.

• 
  
• EPO 

The link to the decision is provided after the jump.

T 2175/15 - The opponent submits five partiality objections

Key points

• Three interlocutory decisions on partiality were issued in September 2023 in this opposition appeal case, where the opponent has, up to now, filed five partiality objections. 
• The decisions are anonymised, but the application number is easy to find and the file is public (some letters are redacted). 
• The appeal was filed in November 2015, the statement of grounds was in January 2016, and the reply was filed in May 2016, followed by the silence of the Board until April 2019: summons for oral proceedings to be held on 20 March 2020 (bad luck). 
• Oral proceedings were postponed and finally held by vico in January 2021. The Board admits auxiliary requests and decides that the proceedings continue in writing.
• The opponent, represented by a professional representative of a German firm, files a first partiality objection in April 2021, followed by a second one when the Board, in original composition, outlines the framework for admissibility. The second objection is rejected by the Board in alternate composition.  The Board, in the original composition, issues a new summons with a preliminary opinion on the remaining issues of the admissibility first partiality objection and the apportionment of costs (the patentee had withdrawn the appeal). The opponent files a third partiality objection. Again, a Board in alternate is then formed, and the opponent files a fourth partiality objection against one of the members of the Board in alternate composition. A replacement Board member was appointed, and the opponent filed a fifth partiality objection. A further replacement member is appointed. Oral proceedings are held in June 2023 before the Board in alternate composition.
• The second objection was dismissed in  April 2022, and now the 3rd, 4th and 5th. 
• The decision on third objection was taken by Board members N, D, H; the decision on the fourth objection by K, D and H, the decision on the fifth objection by G, D and H, all on the same day. Must have been an interesting set of oral proceedings on 23 June 2023. However, the minutes are not visible in the online file.
• The register shows that a petition for review R 16/22 is pending against the decision of April 2022, though the documents about that petition are not visible in the online file. 
• The appeals were withdrawn on 4 and 7 July 2022 but the opponent maintained its request for cost apportionment. 
• There was some litigation about the national German patent. I understand that there was some German  case law that a preliminary injunction could not be awarded by German courts until the validity of the patent was proven in opposition (or nullity) proceedings (see CJEU case C-44/21 of April 2022). So, possibly, the opponent had no clear interest in a swift end to the opposition proceedings at the relevant times.

EPO 

The link to the decision is provided after the jump.

T0481/21 - OD selects CPA, other attacks not abandoned

Key points

• The opponent appeals.
• " the appellant formulated an objection against the then pending main request starting from document D1 as the closest prior art. The proprietor argued that this objection should not be admitted because the only document cited as closest prior art in the appealed decision was D5, so this objection was not part of the appealed decision under Article 12(2) RPBA.
• "The Board however notes that document D1 was extensively discussed both under novelty and under inventive step in the first instance proceedings. "
• "It is apparent from the contested decision and the minutes that at the oral hearing document D1 was discussed in order to assess the novelty of the method and the product claims. As also explained in the minutes, D5 was however considered as representing the closest prior art because it addressed the same technical problem and had certain features in common with the invention."
• "Since there is no indication that the inventive step objections starting from D1 discussed during the written proceedings were explicitly or implicitly abandoned at the oral hearing, they are effectively part of the first instance proceedings, implying that the appealed decision was at least implicitly based on them as required by Article 12(2) RPBA. In particular, the Board considers that the decision to contemplate D5 as the closest prior art implicitly involves the selection of D5 over D1 as closest prior art, which does not imply that the objections starting from D1 were no longer maintained, but simply that it was decided (in view of the conclusions on novelty in view of D1) that D5 represented a more promising springboard. Since the inventive step objection is considered to be part of the first instance proceedings, there is no basis not to admit this objection under Article 12(4) and (6) RPBA."
• The patent is revoked.

EPO 

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

J 0003/23 - (Not) remedying formal deficiencies in the drawings

Key points

• An application is refused because a deficiency in the drawings was not corrected in time in reply to a communication of 24.08.2021 under R.58, setting a two-month time limit. 
•  "On 15 December 2021, the appellant (applicant) submitted ten pages with the corrected ten drawings".
• "By decision of 21 December 2021 (which was handed over to the EPO postal service on 14 December 2021), the Receiving Section refused the application pursuant to Article 90(5) EPC because the deficiencies had not been corrected in due time."
•  As a comment, I think a fair and reasonable application of the EPC would be to make the decision based on an ex nunc examination, i.e., based on the file's status as it was on the decision day. In other words, the corrected drawings could and should have been accepted. However, the current position in the case law might be different.
• The applicant requests re-establishment. The Receiving Section refuses the re-establishment.
• Note that under J 18/08, the applicant could also have filed an appeal and then filed the drawings (again) with the Statement of grounds as a safe remedy (as I understand it, the principle to J18/08 applies to all refusals of applications for formal deficiencies).
• The applicant could also have filed a divisional application during the period for filing an appeal, which is probably cheaper (only the filing fee; the search fee will be refunded in the parent case)
• The applicant appeals the refusal of the re-establishment.
• The appeal is inadmissible for lack of substantiation.
• By way of obiter remarks, the Board also indicates that the appeal is not allowable even when reviewing the applicant's submissions before the Receiving Section.

EPO 

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

T 0273/23 - Purpose of the method

Key points

• The decision in this appeal against a refusal was taken rather fast: statement of grounds filed 08.02.2023 (by a professional representative), oral proceedings held 27.10.2023. The applicant is a natural person (and a patent attorney).
• Claim 1 in machine translation: "Method for positioning an art object (1) on a flowing body of water, wherein the art object (1) comprises two or more buoyant elements (3, 3 '), and at least one of the elements (3) is anchored at a position defined in the direction of flow and the other elements (3') are either also anchored or connected to one element (3)."
• The applicant argues that claim 1 is novel over D5 because in D5, the art object is positioned in a bay, which is not a flowing body of water. 
• Of note (in machine translation): "The CNN report (D5) on the artistic work "SOS (Safety Orange Swimmers)", which has been freely available to the public on the Internet since October 13, 2016, undisputedly constitutes prior art in accordance with Article 54(2) EPC represents. This report was introduced into the appeal proceedings by the Chamber with the notification pursuant to Article 15(1) RPBA dated April 12, 2023.
• The Board: "The claimed method according to claim 1 mentions positioning in flowing water only as part of a purpose of the method ("for positioning an art object on a flowing body of water"). The procedure is therefore not limited further than by the suitability in this regard. It is therefore anticipated by any other positioning method of an art object, which is inherently suitable for being used for positioning in or on a river."
• Compare Guidelines, F-IV, 4.13: "Where the stated purpose defines the specific application of the method, this purpose requires additional steps which are not implied by or inherent in the other remaining steps defined in the claim, and without which the claimed process would not achieve the stated purpose. Hence a method claim that defines a working method which, for example, commences with such words as "Method for remelting galvanic layers", the part "for remelting ..." is not to be understood as meaning that the process is merely suitable for remelting galvanic layers, but rather as a functional feature concerning the remelting of galvanic layers and, hence, defining one of the method steps of the claimed working method (see T 1931/14 and T 848/93)."
• "On the other hand, where the purpose merely states a technical effect which inevitably arises when carrying out the other remaining steps of the claimed method and is thus inherent in those steps, this technical effect has no limiting effect on the subject-matter of the claim. For example, a method claim concerning the application of a particular surface active agent to a specified absorbent product and defining its purpose as "for reducing malodor" in terms of an intended technical effect is anticipated by a prior-art document describing a method having such suitability "for reducing malodor" although not mentioning the specific use"
• The Board cites T 1931/14 and reasons, in machine translation: "a purpose (here the positioning of an object in a flowing body of water) does not have a restrictive effect if this effect inevitably arises when exercised of the remaining steps of the claimed method. However, anchoring an object ultimately always leads to a fixed position of this object, so that no further (implicit) features are associated with the anchoring beyond the positioning of the object."
• The claim is held to be not novel.
• As a comment, it's not clear to me why the method is not considered to involve an implicit step of placing the art object in a flowing body of water. 

EPO 

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

  

T 0229/18 - The Chair retires before the written decision is given

Key points

• The decision was given during oral proceedings on 07.10.2021. Minutes were issued on 22.10.2021.
• A notice about a transfer of the case to another Board was issued on 12.07.2022.
• A party enquires in 2022 and later in September 2023 about when the written decision will be issued.
• By that time, the chair had retired (in June 2022). The other party proposes that the Board apply Art. 8(3) RPBA, which states that if the Chair is unable to act, the longest-serving member shall sign the decision.
• The Board issued a Communication on 23.10.2023, apologizing for the undue delay and mentioning "unfortunate circumstances and the productivity objectives imposed on the boards of appeal".
• The decision in PDF was authenticated by the legal member instead of the Chair.
• 
  

EPO 

The link to the decision is provided after the jump.

Unsupervised mode

• This blog will run in unsupervised mode for the next few weeks and only with pre-scheduled posts. 
• The follow.it email notifications will be sent out automatically as well. 
•  Comments can be posted, but it may take some time before I approve them. 

T 1920/21 - A tutorial on diagnostic methods

Key points

• "The Enlarged Board of Appeal stated in G 1/04 (Conclusion 1) that to be excluded from patentability [under the diagnostmic method prong of Art. 53(c)] the claim is to include the features relating to: (i) the diagnosis for curative purposes stricto sensu representing the deductive medical or veterinary decision phase as a purely intellectual exercise, (ii) the preceding steps which are constitutive for making that diagnosis, and (iii) the specific interactions with the human or animal body which occur when carrying those out among these preceding steps which are of a technical nature." 
• "the method steps of a technical nature belonging to the preceding steps which are constitutive for making the diagnosis for curative purposes stricto sensu must satisfy the criterion "practised on the human or animal body" [in order to be excluded]

• The preceding method steps which are constitutive for making the diagnosis for curative purposes include:  (i) the examination phase involving the collection of data, (ii) the comparison of these data with standard values, (iii) the finding of any significant deviation, i.e. a symptom, during the comparison

• " To determine whether claim 1 is directed to a diagnostic method within the meaning of  Article 53(c) EPC and thus excluded from patentability, it must first be established whether all of the necessary method steps (see point 3. above) are included in the claim."

• The Board finds that this is the case.

• The claimed method is a breath test.

• "the Enlarged Board held that activities falling within steps (ii) and (iii) are predominantly of a non-technical nature, and in any event, are not normally practised on the human body (G 1/04, Reasons 6.4.1). Therefore, in most cases only the first phase which relates to the examination phase and the collection of data can be of a technical nature and, therefore, concerned with the criterion "practised on the human or animal body"."

• "to satisfy the criterion "practised on the human or animal body" it is however not required that a preceding step of a technical nature be invasive. It suffices that its performance implies any interaction with the human or animal body, necessitating the presence of the latter (G 1/04, Conclusion 4). Collecting a breath sample necessarily requires the presence of the patient from which the breath sample is collected. The two technical steps of claim 1 relating to the collection of breath samples (see point 11. above) therefore satisfy the criterion "practised on the human or animal body"."

• "the board is however satisfied that the further method step of a technical nature of phase (i), i.e. "measuring the content of **(13)C in the CO2 of the first and second sample and determination of a **(13)C/**(12)C ratio by spectroscopy in the respective samples" does not meet the criterion "practised on the human or animal body"."

• The devices for measuring the ¹³C content " include devices for gas isotope ratio mass spectroscopy or infrared spectrometer (see also paragraph [0013] of the application) and are in any case devices which analyse the collected breath samples without any interaction with the patient or necessitating its presence."

• Hence, the method escapes the exclusion by reciting one in vitro step.

• "the Enlarged Board held in G 1/04 that since a narrow interpretation of the scope of the exclusion from patentability under Article 52(4) EPC 1973 [Art. 53(c) EPC 2000] in respect of diagnostic methods was equitable, it was justified to require that the performance of each and every one of the method steps of a technical nature of a diagnostic method should satisfy the criterion "practised on the human or animal body" (Reasons 6.4.4)."

EPO 

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

T 2004/21 - A new kind of alternative problem

Key points

• This decision provides an important refinement of the problem-solution approach, especially for the case of problem inventions. 
• Claim 1 is directed to a chewing gum comprising a base and "a blend of granules consisting of erythritol"
• The claimed chewing gum differs from that disclosed in  D2 [the closes prior art] [...] in that: 1) the blend of erythritol granules comprises 50 to 99 wt% of coarse granules which are retained on a sieve of 250 microns" and in that the amount of erythritol granules is at least 20 wt.%
• " The [proprietor] respondent argued that chewing gums containing fine, coarse or a blend of fine and coarse erythritol granules induced a sensation of hydration, i.e. a mouthwatering effect in the consumer. "
• " The board agrees with the appellant [opponent] that the tests in the patent do not make it credible that a higher proportion of coarse granules enhances the mouthwatering effect. It considers, however, that, as argued by the respondent [proprietor], the overall picture emerging from the results makes it credible that the inclusion of erythritol granules in a chewing gum induces a mouthwatering effect."
• The Board: "not all chewing gums induce a mouthwatering effect. In fact, paragraph [0003] of the patent teaches that certain chewing gums containing sweeteners may induce a sensation of dry mouth and the need to drink water. This makes it credible that the mouthwatering sensation induced by the tested chewing gums is due to the presence of the erythritol granules and that this effect can be achieved with both coarse and fine erythritol granules."
• "The appellant argued that mouthwatering was an inherent property of the chewing gum of D2 and that this document already provided a solution to the problem of providing a chewing gum inducing mouthwatering. Since there was no evidence that the claimed chewing gum induced a stronger mouthwatering effect than that of D2, the underlying objective problem was merely "the development of an alternative chewing gum [according to the opponent]".
• The Board: "Under the established case law, if a known problem has already been solved by the prior art and the claimed subject-matter represents a different solution to that problem, the objective technical problem should be formulated as the provision of an "alternative solution" to the known problem ([CLBA] I.D.4.5, "Alternative solution of a known problem"). 
• However, the situation in the current case is different. Although the chewing gum of D2 has "inherent" mouthwatering properties, D2 discloses neither these properties nor the problem of providing a mouthwatering effect in a user. "Mouthwatering" is not mentioned in any of the cited prior-art documents. The claimed chewing gum can therefore not be considered an alternative solution to a known problem."
• "Formulating the problem as the provision of an "alternative chewing gum" which is meant, explicitly or implicitly, to solve the problem of inducing mouthwatering would imply that this problem, as well as its solution, was known at the filing date. This would require reading into the teaching of D2 the technical contribution wich the patent makes over the prior art, namely the finding that erythritol granules induce a mouthwatering effect. "
• "For these reasons, starting from D2, which discloses chewing gums preventing an abrasive sensation, the underlying objective technical problem is to be formulated as the provision of a chewing gum inducing a mouthwatering effect in a consumer."
• "none of the cited prior-art documents mentions the problem of providing a chewing gum providing a mouthwatering effect. This problem was apparently not even known at the filing date."
• "the skilled person confronted with the underlying problem would have had neither any reason nor guidance to prepare the claimed chewing gum by increasing the amount of coarse particles in the chewing gum of D2."
• The claim is held to be inventive. 

EPO 

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

T 0842/22 - Not admitted ground admitted in appeal

Key points

• New grounds of opposition can only be admitted in appeal with the consent of the proprietor.
• What if the OD held a ground of opposition inadmissible?
• " Appellant 2 argued, for the first time, five days before the oral proceedings before the opposition division (with letter dated 2 July 2021), that claim 1 defined, after the amendment, a cam with [certain features]".
• "The opposition division noted that the grounds according to Article 100(c) EPC had not been raised before and that therefore the above objection introduced a fresh ground of opposition. Having found that the above objection was not prima facie relevant, the opposition division decided not to admit it into opposition proceedings."
• "In the present case, however, the Board exceptionally follows the arguments of [opponent] appellant 2, requesting to set aside the discretionary decision of the opposition division and to admit its objection of added subject-matter, for the following reasons."
• " The Board concurs with appellant 2 that clarity is not the correct basis for assessing added subject-matter and further that the above interpretation is not reasonable, as it goes beyond the literal meaning of the contentious feature, and against the general principles set out in the case law (CLB, II.A.6.1), according to which the wording of a claim should be read and interpreted on its own merits and given its broadest technically sensible meaning."
• "In view of the above, the Board concludes that the opposition division, when taking the discretionary decision not to admit the late-filed objection of added subject-matter, did not apply the criterion of prima facie relevance in a reasonable way. Hence, the late-filed ground of opposition based on Article 100(c) EPC was wrongly not admitted into the proceedings by the opposition division and is to be considered as forming part of the legal and factual framework of the appeal proceedings."
• The case is not remitted.
•  "the main request cannot be allowed"
• The patent is maintained based on an auxiliary request. 
• The point is somewhat controversial; see CLBA  C.A.3.4.5. The approach of the present decision seems correct to me. 

EPO 

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

T 2095/21 - Strawman opponent and Art.15(9) RPBA

Key points

• The decision was taken on 10.10.20213 and issued in writing on 28.03.2024. The public online file shows no items between 13.10.2024  2023(the minutes) and 28.03.2024 (the decision) as of the date of writing (02.04.2024). Hence, no Communication to the parties under Art. 15(9) RPB (to be issued at the end of the three-month period, i.e. by 10.01.2024) is visible. Was the President of the Boards informed (as is required under amended Art. 15(9), which entered into force on 01.01.01.2024)?  
• Note, possibly the delay was for good reason in the case. And possibly the parties were informed with a notification that is in the non-public part of the file. 
• 
  
• 
  
• 
• 
  
  
• The opponent is a patent attorney firm. 
• "The appellant [proprietor] submitted that the representative firm was no longer the legitimate opponent because during the oral proceedings before the opposition division they openly admitted that they acted on behalf of a third party. This open admittance not only constituted clear evidence that the opposition was inadmissible, but also created confusion as to the opponent's actual identity. " 
• " The board does not agree with this argumentation. As clarified by decisions G 3/97 and G 4/97 an opposition is not inadmissible purely because the entity named as opponent is acting on behalf of a third party."
• "as it was clarified in G 3/97 and G 4/97 (Headnote 1(d)): "...a circumvention of the law by abuse of process does not arise purely because: a professional representative is acting in his own name on behalf of a client...". The filing of an opposition by a straw man is not as such an abuse of process, but it would require additional facts and evidence, as for instance if it were shown that the representative was acting on behalf of the patent proprietor, or was lacking entitlement to act as a European professional representative. "
•  The opposition was therefore admissibly filed (Article 99(1) in conjunction with Rules 76 and 77 EPC).

EPO 

The link to the decision and (an extract of) the text of the decision are provided after the jump.

T 1823/23 - Dropping the drawings in the Rule 71(3)

Key points

• "The communication under Rule 71(3) EPC however referred to the description and the claims but not to the drawings."
• The applicant realizes the error only after the grant and files a timely appeal.
• "In the present case, the documents indicated in the communication under Rule 71(3) EPC are however manifestly not in line with those resulting from the examination of the request on file, because the drawings formed part of the application as filed but were never withdrawn by the (now) appellant, and only the claims and the description were objected to by the examining division and amended by the appellant, but not the drawings."
  
• "In the case at issue, the communication under Rule 71(3) EPC does not contain any hint that any deletion or amendment were made by the examining division to the drawing sheets. There is thus a clear discrepancy between the description referring to the Figures and the absence of any drawing sheets in the text intended for grant, which should have been remarked upon by the examining division when allegedly deleting the drawing sheets, but apparently neither the members of the examining division nor the (now) appellant realised that the drawing sheets were missing and that the documents referred to in the communication pursuant to Rule 71(3) EPC did not correspond to those according to the appellant's request, which included the drawing sheets. Therefore, in line with decisions T 1003/19 and T 408/21, the board concludes that the examining division did not indicate in the communication according to Rule 71(3) EPC the text it intended to grant"
• "The examining division therefore did not communicate the text that it intended to grant. Following T 2081/16 (point 1.4.5 of the Reasons), T 408/21 (point 1.12 of the Reasons) and T 1003/19 (point 2.4.5 of the Reasons), Rule 71(5) EPC correspondingly does not apply, as in the step preceding the deemed approval the applicant has to be informed of the text in which the examining division intends to grant the patent according to Rule 71(3) EPC. Although the (then) applicant received a Rule 71(3) EPC communication, the documents indicated were not those which the examining division intended to grant."
• The appeal is allowable.
• "The fact that a narrow interpretation of Rule 71(3) and (5) EPC as proposed by the present board allows for an appeal to be treated as admissible should however not be misinterpreted as an invitation to neglect the applicant's duty to carefully check the documents submitted in the text intended for grant sent with the communication under Rule 71(3) EPC. The request for reimbursement of the appeal fee is therefore rejected."
• "The present board is aware of decision T 265/20"

EPO 

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

T 1216/23 - The SME reduction as a refund

Key points

• This decision illustrates that if you are unsure if the SME reduction applies, you can pay a fee in full and request a partial refund.
• The Board, in translation, under "On June 26, 2023, the amount of EUR 910.00 was repaid (the difference between the appeal fee paid of EUR 2,925.00 and the appeal fee of EUR 2,015.00 for a complaint filed by a natural person or a person referred to in Rule 6 (4) and (5) EPC is filed)."
• In this case, interlocutory revision was granted. The request for full reimbursement of the appeal fee was forwarded to the Board. 
• The applicant then withdrew the request for reimbursement.
• The appeal proceedings are terminated without a decision and without (further) reimbursement. See T 0683/14. 
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EPO 

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