T 1271/13 - Consisting essentially of, and basis

Key points

• "[The] board cannot endorse [patentee's] argument that, in accordance with decision T 472/88, the original term "comprising" did, in itself, provide a sufficient basis for the amended wording "consisting essentially of". " 
• Edit 16.07: now with the correct case number T 1271/13. 

EPO T 1271/13  -  link

2.2 It is undisputed that the wording "consisting essentially of" is not explicitly present in application as filed. Consequently, it has to be established whether or not the original application contains an implicit but unambiguous disclosure of these features.

Following the jurisprudence of the boards of appeal, the terminology "consisting essentially of" in claim 1 has a particular meaning and is to be understood in the sense that, apart from the components (i), (ii) and (iii) explicitly listed, only certain types and amounts of other components may be present in the resin composition that do not materially affect the essential characteristics of the composition (cf. for example T 472/88, Reasons 3 and T 759/10, Reasons 3.2). Already in view of this understanding, the board cannot endorse appellant I's argument that, in accordance with decision T 472/88, the original term "comprising" did, in itself, provide a sufficient basis for the amended wording "consisting essentially of". 

Moreover, it has to be taken into account that in the light of the Enlarged Board's jurisprudence in cases G 2/98 (OJ EPO 2001, 413) and G 1/03 (OJ EPO 2004, 413), which established the criterion of a direct and unambiguous disclosure, the case law of the boards of appeal on added subject-matter has developed further and that today it is settled that the term "comprising" is not generally accepted as a direct and unambiguous basis for an amendment to "consisting essentially of" (for a comprehensive summary of the development of the boards' case law on this issue see decision T 759/10, Reasons 5).

As an alternative line of argument, appellant I puts forward that the application as filed (cf. page 41, lines 10 to 16), in fact, disclosed not only the explicitly claimed components (i) to (iii), but also a fourth component in the form of blending polymers, which justified the wording "consisting essentially of" as interpreted by the boards of appeal. In this regard, the board observes that according to the generally accepted understanding of the wording "consisting essentially of", the possible fourth or further unnamed components must not materially affect the essential characteristics of the polypropylene-based resin composition. This criterion is not fulfilled even if the blending polymers were considered a fourth component, since it is exactly the purpose of blending polymers to alter the characteristics of the resin composition. Consequently, the board endorses not only the opposition division's finding that the original application does not contain a fourth component different from components (i) to (iii), which does not materially affect the essential characteristics of the polypropylene-based resin composition, but also its conclusion that a direct and unambiguous basis for the amended wording "consisting essentially of" is not apparent in the original application.

For these reasons, the subject-matter of claim 7 of the main request goes beyond the content of the application as filed, Article 100(c) EPC 1973.

T 0156/15 - No need for former Board members

Key points

• The Board expresses in a headnote that it does not need declarations of former Board members about legal matters such as art. 76 EPC.
• Requests submitted during oral proceedings, after the Chairman of the Board announces that the higher ranking requests are not allowable, should not be admitted, even without considering prima facie allowability.

EPO Headnote
1. Expert evidence tends to assist the boards in matters which lie outside their own expertise. However, the opinion of a former board member submitted as expert evidence on the application of Article 76 EPC to the facts of the case cannot add any evidential value to the party's submissions. Indeed, if a Board were swayed on such a matter by the fact that submissions had been made by a former board member, however eminent that person might be, it would attach undue weight to the individual making the argument rather than focus on the argument itself (see point 1.2.3).   
2. The appellant-patent proprietor filed auxiliary request 19 after the Chairman had announced the results of the Board's deliberation on the main request and auxiliary requests 1 to 18, and filed auxiliary request 20 after the Chairman had announced the result of the Board's deliberation on auxiliary request 19.
By its behaviour, the appellant-patent proprietor is, as a matter of fact, adjusting its strategy to the results of the Board's deliberation, which puts the appellant-opponent in a position where it is difficult to react.
In deciding on the admission of such late-filed requests, respect for the principle of fairness of the procedure might make it immediately apparent that these requests should not be admitted, even without also considering specific criteria for the exercise of the Board's discretion such as prima facie allowability (see points 1.3.5 and 1.3.6).






EPO T 0156/15 - link

T 0030/16 - Contribution to the art

Key points

• In this examination appeal, the Board assesses whether the claim complies with A84 in that all essential features are specified.
• The Board first recalls established case law " It is established case law that, [under A84 EPC], an independent claim must indicate all the essential features of the object of the invention [.] In this respect, "the essential features" is considered to mean all the features which are necessary to obtain the desired effect or, in other words, which are necessary to solve the technical problem with which the application is concerned"  " Further, the requirements of Article 84 EPC reflect the general legal principle that the extent of the monopoly conferred by a patent, as defined in the claims, should correspond to the invention's technical contribution to the art []. This means that the technical contribution of an invention does not lie in the fact that the problem is solved, but rather in the combination of features by which it is solved, i.e. in the features necessary to solve the technical problem underlying the invention." 
• The Board takes a rather unusual approach in this case. " As explained in the declaration by Mr Mir [one of the inventors in the present case] submitted in the examination proceedings, the filtration module according to the invention is set up as a single-pass tangential flow module without a recirculation loop and its specific feed flow rate must be adjusted to less than 200 lmh. These features, identified as essential to the performance of the invention by one of the inventors, are now reflected by the subject-matter of independent claims 1 and 10." 
• As a comment, such a use of Inventor's Declarations (also against the applicant?) to assess allowability of claims, seems to something that is more typical for the USPTO.

EPO T 0030/16 -  link

2. Main request - Article 84 EPC

2.1 It is established case law that, in order to comply with the requirements of Article 84 EPC, an independent claim must indicate all the essential features of the object of the invention (see G 2/88, point 2.5 of the Reasons, and G 1/04, point 6.2 of the Reasons; see also Case Law of the Boards of Appeal, 8th ed. 2016, II.A.3.2). In this respect, "the essential features" is considered to mean all the features which are necessary to obtain the desired effect or, in other words, which are necessary to solve the technical problem with which the application is concerned (see in particular T 32/82, point 15 of the Reasons).

Further, the requirements of Article 84 EPC reflect the general legal principle that the extent of the monopoly conferred by a patent, as defined in the claims, should correspond to the invention's technical contribution to the art (see T 409/91, point 3.3 of the Reasons). This means that the technical contribution of an invention does not lie in the fact that the problem is solved, but rather in the combination of features by which it is solved, i.e. in the features necessary to solve the technical problem underlying the invention.

2.2 In the present case, the problem underlying the invention is defined on page 6, lines 1 to 3, of the application as filed as being the provision of a single-pass filtration process providing high conversion with a relatively low hold-up volume.

2.3 As explained in the declaration by Mr Mir (one of the inventors in the present case) submitted in the examination proceedings, the filtration module according to the invention is set up as a single-pass tangential flow module without a recirculation loop and its specific feed flow rate must be adjusted to less than 200 lmh.

These features, identified as essential to the performance of the invention by one of the inventors, are now reflected by the subject-matter of independent claims 1 and 10.

2.4 The claimed subject-matter has been further limited to a specific type of membrane, namely a flat-type membrane, so that claim 1 can no longer be held to be broader than justified, as alleged by the examining division.

2.5 It follows from the above considerations that the claimed subject-matter now corresponds to the invention's technical contribution to the art, as it should according to T 409/91 (see point 2.1 above), so that the specific requirement of Article 84 EPC that the claims be supported by the description is fulfilled.

3. Since the reasons that led to the refusal of the application no longer apply, the board exercises its discretion under Article 111(1) EPC and remits the case to the examining division for further prosecution.

Order

T 2132/16 - No need for UK experts

Key points

• This is an opposition appeal about an actually rather interesting invention, about a prenatal test using circulating DNA (using a blood sample from the pregnant mother). The opposition appeal seems to have been a hard fight. Litigation is running in parallel in the UK. That brings me to the two paragraphs of the Board's decision I am going to quote: don't use UK experts testimony about inventive step as the patentee did in this case. The Boards consider themselves entirely competent to assess the technology at issue. 
• " [D70 and D8] are extracts from a transcript of the cross-examination of two technical experts called by the claimants in the UK litigation, among which was the present appellant I [patentee]. [D74 and D79 are written reports by two technical experts called by the present appellant III [opponent] in the UK litigation. These four documents contain the opinion of different technical experts on various issues relating to inventive step, in particular the interpretation of the content of [D6], and the knowledge and ideas of a skilled team in the relevant technical fields[]."  
• " It should be noted that, while in the UK litigation procedure technical experts are regularly called by the parties to provide technical assistance to the judge, the composition of the Technical Boards of Appeal includes at least two technically qualified members who are themselves able to assess technical facts. In the present case, the board considers itself in the position to decide upon the matter without the further technical assistance provided by the experts who gave evidence in UK litigation." 

EPO T 2132/16 - link

IV. Claim 1 according to auxiliary request 1 reads as follows:
"1. A method for performing prenatal diagnosis of a fetal chromosomal aneuploidy in a biological sample obtained from a female subject pregnant with a fetus, wherein the biological sample is maternal plasma or serum and wherein the sample includes cell-free nucleic acid molecules from the female subject and the fetus, the method comprising:
performing a random sequencing on at least a portion of a plurality of the nucleic acid molecules contained in the biological sample to obtain a pre-determined number of sequences, wherein the sequences represent a fraction of the human genome;
aligning, with a computer system, each sequence to a human genome;
determining a first amount of sequences identified as being aligned to a first chromosome;
determining a second amount of sequences identified as being aligned to one or more second chromosomes;
determining a parameter from the first amount and the second amount; wherein the parameter represents a relative amount between the first and second amounts; and
comparing the parameter to one or more cutoff values, to determine a classification of whether a fetal chromosomal aneuploidy exists for the first chromosome."

XII. Oral proceedings were held on 12 September 2017. During the oral proceedings, appellant I [patentee] withdrew its request to set aside the decision under appeal and maintain the patent as granted, and requested dismissal of the appeals of appellants II and III [opponent].

T 0655/13 - Refusal based on Japanese document

EPO Headnote
In order for the examining division to make its reasoning on the basis of a pertinent prior-art document in a non-official EPO language comprehensible to the board, it must provide the translation used in the examination proceedings of at least the relevant sections of the document (or even of the whole document, if this is necessary for its overall understanding) into an official language of the EPO. Otherwise, the board is unable to examine the reasons for the decision, and in certain cases even whether the decision was justified or not, which amounts to a violation of the legal requirement for reasoned decisions under Rule 111(2) EPC

Key points

• In this examination appeal, the refusal was based on lack of inventive step over D1, a journal article in Japanese. For what features of claim 1 are disclosed in D1, the ED only refers to " D1, paragraph 5, page 1925-1926, figures 7, 8" and to the translation of the IPRP.  
• The Board considers this a substantial procedural violation. The headnote is quite clear about the requirement of EPO to provide a translation. 
• More interesting is the Board's holding about whether the ED should cite specific parts of D1 (even in Japanese), or can refer to 2 pages as they did.
• " Furthermore, even if a reference to a specific location within a prior-art document were required to substantiate the disclosure of an individual feature, a general reference to a longer section of this document may exceptionally suffice if the relevant location can be readily identified. This may be the case, for example, if the publication is in one of the EPO's official languages and if the feature in question is reproduced in the same words as in the claim under examination and can therefore be immediately identified in the longer section without any interpretational effort." " The appellants explicitly contested the examining division's general assertion and, as a main line of argument, concluded from the very lack of disclosure of this crucial feature in document D1 that the claimed subject-matter involved an inventive step. It follows that the examining division should have identified a more specific passage in the publication in order to substantiate its assertion that the feature was disclosed in D1." 

EPO T 0655/13 -  link

Reasons for the Decision

1. The appeal complies with the requirements of Articles 106 to 108 and Rule 99 EPC and is therefore admissible.

2. Substantial procedural violation - insufficient reasoning, Rule 111(2) EPC

2.1 In the case at hand, the question of whether the subject-matter of claim 1 of the main request involves an inventive step hinges to a great extent on whether document D1 discloses the feature of switching between different parallax coding modes within one single predictive encoding process ("when the first parameter number is selected, ...; and when the second parameter number is selected, ..."). In their submissions prior to the decision under appeal, the appellants expressly rebutted the examining division's assessment, which also referred to the IPRP, that D1 disclosed this feature.

G 1/18 - New question for Enlarged Board

Provisional translation of the question into English:

If notice of appeal is filed and/or the appeal fee is paid after expiry of the two month time limit under Article 108 EPC, is the appeal inadmissible or is it deemed not to have been filed, and must the appeal fee be reimbursed?

 http://www.epo.org/law-practice/case-law-appeals/communications/2018/20180625.html


Key points

• The President referred a question (point of law) to the Enlarged Board under Article 112(1)(b) EPC.
• Essentially the same question was asked in the referrals G 1/14 and G 2/14. However, both cases terminated before the Enlarged Board without a decision on the question asked.
• The present referral G 1/18 is triggered by the recent decision T 1897/17.
• The practical relevance of the question is that if the appeal is inadmissible, the appeal fee is not reimbursed. If the appeal is deemed not to have been filed, the appeal fee is reimbursed.
• The language of the proceedings will be French.
• Update 04.07: I have added a machine translation of the referral below. I've OCR'ed the PDF on the EPO website, converted to plain text, fed the plain text to Google, and reapplied formatting and removed numerous hard returns (inherited from the page formatting of the original PDF) in order to get flowing text. So there are clearly errors in formatting and translation. But the translation into English of referral G1/18.

EPO G 0001/18 -   EPO G1/18 -  EPO G 1/18.




Machine Translation of the Referral G1/18

Referral to the Enlarged Board of Appeal

- Interpretation of Article 108 EPC -

 

 

A. Question of law submitted

 

Where the lodging of an appeal and / or the payment fee take place after the expiry of the two-month period laid down in Article 108 ESC, is the appeal inadmissible or deemed not to have been filed, and must the appeal fee be refunded?

 

1. It should be recalled in this context that the present question of law had already been submitted to the Enlarged Board of Appeal (GCR) in 2014 in cases G 1/141 and G 2/14. The DGC did not answer the question in case G 2/14 because the patent application had been abandoned in case G 1/14 because the referral was inadmissible.

 

2. The comments of the President of the Office in those cases had  strongly argues in favor of maintaining the interpretation given by this majority jurisprudence, as well as observations 2 (Amicus  Curiae) submitted by three thirds: FICPI, Onno Griebling and Cabinet Bardehle Pagenberg.

 

B. Relevant legal provisions

 

3. In accordance with Article 108, first sentence EPC, the appeal must be filed within two months of service of the decision. The second sentence states that the appeal shall be deemed to be effective only after payment of the appeal fee.

 

4. Rule 101 (1) EPC provides inter alia that if the appeal does not comply with Articles 106-108 EPC, the Board of Appeal dismisses it as inadmissible.

T 1257/15 - What is a new ground?

Key points

• The opponent had submitted before the OD criticism of what specific features are implied by the term "to interface" in claim 1 as granted, and of whether this term can provide a distinction over the prior art. In appeal, he bases an insufficiency attack on the feature. Insufficiency was not explicitly submitted before the OD. Is it a new ground for opposition submitted in appeal, which can only be admitted with the consent of the patentee? 
• The Board decides it is such a fresh ground. " These criticisms [of the feature, before the OD] do not amount to raising, not to speak of substantiating, an objection of lack of sufficient disclosure under Article 100(b) EPC" 

EPO T 1257/15 -  link

V. The appellant's [opponent's] submissions - as far as relevant for the decision - may be summarized as follows:

The invention further lacks a sufficient disclosure. The skilled person is not able to perform the invention since it is not clear what is meant by "to interface" and "interfaces" in features 1.8 and 1.10, respectively.

Reasons for the Decision

4. The appellant's objection of insufficient disclosure was raised for the first time with the statement of grounds of appeal. This amounts to raising a fresh ground for opposition under Article 100(b) EPC in appeal proceedings. In this respect, the appellant/opponent's reference to criticisms raised during the proceedings before the department of first instance in respect of what specific features are implied by the term "to interface" and of whether this term can provide a distinction over the prior art (see letter of 3 February 2015, page 3, lines 1, 2) is irrelevant, as these criticisms do not amount to raising, not to speak of substantiating, an objection of lack of sufficient disclosure under Article 100(b) EPC. Since in accordance with decisions G7/91 and G8/91 (OJ 993, 356 and 346) a fresh ground for opposition can only be admitted into the appeal proceedings if the patentee agrees to its introduction, cf. the Case Law of the Boards of Appeal, 8th edition, IV.D.3.2, and in the present case the patentee did not agree, the fresh ground for opposition is not admitted.

Order

For these reasons it is decided that:

The appeal is dismissed.