T 1076/21 - (I) Burden of proof in appeal

Key points

• This post serves to give an impression of the decision rather than a summary. I recommend reading the entire decision to interested readers.
  
•  "With reference to T 585/92, Reasons 3.2, the respondent argued that the appellant bore the burden to prove that the patent was sufficiently disclosed because the opposition division had revoked the patent."
• "On the basis of an in-depth analysis of the relevant case law, the board has concluded that the burden of proof regarding the facts, arguments and evidence on the substance (which initially lies with the opponent) does not shift to the proprietor just because the patent has been revoked due to an alleged insufficient disclosure."
• "If a material fact is not or cannot be proven, a decision is taken on the basis of who bears the relevant burden of proof. The fact that the real position cannot be established is to the detriment of the party which bears the burden of proof for this fact, among other things because the other party is given the benefit of the doubt. In principle, each party bears the burden of proof for the facts it alleges (T 63/06, Reasons 3.1 and 3.2)."
• "the initial burden on the opponent to provide facts, arguments and evidence for an assertion of an insufficient disclosure (in the following: "burden of proof on the substance") may shift to the patent proprietor once the opponent has successfully discharged its burden of proof by submitting sufficient facts, arguments and evidence to rebut the presumption of sufficiency resulting from the information contained in the patent specification (T 338/10, Reasons 12; T 2218/16, Reasons 32.2)."
• "Linked to the burden of proof is the "burden to substantiate a case" (Rule 76(2)(c) EPC in opposition proceedings; Rule 99(2) EPC and Article 12(3) RPBA in appeal proceedings). Thus, the opponent first has to provide facts and argue why these facts support the assertion that a skilled reader of the patent using their common general knowledge would be unable to carry out the invention (T 182/89, Reasons 2). This burden to substantiate facts and arguments is then followed by the burden to prove these facts, which is normally done by submitting evidence."
• Note that even though evidence needs to be indicated only in a notice of opposition, the picture of substantiation followed by evidence appears to relate more to a conceptual framework than to the real chronology of events in typical opposition proceedings. Usually evidence is submitted with the notice of opposition.
  
• "when distinguishing the "burden to substantiate a case" from the "burden of proof on the substance" it can be clearly deduced from the case law that after a decision by the opposition division allowing an objection of insufficiency, it is down to the patent proprietor to substantiate on appeal why that decision is wrong. "
• "Under Article 12(3) RPBA, the statement of grounds of appeal has to set out clearly and concisely the reasons for setting aside the decision under appeal. The appellant (in this case the patent proprietor) therefore bears the burden to substantiate the appeal. Yet an appeal case need not necessarily be substantiated by submitting facts and evidence that counter the arguments and evidence presented by the opponent. It may also be substantiated by submitting why the opposition division's reasoning on insufficiency was flawed "
• "T 1911/17, Reasons 24, sets out that the burden to substantiate the appeal must be distinguished from the burden of proof on the substance. The fact that the decision under appeal may be wrong for reasons other than a misjudgement on the substance can be deduced from e.g. decision T 942/18 (Reasons 2.2 to 3.6), T 55/18 (Reasons 1.2 and 2.2) or T 1596/16 (Reasons 2.3)."
• "An appeal against a revocation of a patent for insufficient disclosure need not be based on the submissions of counter-evidence by the patent proprietor, as can also be seen in cases where the opposition division's decision was set aside. In many cases the board based its decision not on new evidence but on other arguments why the impugned decision was erroneous."
• "The respondent [opponent] therefore did not provide the evidence required for substantiating serious doubts; it did not discharge its burden of proof on the substance " - in the first instance proceedings, I understand.
• The opponent filed a declaration after the summons in appeal.  "The joint expert declaration of Annex 1 contains images from scientific documents which are not part of the proceedings, along with in-house experiments."
• The Board does not admit it. There are no exceptional circumstances. "a board agreeing with the other party's arguments does not amount to exceptional circumstances; this may happen and has to be expected in any inter partes proceedings. Therefore, this evidence should have been filed in the opposition proceedings or at the latest with the reply to the appeal".

EPO 

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

T 2440/16 - The Board hears witnesses

Key points

• Board 3.3.06 hears witnesses concerning the alleged public prior use.
The Board, in machine translation: "The opposition was based, among other things, on the obvious previous use of a machine of the type Oasys OCL 600/3 for the production of laminated plastic cards with the serial number 42010 (previous use "Hythe Offset"). This objection was based, inter alia, on video D1.6 showing this machine in operation but recorded after the priority date and the associated affidavits of Mr. Bridger (D1.1) and Mr. Lane (D2.1)." The OD consisted of four members.
• "Although the opposition division admitted numerous late-filed documents in connection with the prior use "Hythe Offset" into the proceedings, it did not consider the prior use of the machine in the mode shown in video D1.6 before the priority date to have been proven."
• "With its statement of grounds of appeal, the appellant submitted a further statement by Mr Bridger (D32) and a written comment (D33) on video D1.6 and submitted, among other things, that the public prior use "Hythe Offset" shown in D1.6 had been proven."
• "[The appellant/opponent] requested, in the alternative, that Adrian Lane, Richard Bridger, Elliot Lamb, Steven Walker and Colin Stokes be heard as witnesses should the Board consider dismissing the appeal "
• The Board decided to hear the five witnesses (!). Notably, as the OD consisted of four members, the Board consisted of five members.
• The hearing took place on 27-28 April. The witnesses were heard on 27 April, from 09:45 to 11:55, giving 70 pages of transcript. After a break until 13:20, the evidence was discussed with the parties. The Board deliberated from 14:45 to 15:20 and concluded that the alleged public prior use was proven. Novelty was then discussed. The Board concluded that the main request was not novel; the patentee subsequently withdrew the main request and some auxiliary requests. 
• There were no objections to the remaining auxiliary request, and the Board's decision contains no substantive reasoning. (minutes)
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EPO 

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

T 3088/19 - Should have used the 45 min break

Key points

•  The Board finds that the proprietor should have filed the auxiliary request during the oral proceedings before the OD after the OD departed from the preliminary opinion.
• " Having requested a 45 minute interruption in oral proceedings, this having been granted and thereupon having filed replacement auxiliary requests, it seems that the proprietor had sufficient opportunity to fully consider its requests in reaction to the change of opinion of the opposition division. The Board thus sees this to have been the time when auxiliary requests 2 to 6, first filed on appeal, could and should have been filed. In this context, it should also be noted that parties must be prepared for the possibility that the Opposition Division may deviate from its preliminary opinion during the oral proceedings."
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EPO 

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

T 2386/19 - The right to have an offered witness heard

Key points

• The invention is of a simplicity which makes it suitable for Paper C. 
• "The administration of liquids from many bottles, such as medicine bottles, normally requires that an accurately prescribed amount is measured. When a syringe is inserted through the bottle neck into the bottle to withdraw liquid, it is often difficult to see the graduations on the syringe body, especially when a bottle having a coloured glass is used. This may prevent a user from withdrawing an accurate amount of liquid from the bottle into the syringe in a single operation. Moreover, dipping the syringe into the liquid of the bottle coats the outside of the syringe body with medicine. This increases the risk of contamination of the liquid in the bottle by microorganisms from the syringe and the risk of spillages when withdrawing the syringe." 
• "The contested patent addresses these issues with a liquid dispensing apparatus as defined in claim 1 which comprises a bottle, a bottle neck liner and a flat-nosed syringe. An example thereof is shown in Figures 5 and 6 of the contested patent reproduced below.
• Link to the drawings of the patent: https://worldwide.espacenet.com/patent/drawing?channel=espacenet_channel-73d92b7d-1107-471a-978a-446cd6dabcd9
• You have to hold the bottle upside down, or at least tilted, to take the controlled amount of liquid out of it.
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• The opposition is based on an alleged public prior use.
• "At the first-instance oral proceedings, the opposition division of its own motion cast doubts for the first time on whether or not feature M6 was disclosed by the prior use. The [opponent] reacted to that by requesting to hear a witness to corroborate an alleged fact, namely that a "PP28 bottle neck [i.e. as used in the prior use]  [had] a diameter of 19.4mm"  []. This alleged fact was relevant to establish which sealing was achieved in the prior use between the bottle neck liner and the PP28 bottle neck and thus to assess if the prior use anticipated feature M6."
• M6: "A  bottle neck (24) [] which is located the bottle neck liner (2) [and] having a cylindrical body (8) sealingly engaged inside the bottle neck (24) such that liquid cannot flow between the bottle neck liner (2) and the bottle neck (24),"
•  "The opposition division did not grant the request for the hearing of a witness even though it had been made at the first available opportunity and the opposition division considered the outcome of the hearing to be relevant to the outcome of the case"
• Note, I think that the opponent also had indicated who the witness would be and why the witness would be able to give testimony on the contested fact.  
• "Hence, the refusal to hear the witness violated the appellant/opponent's right to be heard under Article 113(1) EPC and might have affected the outcome of the appealed decision. It follows that reimbursement of the appeal fee is equitable by reason of a substantial procedural violation (Rule 103(1)(a) EPC). "
• The Board also concluded that the interpretation of the OD of feature M6 was too narrow and had concluded that feature M6 was disclosed by the prior use and that claim 1 as granted was not new over the prior use. 
• The patent is revoked. 

EPO 

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

T 1488/22 - Purpose-bound auxiliary request ?

Key points

• The claim is directed to a closure for a container comprising a tab and a popping score line. 
• "The patent proprietor contested the finding of the opposition division that the alleged public prior use according to the convolute of documents E3 (E3 together with E3.0, E3.1, E3.2 and E3.3) had not [?] been sufficiently proven and asserted that it had been assessed using the wrong standard of proof. E3 therefore should not be considered as prior art according to Article 54(2) EPC."
• "The patent proprietor acknowledged that twenty-two sweetcorn cans were publicly purchased in Oxfordshire on 31 July 2013, and that the reimbursement of that purchase was claimed by Mr Hall on 3 September 2023 under the project number Z1879 "
• The Board: "It is to be noted that the alleged public prior use does not concern the inter-office memorandum E3, but instead the closures that were allegedly purchased before the priority date at a supermarket as being part of sweet corn cans. The relevant fact to be assessed is whether the cans purchased were the ones on which the inter-office memorandum E3 is based."
• E3 is used as evidence that certain tested cans had all features of claim 1.
• "the board is not convinced that the opposition division failed to take into account material considerations, or that it included erroneous considerations or made errors of logic or contradictions in its reasoning, so that the fact-finding process followed by the opposition division did not contain any errors. In addition, the board is also satisfied with the opposition division's establishment of fact made in point 14.7 of the reasons for the decision under appeal that the cans purchased on 31 July 2013 (project number Z2189) were the ones referred to in memorandum E3"
• Note, the Board is not establishing facts themselves but is reviewing the findings of the OD about the facts and evidence for errors.
• "The board thus concludes that the subject-matter of claim 1 as granted is anticipated by the public prior use E3."
• The Board turns to the auxiliary requests: "all these requests [except auxiliary request V] were either filed for the first time in appeal proceedings or were no longer maintained in opposition proceedings."
• " The patent proprietor indicated that some of these requests were filed as a precautionary measure only, in the event that the board would decide that the objections of insufficiency of disclosure, added subject-matter and/or lack of novelty in view of E1 prejudiced the maintenance of the patent as granted. Since the opposition division expressed its preliminary opinion that none of these grounds would prejudice the maintenance of the patent as granted, there was no need to file those auxiliary requests directed to those objections during opposition proceedings. "
• "The board does not find the above arguments as amounting to justifying circumstances for the admittance of these requests into the appeal proceedings. Indeed, the objections on insufficiency, added subject-matter and lack of novelty in view of E1 were known to the patent proprietor from the outset of opposition proceedings. The board is therefore convinced that the patent proprietor would have been in a position to submit [...] the corresponding requests in oral proceedings, especially in the event that the opposition division's preliminary opinion changed during the oral proceedings in those matters."
• The OD found that claim 1 as granted is not novel over E1; AR-1 was not admitted, AR-2 was not novel over E3, AR-3 was unclear, and neither the OD nor the opponent had no objections to AR-4.
• Hence, even if those requests had been filed in the first instance proceedings, it would not have given the Board any additional reasoning of the OD on added subject-matter and insufficiency to review: the OD found those requirements to be met by the claims as granted. Hence, holding those requests inadmissible does not serve any interest of the Board to confine appeals to a review of first-instance decisions.
• On the other hand, if those auxiliary requests, even if legitimately addressing Art. 123(2), would require a completely new debate about novelty, it is not difficult to see why the Board does not wish to admit them. 
• The opponent's appeal against the patent as amended is also rejected, though not as inadmissible. This is remarkable because the opponent said it had no objections during the first instance proceedings against the auxiliary request at issue. However, the Board decided that the objections against the patent as granted clearly also applied to the patent as maintained by the OD. Therefore, these attacks are also admitted by the Board "exercising its discretion under Article 12(6) RPBA 2020".
• As a comment, Art. 12(6) RPBA is not exactly worded as giving the Board broad discretion.
• Possibly, the opponent's remark during the oral proceedings before the OD that it had no objections against the request can be understood as "no objections in addition to those already rejected by the OD for the patent as granted". 
• Alternatively, it may be concluded that the opponent had no obligation to expressly maintain the objections, as they were considered and rejected by the OD, so that it can be concluded that there is no "should have been filed" case in the sense of Art. 12(6) RPBA.
• "the opponent further argued that the content of the minutes of the oral proceedings before the opposition division was inaccurate since it states that "[t]he opponent does not present any objections to the claims of auxiliary request 4". Indeed, after the opposition division announced during the oral proceedings that none of the objections above prejudiced the maintenance of the patent as granted, these objections were obviously not discussed once more when dealing with the auxiliary requests, but were not withdrawn or abandoned. The minutes should have obviously reflected that the opponent did not have any further objections to the request." However, the opponent did not request correction of the minutes, so they must be considered correct.
• The opponent's objections are considered but are rejected.
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• EPO 

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

T 1800/20 - Not admissibly raised in the meaning of Art. 12(4)(s.1) RPBA

Key points

• The Board decides on the admissibility of an auxiliary request that was filed before the OD but that the OD did not reach in their decision because the OD found a higher-ranking request allowable.
• The Board examines whether the request as admissible raised before the OD, under Art. 12(4) and concludes that this is not the case because the request was not convergent with the higher-ranking request. The Board refers to the framework of T1903/13.
• T1903/13 is Art.12(4) RPBA 2020 avant la lettre.   See T 0494/18, r.3.7.5 for a different approach under Art. 12(4) RPBA 2007.
• However, the framework specified in T1903/13 concerns what is now Art. 12(4) fifth sentence, not Art. 12(4), first sentence, unless clause. The rules applied by the  Boards for admissibility (i.e. the factors of the fifth sentence) are not necessarily the same as the rules to be applied by the OD, respectively governing the term 'admissibly raised' in the first sentence of Art. 12(4).
•  Therefore, the request does not benefit from the unless clause of Art. 12(4) RPBA
• The Board, in translation: "3.7 Since auxiliary request 2' was not submitted in an admissible manner in the first instance opposition proceedings, its submission in the appeal proceedings represents a change in the patent proprietor's appeal submissions, the admission of which is at the discretion of the board. The board exercises this discretion to not admit auxiliary request 2' into the proceedings because its treatment would be incompatible with the requirement of procedural economy due to a lack of convergence (cf. T 1456/20, point 4.5 of the reasons for the decision)."
• Note the sanction of not falling under the unless-clause of the first sentence is that the second sentence of Art. 12(4)  applies. Art. 12(4) fifth sentence provides that "The Board shall exercise its discretion [i.e. of the second sentence] 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, (iii) and the need for procedural economy." (Roman numerals added)
• Note that the Board in the present case does not explicitly consider all three factors indicated in the RPBA. T 1456/20 r.4.5 held that the criterion of convergence is an expression of the principle of procedural economy of Art. 12 and 13, when deciding on admissibility under Art. 13(2). However, this does not mean that it is an overriding factor.
• Note that a submission being inadmissible raised in the first instance procedure in the sense of Art.12(4)(s.1)  on the ground that it was raised and maintained in the first instance proceedings does not imply that Art.12(6), first or second sentence, applies, not even by analogy, neither that the discretion under Art.12(4)(s.2) is to be applied stricter, nor that it is an additional factor under Art. 12(4)(s.5). Such a rule can not be inferred from the RPBA 2020, nor would it be justified. The late filing of a request during the first instance proceedings that the OD did not reach is not detrimental to procedural efficiency compared to filing it with the initial appeal submissions.
• Furthermore, convergence under Art.12(4)(s.5) should be examined with respect to the requests filed with the initial appeal submissions. Convergence under Art. 12(4)(s.1) with respect to the requests pending at some time during the first instance procedure. 
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• EPO 

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

T 1752/19 - Second medical use and Art.83

Key points

•  The decision was taken 30.06.2022 and issued in writing on 05.10.2023, i.e. more than one year later (!). No communication under Art. 15(9) informing the applicant of the delay is visible in the online file.
• The decision seems to be fully in line with G 2/21, which was given in March 2023, without citing that decision.
• "The applicant argued, referring to decision T 1842/06, that the applicant bears the burden to show that the claimed invention is reproducible only in cases where the invention relates, for example, to a technical effect that is a priori contrary to the laws of physics."
• "The board is not convinced by this argument because, as stated in point 2., it is established case law that the suitability of the product for the claimed therapeutic application must be derivable from the application unless already known to the skilled person. The board notes that the decision referred to by the appellant does not deal with a claim for a medical use and its content is, therefore, not relevant for the case in hand."
• "It is undisputed that the application does not include experimental results showing that a progesterone antagonist as defined in claim 1 was suitable for preventing cancer. Rather, to demonstrate the mechanism underlying the claimed therapeutic application, namely that abnormal autocrine hCG production causes carcinogenesis, the appellant relied on a theoretical explanation. The board concurs with the appellant that, in principle, the suitability of a composition for a claimed therapeutic application may be derivable from the application or common general knowledge even in the absence of experimental results."
• After a detailed analysis: "In conclusion, the application presents a theory which has not been validated by any experimental evidence. The appellant refers to prior art documents and to a theoretical concept consisting of steps A to E to show that the only logical conclusion is that hCG production is the cause of cancer. However, in the board's view document D5 shows that alternative theoretical conclusions are possible. In fact, the application acknowledges that the author of document D5 came to a different conclusion despite having investigated the functions of hCG in cancer and embryogenesis (see application, page 7, third paragraph). Document D39 does not support the idea that cell proliferation can be inhibited in all cancers by antagonising hCG, as claimed. In light of the above, the board concludes that prevention of carcinogenesis by inhibiting hCG production is not disclosed in a manner sufficiently clear and complete (Article 83 EPC)."

• EPO 

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