T 1199/22 - When must a witness be heard?

Key points

• When must an offered witness be heard by the OD? 
• "Opponent 3 criticised that the opposition division took this decision - that the alleged prior use did not form part of the state of the art - without hearing the witnesses Mr Weist and Mr Schubert, because the witnesses had not only been offered to confirm that the meeting to which D24 relates took place, but also to testify as to the participants and the contents of the meeting (opponent 3's notice of opposition, page 10, as reproduced in opponent 3's statement of grounds of appeal, page 7). This included the delivery. Opponent 3 also criticised the fact that the witness Mr Hasenclever was heard on the contents of D24 instead of the witnesses that had been offered in relation to it. In their opinion, not hearing the witnesses Mr Weist and Mr Schubert affected the outcome of the decision."
• "The opposition division found that the presentation D24 and the general statements by the witness Mr Hasenclever did not prove beyond reasonable doubt the actual delivery of the foils to Hueck, and that considerable doubts remained as to the public nature of the delivery, if any (point 2.4.2 of the impugned decision). The opposition division was of the opinion that the alleged deliveries in the presentation D24, page 11, could be considered to be more likely than unlikely, but it concluded on the basis of D24 and Mr Hasenclever's testimonial (who, however, did not participate in the relevant meeting) that "absent any indications to the contrary" there were doubts as to the public nature of the alleged sales in view of the applicable standard of proof, beyond reasonable doubt (ibid.)."
• The Board: "the witnesses Mr Weist and Mr Schubert had been offered to testify as to the content of the meeting, which included the delivery of the foil because this meeting (in the form of the internal presentation D2
• 4) was provided as the (only) evidence of the delivery (opponent 3's notice of opposition, page 10, second and fifth paragraphs). In the light of the above, it is not possible to exclude the possibility that the opposition division might have come to a different conclusion if it had heard the witnesses Mr Weist and Mr Schubert on the content of this meeting."
• " Furthermore, the alleged prior use with order number 709.437-01 seems to be highly relevant because it allegedly relates to a foil having a relevant chemical composition (D27), ... "
• "In particular, it may be more relevant than the other prior art under consideration, and - if proven - may thus be decisive for the outcome of the case. For these reasons, it appears equitable that the witnesses Mr Weist and Mr Schubert should be heard before deciding on the public availability of the prior use "Hydro/Hueck"."
• The case is remitted.

EPO 

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

Good luck to all EQE candidates

Key points

• If you enjoy this blog, you are surely well prepared! 

T 1799/21 - Too late is too late

Key points

• The opposition is rejected. The opponent appeals. The Board agrees with the opponent, that claim 1 defines the invention in a too broad manner. 
• "claim 1 is directed to any recombinant [bacteria] strain of the order of Actinomycetales having at least one non-functional gene encoding an enzyme having vanillin reductase (vr) activity" (having a certain sequence)
• A non-functional vanillin reductase enzyme is useful when producing vanillin. 
• " The order of Actinomycetales describes a large group of bacterial strains which inter alia encompass the genus Amycolatopsis and Streptomyces. The recombinant strain of claim 1 is not further characterised besides its origin and the presence of at least one non-functional vr1 to vr5 gene. Claim 1 is in particular silent on the strain's suitability to produce a certain product, for example, vanillin."
• " A matter of particular importance in the present case is the issue of whether or not substantially all recombinant strains defined in claim 1 are capable of producing vanillin, at least to a low extent."
• After reviewing the technology: "In view of the considerations above, it has to be concluded that claim 1 encompasses as an embodiment recombinant non-vanillin producing strains of the order Actinomycetales. This embodiment will be dealt with in the following under inventive step."
• "the provision of an alternative recombinant strain with at least one non-functional vr1 to vr5 gene does not amount to more than an arbitrary choice from a number of different equal solutions, i.e. the provision of further recombinant Actinomycetales strains comprising at least one non-functional gene, each of which would be obvious to the skilled person."
• Claim 1 is considered to be obvious.
• In Auxiliary Request 13, the strain is limited to one particular strain (producing vanillin).
• "New auxiliary requests 12 and 13 were filed for the first time at the oral proceedings before the board. The respondent argued in support of their admittance that the amendments were a reaction to the board's communication and that the amended claims 1 of both claim sets were derived from the other claims as granted, in particular, from claim 12 as granted for auxiliary request 12 and from claim 3 as granted for auxiliary request 13. "
• " However, the submission of auxiliary requests 12 and 13 only at the oral proceedings as a reaction to objections that were on file since the first instance proceedings cannot represent exceptional circumstances that could justify this late reaction. These objections were also maintained by the appellant in their statement of grounds of appeal. Since therefore the objections were not brought up by the board, the submission of these new auxiliary requests cannot be justified as a reaction to the board's preliminary opinion either. In addition, procedural economy could also not provide any reason for the respondent not to file auxiliary requests 12 and 13 at an earlier stage. The issue of whether or not the appellant was taken by surprise does also not relate to the question whether exceptional circumstances have prevented the respondent from filing auxiliary requests 12 and 13 earlier, and is thus irrelevant as well."

EPO 

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

T 2662/22 - When to present the auxiliary inventive step attack?

Key points

• If you present a novelty attack in a Notice of opposition, should you add an inventive step attack for the same document?
• "In the present case, it is not disputed that the opponent did not argue lack of inventive step starting from D3 in its opposition notice, it was only used to argue lack of novelty (cf. opposition notice, pages 4, 5 and 6). The inventive step objection was late filed in opposition. The opposition division (see its impugned decision, section 4.4) exercised its discretion under Article 114(2) EPC not to admit this objection into the proceedings."
• "Whether the objection was first made at the oral proceedings (cf. minutes point 17) or with the opponent's letter of 29 April 2022, since the latter date is well after the 9 month opposition period, in both cases the objection would be late filed."
• "In considering admittance of the late filed inventive step objection based on D3, the opposition division considered its prima facie relevance (see impugned decision, section 4.4 and minutes point 21), which is the correct principle to apply (see Guidelines for examination at the EPO, E-VI-2). That the appellant-opponent may not agree with the opposition division's conclusion does not render the principle applied by the opposition division wrong. Moreover, the matter was discussed with the parties at the oral proceedings, so they were heard. Therefore, in exercising its discretion, the opposition division appears to have applied the right principles and to have done so in a reasonable way. Therefore, the Board does not intend to overrule how the opposition division exercised its discretion."
•  The paragraph is a quote from the preliminary opinion of the Board, which was included as a ground in the Board's decision.
• " Neither in written proceedings nor at the oral proceedings did the parties comment on this part of the communication. Nor did the Board see any reason to revise its preliminary opinion. Therefore, the Board decided not to admit the objection"
• As a comment, we should perhaps not make too much out of a decision where the appellant does not contest the preliminary opinion of the Board. But to me, I think it makes sense to first await which distinguishing features the proprietor identifies for a novelty attack in their reply under Rule 79 EPC before the opponent is required to present an auxiliary inventive step attack. 
• The OD's decision is, of course, there, and it would be good to know what the current practice is of the ODs. However, the Board does not discuss the decision of the OD in great detail. 
• 
  

EPO 

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

T 0832/22 - On evidence and when something is proven

Key points

• When is a statement proven? What is the role of the standard of proof?
• The Board: "The Enlarged Board's reference in G 2/21 to a judge's personal conviction makes clear that it is the state of mind of the members of the fact finding body which is decisive in the evaluation of evidence. This is always the case, regardless of which standard of proof is to be applied. In other words, referring to the deciding body's conviction that an alleged fact occurred (see T 1138/20, Reasons 1.2.1, last paragraph, and T 1311/21, Reasons 3.2.1(d)(vi)), does, strictly speaking, not yet say anything about which standard of proof should be applied by the deciding body to arrive at this conviction."
• "As to "the required standard of proof" referred to by the Enlarged Board in G 2/21, different concepts have been developed in the case law of the Boards of Appeal. The EPO standard of proof is generally the balance of probabilities. By way of exception, the standard of proof is that of beyond reasonable doubt, mainly in opposition proceedings where only the opponent has access to evidence concerning, usually, an alleged public prior use "
• As a comment, I'm not sure that 51% likelihood is generally sufficient, see also below.
• "[S]tandards of proof relate, in legal systems based on the principle of free evaluation of evidence, necessarily to a mental state, namely to the nature or degree of conviction of the members of the fact finding body. Accordingly, it is difficult to quantify the difference in the required degree of conviction between "the balance of probabilities" standard and the "beyond reasonable doubt" standard. In fact, attempting to describe this difference in the form of numerical thresholds, for example as a certain percentage of likelihood that an alleged fact occurred, can even be misleading. In regard to the "beyond reasonable doubt" standard, it thus seems more expedient to focus on the term "reasonable". In the present Board's view, this expresses that the "beyond reasonable doubt" standard does not require absolute certainty, and that it is sufficient if the (majority of the) members of the deciding body have no reasonable doubt that[t] an alleged fact occurred. In other words, even if there is some remaining doubt, the "beyond reasonable doubt" standard of proof can be met as long as the remaining doubt is not reasonable, which can be understood as overall insubstantial in view of the entirety of the available evidence."
• "if the higher one of two disputed standards of proof is met, it can be left open which of these standards must be applied when assessing the evidence in question. Hence, if the deciding body is convinced beyond reasonable doubt that an alleged fact occurred, there is no need to decide which standard of proof is applicable (see, for example, T 2466/13, Reasons, 2.1.1). For the reasons given below, this is the situation in the present case."
  
  
• The opponent had filed evidence of the publication date of a document. "D39 is a digital forensic report by the company BIT4LAW SRL created "in the interest of" the opponent (see D39, page 1, and chapter 2, page 4: "Introduction". D39 establishes, inter alia, the upload dates of certain documents [including D9] from the opponent's computer system to a public web server (see chapter 5 starting on page 13)."
• "the Board considers that D39 - a document only cursorily mentioned in the appealed decision and not considered in substance - establishes that D9 was publicly available on the internet at least on 19 November 2014, i.e. well before the priority date of the patent (29 March 2017)."
• "The data on page 21 of D39 also contain the information that version 1.0 of the document in question was last updated by Daniela Volpin on 19 November 2014. Ms Volpin confirmed in her affidavit (D38) that on 19 November 2014 she "personally uploaded on the Carel website the release 1.0 dated 30/10/2014 of the Technical Manual of the Heos device". The information in D38 is thus consistent with that in the report D39."
• There was further supporting evidence in the form of affidavits.
• An interesting point is the level of evidence required in this case to show the publication date of the document. "Up to the hilt" is not limited to prior use. 

EPO 

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

T 1224/24 - When the EPO forgets the drawings and the proprietor notices in time

Key points

• The appeal lies from the decision of the examining division to grant a European patent on the basis of the application documents indicated in the communication under Rule 71(3) EPC dated 13 December 2023.
• The appeal was filed on 03.07.2024. The DTG was dated 03.05.2024. The mention of the grant was 29.05.2024.
• The Board: "The appeal is admissible since the appellant is adversely affected by the omission of 48 out of 52 drawings in the decision to grant. The granted version of the patent corresponds neither to the text submitted by the applicant, nor to a text agreed upon or deemed approved by the applicant." 
• "A review of the file history reveals that while several versions of the description and claims were submitted by the applicant on 16 September 2021, 2 August 2022, 10 August 2022, and 13 September 2023, the figures or drawing sheets were never amended or partially withdrawn. This indicates that the drawings forming part of the applicant's request for grant were those filed with the request for entry into the European phase-namely, the original drawing sheets 1/52, 2/52, 4/52 to 27/52, 29/52 to 36/52, 38/52, 39/52, and 41/52 to 52/52, along with the amended drawing sheets 3/52, 28/52, 37/52, and 40/52, which were submitted on 27 September 2020 upon entry into the European phase. All these drawings were correctly published in the A1 application."
• "The communication under Rule 71(3) EPC dated 13 December 2023 proposed amendments to the description and to claim 1 but did not indicate that the text intended for grant differed from the applicant's request regarding the drawings. Furthermore, no prior communication from the examining division proposed amendments to the drawings filed by the applicant, or contained any comments on them. All communications stated that, for the figures, the examination was carried out on the amended drawing sheets 1/4-4/4 as filed upon entry into the regional phase before the EPO. However, the file contains no explicit approval from the applicant for the removal of the remaining 48 originally filed drawings. It appears that neither the members of the examining division nor the appellant realized that the original drawing sheets 1/52, 2/52, 4/52 to 27/52, 29/52 to 36/52, 38/52, 39/52 and 41/52 to 52/52 were omitted and only the amended drawing sheets 3/52, 28/52, 37/52 - renumbered 1/4- 4/4 - were considered by the examining division."
• " In accordance with T 1003/19 (catchword and point 2.4 of the reasons), T 1823/23 (point 1.9 of the reasons), T 2081/16 (point 1.4 of the reasons), the Board considers that the legal consequence set out in Rule 71(5) EPC can only apply if the communication under Rule 71(3) EPC reflects the examining division's intention regarding the application documents on which the patent is to be granted."
• "Under normal circumstances, it can be assumed that the text referred to in a communication under Rule 71(3) EPC reflects the examining division's intention regarding the text on which the patent is to be granted. However, this is not the case when objective elements in the communication and/or in the text annexed to the it, such as significant discrepancies between the communication and the "Druckexemplar", or within the "Druckexemplar" itself, clearly indicate that the text does not correspond to the examining division's intention (see T 1003/19, points 2.4.3 and 2.4.4)."
• "  the Board concludes in the present case that neither the documents referred to in Form 2004C nor the "Druckexemplar" reflected the text in which the examining division intended to grant the patent. Hence the text communicated to the applicant with the communication of 13 December 2023 did not correspond to the text intended for grant under Rule 71(3) EPC."
• " If the applicant is not communicated the text intended for grant under Rule 71(3) EPC, the legal consequence outlined in Rule 71(5) EPC does not apply. Therefore, the applicant's subsequent filing of translations and payment of fees for grant and publishing do not imply approval of the communicated text."
• " A decision to grant under Article 97(1) EPC, based on a text that was neither submitted nor agreed upon by the applicant, as is this case (see points 1.1- 1.11 above), does not comply with Article 113(2) EPC. Therefore, the decision under appeal is to be set aside."
• " the board considers that the present decision does not deviate from G 1/10, which determined that Rule 140 EPC cannot be used to correct the text of a patent, but did not concern the interpretation of Rule 71 (5) EPC. Therefore, Article 21 RPBA does not apply. The Board fully agrees with and refers to the reasoning in T 2081/16 (point 3) and T 1003/19 (point 4)."

EPO 

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

T 0423/21 - When the EPO forgets the drawings

 Key points

• This applicant reaps the bitter fruits of  G 1/10 (in other words, the present case illustrates the harsh consequences of the Boards' current interpretation of G 1/10. 
• The PCT application was filed with drawings (18 pages) and had the drawings in the WO publication in 2013. 
• The PCT Pamphlet  (WO publication WO2013184830) is not included in the EPO's online file wrapper. 
• Why is unclear to me. The WO publication is usually included in the EPO online file, see e.g. this case. 
• Hence, we cannot see what the EPO received (or obtained) from the IB / WIPO as the PCT application in 2014. Does any of the readers know more about this? 
• Amended claims and an amended description are filed in the prosecution.
• The Rule 71(3) Communication does not include the drawings: they are not part of the Druckexemplar (the "Text intended for grant (version for approval")  in the online file, nor are they listed in Form 2004, i.e. the form that is the basic part of the Rule 71(3) communication). Nothing is said about the drawings in Form 2004: some amendments by the EPO are listed, but nothing about the drawings. 
• The patent is granted on 8 May 2019 (the date of the publication of the mention of the grant). The decision to grant is dated 11.04.2019.
• The applicant files a request for a correction on 23.07.2019. 
• The Board does not grant any remedy. The B1 publication corresponded to the Druckexemplar. The request for a correction under Rule 140 is refused, referring to G 1/10.
• "As it is the applicant's duty to properly check all the documents making up the communication under Rule 71(3) EPC (i.e. Form 2004 and the Druckexemplar), the responsibility for any errors remaining after grant are his alone, whether the error was made (or introduced) by him or by the examining division."
• The request under Rule 139 is also refused.
• Perhaps an appeal against the decision to grant in combination with a request for re-establishment could have been tried, but that procedure was ruled out by the recent decision T 0178/23. 
• Of course, decisions of the Enlarged Board are not carved in stone (see G3/19 point xx), so a referral could have been requested. G1/10 was about a change of a typographic error in the claims. It is not about the EPO losing parts of the application, in other words, ummarked amendments by the EPO of the application.
• Finally, possibly the error by the EPO can be treated as a correctable formatting error: H-VI,4: "Formatting/editing errors are alterations in the patent documents which occur during the preparation of the Druckexemplar and which are indicated neither by standard marks nor in Form 2004." (also in the 2019 edition). The decision of the Examining Division does not refer to this specific paragraph of the Guidelines. 
• The example in the Guidelines of a "formatting/editing error" refers to "the two top lines" in a page that "have just disappeared" from the Druckexamplar without editing marks in the Druckexmplar and without an indication on Form 2004). This can be corrected, according to the GL.
• Given that the letters in the Druckexamplar don't have little legs, the example in the GL  actually refers to the EPO's software deleting or omitting the two sentences during the preparation by the Druckexmplare (in fact, the example mentions that there are other, marked, edits by the Examining Divisio on the same page). 
• I don't see a size limit in the GL's definition of "Formatting/editing errors are alterations in the patent documents which occur during the preparation of the Druckexemplar and which are indicated neither by standard marks nor in Form 2004", i.e. no limit to alterations of less than three lines, and no exclusion of alterations in the drawings. 
• There could be possible reasons why the remedy of H-VI,4 is not applicable, but as the present  decision is not concerned with that remedy, there is no need to speculate on any possible obstacles. 
• The Board does not comment on the procedure of GL H-VI,4, so nothing in the present decision is a problem for that remedy.