14 May 2021

T 0081/20 - First level of convergence

 Key points

  • “ in its statement of grounds of appeal the appellant [opponent] for the first time brought forward objections of a lack of original disclosure with respect to [certain claim features]. Therefore, they do not meet the requirements of Article 12(2) RPBA 2020 and are, according to Article 12(4) RPBA 2020, to be regarded as an amendment to the appellant's case.”
  • “Furthermore, the appellant did not demonstrate that these objections were admissibly raised and maintained in the opposition proceedings leading to the decision under appeal. Therefore, according to Article 12(4) RPBA 2020, any such amendment may be admitted only at the discretion of the board. Contrary to the requirement under Article 12(4), third sentence, RPBA 2020, the appellant did not provide any reasons why it submitted the amendment only in the appeal proceedings.”
  • The objection is also covered by “Article 12(6), second sentence, RPBA 2020”. Moreover, “the board is of the opinion that the appellant could and should have submitted the newly raised objections already in the first-instance proceedings. The appellant did not set out any circumstances (and the board fails to see any) which would justify the admittance of the new objections.”
  • “In view of the above, the need for procedural economy and the fact that these objections appear prima facie not to prejudice maintenance of the patent, the board, exercising its discretion under Article 12(2),(4) and (6) RPBA 2020, does not admit the objections raised by the appellant for the first time in the grounds of appeal into the proceedings.”

T 0081/20 -

https://www.epo.org/law-practice/case-law-appeals/recent/t200081eu1.html



1.2 Further features

In the present appeal case the statement of grounds of appeal was filed on 25 February 2020, i.e. after the date of entry into force (1 January 2020) of the new Rules of Procedure of the Boards of Appeal (RPBA 2020).

According to Article 12(2) RPBA 2020, a party's appeal case should be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based. However, in its statement of grounds of appeal the appellant for the first time brought forward objections of a lack of original disclosure with respect to features relating to the reflective element and the primary and secondary paths. Therefore, they do not meet the requirements of Article 12(2) RPBA 2020 and are, according to Article 12(4) RPBA 2020, to be regarded as an amendment to the appellant's case.

Furthermore, the appellant did not demonstrate that these objections were admissibly raised and maintained in the opposition proceedings leading to the decision under appeal. Therefore, according to Article 12(4) RPBA 2020, any such amendment may be admitted only at the discretion of the board. Contrary to the requirement under Article 12(4), third sentence, RPBA 2020, the appellant did not provide any reasons why it submitted the amendment only in the appeal proceedings.

[read more after the jump]

13 May 2021

T 0106/16 - Art.123(2) objection raised by Board

 Key points

  • The board has doubts that an objection of added subject-matter raised by a board in reaction to amendments submitted at the appeal stage may, in general, constitute cogent reasons for submitting new requests, as an appellant has to be aware that every amendment will have to be examined for compliance with Article 123(2) EPC (see T 2214/15, Reasons, point 5.4).”

T 0106/16

decision text omitted

12 May 2021

T 1148/15 - A review of the PSA

Key points

  • The Board provides a very useful general review of the problem-solution approach.
  • “The first step of the problem-and-solution approach is to determine the closest prior art, i.e. the item of prior art which appears to be the most promising starting point for arriving at the claimed subject-matter in an obvious manner.”
    • “The main reason for identifying the closest prior art is that if it can be established that the skilled person would not have arrived at the claimed subject-matter in an obvious manner when starting from the closest prior art, then it can be reasonably assumed that the same conclusion would be true when starting from any other item of prior art” (italics added). The Board adds that if the assumption turns out to be wrong “the problem-and-solution approach may have to be repeated for any prior art that also qualifies as a suitable starting point”.
    • “As a first criterion, the closest prior art should be related to the claimed invention, in the sense that it should disclose subject-matter conceived for the same purpose or aiming at the same objective, corresponding to a similar use, or relating to the same or a similar technical problem or, at least to the same or a closely related technical field.”
    • “As a second criterion, the closest prior art should disclose subject-matter having the greatest number of technical features in common with the claimed invention, i.e. requiring the minimum of structural and functional modifications.”
    • “ the first criterion should be given more weight than the second” (summarizing CLBA I.D.3.2)
    • “If the closest prior art also had to disclose the purpose or effect of the distinguishing feature(s) [as argued by the applicant], it would mean that only items of prior art which contained a teaching towards the distinguishing feature(s) would qualify as the closest prior art. However, this is not required by the problem-and-solution approach because the teaching towards the distinguishing feature(s) may come from another item of prior art or from the skilled person's common general knowledge.”
    • “the closest prior does not have to disclose all the problems solved by the claimed invention. In particular, it does not have to disclose the objective technical problem [...]”
  • “the technical effect in question is that achieved by the distinguishing features. The technical effect is usually one or more technical advantages (and possibly one or more accompanying disadvantages). When the claimed subject-matter is a process for making an object, it is also the object itself.”
  • “In most cases, the objective technical problem can be be formulated as how to achieve the technical effect. ”
    • “[The objective technical problem] is usually a problem the skilled person is familiar with because it relates to known drawbacks of the prior art in the technical field of the invention.”
    • “Determining the technical effect is a useful intermediate step for ensuring the proper formulation of the objective technical problem.”
    • “The determination of the technical effect is objective because it is based on an objective comparison of the claimed subject-matter with the closest prior art.”
  • “In the third step of the problem-and-solution approach, according to the established case law of the boards of appeal, in order to determine whether the claimed invention would have been obvious to the skilled person starting from the closest prior art and having regard to the state of the art within the meaning of Article 54(2) EPC [], the boards apply the "could-would approach". This means asking not whether the skilled person could have arrived at the claimed invention by modifying the closest prior art, but whether they would have done so in the expectation of solving the objective technical problem or in the expectation of some improvement or advantage”.
    • As a comment, the alternative of “or in the expectation of some improvement or advantage” not necessarily tied to the objective technical problem is in my view not the basic form of the PSA. Why formulate to objective technical problem carefully in the second step to forget about it in the third step?
    • As a further comment, I think that question is whether the skilled person would have arrived at something falling within the ambit of the claimed invention. A claim specifying a broad range is not inventive if one embodiment in that range is obvious even if the prior art does not make the whole range obvious. 
    • The Board: “ it is established case law that selecting one solution from a host of obvious solutions does not render the selected solution inventive, in the absence of an unexpected technical effect associated with that selection”.


T 1148/15 -

https://www.epo.org/law-practice/case-law-appeals/recent/t151148eu1.html



Reasons for the Decision

1. The appeal is admissible.

The present application

2. The present application relates to a set-top box for cable television, comprising a front-end portion for receiving and transmitting signals over said cable and a back-end portion for further processing the signals received by or to be transmitted by the front-end portion. The front-end and back-end portions are controlled by a front-end processor and a back-end processor, respectively, which communicate with each other.

Main request - inventive step (Article 56 EPC 1973)

3. Problem-and-solution approach

The problem-and-solution approach has been developed by the case law of the boards of appeal of the EPO to ensure that inventive step is assessed objectively and avoid ex post facto analyses of the prior art (see Case Law of the Boards of Appeal of the European Patent Office (hereinafter "CLBoA"), 9th edition, July 2019, I.D.2).

The steps of the problem-and-solution approach may be summarised as follows:

(a) identifying the closest prior art and determining the distinguishing features, i.e. the features of the claimed subject-matter that are not disclosed by the closest prior art;

(b) determining the technical effect achieved by the distinguishing features and deriving from the technical effect the objective technical problem solved by the claimed subject-matter with respect to the closest prior art;

(c) examining whether the skilled person, starting from the closest prior art and having regard to the state of the art within the meaning of Article 54(2) EPC 1973, would have arrived at the claimed subject-matter in an obvious manner.

11 May 2021

T 0884/18 - Wayback Machine

 Key points

  • “As variously stated in case law, the appropriate standard of proof for Internet citations is the "balance of probabilities" and not "beyond reasonable doubt". The conclusions reached in the earlier decision T1134/06 that the stricter standard of proof "beyond reasonable doubt" had to be applied to Internet disclosures has been superseded by more recent case law [] Thus availability to the public is considered to be established on the balance of probabilities by the date stamps on evidence A4a/A4b from the Wayback Machine.”
  • “ The respondent-proprietor also submits that according to information available on the WebArchive, the recording date of the images by the Wayback Machine may not always be the same as that of the general HTML page on the date stamp. However, they neither argue that this is in fact the case for A4a/A4b nor have they submitted any evidence to that effect. The Board therefore sees no reason to question the validity of the availability to the public of the whole assembled web page shown in A4a/A4b, including the images, on their date stamp of 2 April 2006.”

  • The Board also applies Article 13(2) RPBA 2020, and highlights that part of the decision in the catchword, but I don't see any remarkable point in that. The Board seems to suggest that if they issue the preliminary opinion months in advance of the hearing, the patentee should not file a new main request at the beginning of the oral proceedings even if the preliminary opinion does not set any time limit for filinga  response.


T 0884/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t180884eu1.html



6. Internet evidence A4a/A4b

6.1 As variously stated in case law, the appropriate standard of proof for Internet citations is the "balance of probabilities" and not "beyond reasonable doubt". The conclusions reached in the earlier decision T1134/06 that the stricter standard of proof "beyond reasonable doubt" had to be applied to Internet disclosures has been superseded by more recent case law, see Case Law of the Boards of Appeal, 9th edition 2019 (CLBA), I.C.3.2.3.c)(i).

6.2 Thus availability to the public is considered to be established on the balance of probabilities by the date stamps on evidence A4a/A4b from the Wayback Machine.

6.3 The respondent-proprietor also submits that according to information available on the WebArchive, the recording date of the images by the Wayback Machine may not always be the same as that of the general HTML page on the date stamp. However, they neither argue that this is in fact the case for A4a/A4b nor have they submitted any evidence to that effect. The Board therefore sees no reason to question the validity of the availability to the public of the whole assembled web page shown in A4a/A4b, including the images, on their date stamp of 2 April 2006. This is before the relevant valid date for claim 1 of the main request, 6 November 2006 (second priority date) or 7 November 2006 (filing date).

6.4 The Board concludes that A4a/A4b is part of the prior art in the sense of Article 54(2) EPC for claim 1 of the main request.

10 May 2021

T 0879/18 - New objection is new fact

Key points

  • The OD decided to not admit AR-1 reasoning that “The opposition division is however of the opinion that MR was late filed in the sense of that O [the opponent] could not anticipate such an amendment due to the fact that the alleged basis was only present in the description. The opposition division therefore holds the view that MR is not admissible”. 
  •  However, the opponent had raised a new objection based on a new claim interpretation during the oral proceedings before the OD and the patentee had filed the request in response to that objection.
  • The Board: “In accordance with the Guidelines for examination (in the 2017 version then valid), section E-VI.2.2 point (a), if new facts and evidence are admitted a request of the proprietor for corresponding amendment would have to be admitted as the subject of the proceedings has changed. A new objection of lack of novelty based on documents not previously cited in this context constitutes new facts and evidence. As these were discussed (and thus admitted) the proprietor should have been given an opportunity to amend.” (emphasis added).
  • The AR was an appropriate response to the new objection.
  • “Consequently, the Board finds that the opposition division exercised its discretion unreasonably in not admitting the amended main request (now auxiliary request) in response to the opponent's fresh objection” and the request is admitted.


T 0879/18

https://www.epo.org/law-practice/case-law-appeals/recent/t180879eu1.html



3. Auxiliary request 1, admittance, Article 12(4) RPBA with Article 114(2) EPC

3.1 The opposition division decided (see impugned decision, reasons, point 14) to exercise its discretion under Article 114(2) EPC by not admitting this request into the opposition proceedings.

3.2 According to settled jurisprudence of the Boards of appeal (see CLBA IV.C.4.5.2, and the cited decisions, for example T0640/91, headnote III and reasons, 6.3) a board of appeal should only overrule the way in which a department of first instance has exercised its discretion if it concludes that it has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way.

3.3 In the impugned decision (see reasons, point 14), the opposition division reasoned this point as follows:

"P [The proprietor] argued that this new MR [main request] was filed in response to the new argument relating to the definition of an array.

The opposition division is however of the opinion that MR was late filed in the sense of that O [the opponent] could not anticipate such an amendment due to the fact that the alleged basis was only present in the description. The opposition division therefore holds the view that MR is not admissible in accordance with Article 114(2) EPC".

3.4 It appears to the Board that the new argument referred to by the opposition division was a new interpretation of the term "array" submitted in connection with a new lack of novelty objection against the current main request with respect to D5 and D13 (see the minutes, points 8 and 13). This objection based on a new interpretation was first raised by the opponent at the oral proceedings, as acknowledged by the appellant opponent at the oral proceedings before the Board. Indeed, neither the summons of 19 July 2017 nor the opponent's subsequent submission dated 23 November 2017 which deal with this request (filed as 2nd auxiliary request with letter of 9 March 2017) mention novelty vis-a-vis D5 or D13 or the new interpretation of the term "array".

3.5 In accordance with the Guidelines for examination (in the 2017 version then valid), section E-VI.2.2 point (a), if new facts and evidence are admitted a request of the proprietor for corresponding amendment would have to be admitted as the subject of the proceedings has changed. A new objection of lack of novelty based on documents not previously cited in this context constitutes new facts and evidence. As these were discussed (and thus admitted) the proprietor should have been given an opportunity to amend. That they did so by adding detail from the description to clarify the meaning of the term "array" in order to delimit the claimed subject-matter from the cited prior art appears an appropriate response, that could be expected.

3.6 Consequently, the Board finds that the opposition division exercised its discretion unreasonably in not admitting the amended main request (now auxiliary request) in response to the opponent's fresh objection.

3.7 Therefore, the Board decided to admit the first auxiliary request into the appeal proceedings.

7 May 2021

T 0103/15 - Anonymous experimental report

 Key points

  • In this opposition appeal, the opponent is a straw man (admitted). 
  • “The opposition division decided not to take the test report D9 ("Rapport d'essais") into account, which the opponent (now appellant) had filed in order to demonstrate that the disclosure of the claimed invention in the patent was insufficient and that the subject-matter of claim 1 was not based on an inventive step. Since the name and qualification of the author of the test report were unknown, the test report was not considered to be sufficiently reliable”
  • The Board considers that the OD was right in doing so.
  • “with respect to the probative value of test evidence, it is important not only to indicate the conditions under which these tests have been conducted, but also to specify the name of the testers and their employers so that the relationship between the testers and the party can be established if necessary. This also applies in cases where the opponent is acting as a straw man on behalf of a company, because then the relationship between that company and the testers could be a factor in the decision on the probative value of the test evidence filed by the straw man.”
  • “Generally, a straw man acting as opponent cannot derive any advantage from their position with regard to the evaluation of the evidence they have submitted. In the present case a neutral institute could have been assigned to perform the tests of document D9. This would have allowed the opponent to provide all necessary information for assessing the probative value of the test results without disclosing the identity of the client on behalf of which the opposition was filed.”

  • Regarding Art.117 in general: “he Enlarged Board of Appeal has recalled that proceedings before the EPO are conducted in accordance with the principle of free evaluation of evidence (see [G1/12]). Thus, the departments of the EPO have the power to assess whether the alleged facts are sufficiently established on a case-by-case basis. Under the principle of free evaluation of evidence, each piece of evidence is given an appropriate weighting according to its probative value. The deciding body takes its decision on the basis of all evidence available in the proceedings and in the light of its conviction arrived at freely on the evaluation of the submitted evidence.”

  • Regarding the admissibility of documents filed with the Statement of grounds under Art. 12(4) RPBA 2007:
  • “In its communication annexed to the summons to oral proceedings, the opposition division did not give a preliminary opinion on novelty or inventive step. Therefore, there was no specific reason apparent for the appellant to present these documents already during the first-instance opposition proceedings. Moreover, the documents represent the common general knowledge relating to thermosets, gelation and curing ...  Generally, the skilled person's common general knowledge has to be considered when assessing inventive step.”
  • Hence the documents are admitted.


T 0103/15 

https://www.epo.org/law-practice/case-law-appeals/recent/t150103eu1.html



Reasons for the Decision

1. Non-consideration of document D9 by the opposition division - right to be heard (Article 113(1) EPC 1973)

1.1 The opposition division decided not to take the test report D9 ("Rapport d'essais") into account, which the opponent (now appellant) had filed in order to demonstrate that the disclosure of the claimed invention in the patent was insufficient and that the subject-matter of claim 1 was not based on an inventive step. Since the name and qualification of the author of the test report were unknown, the test report was not considered to be sufficiently reliable (see contested decision, point 3 of the Reasons).

1.2 Neither in the EPC nor in the case law of the boards of appeal are formal rules laid down for the evaluation of evidence. The Enlarged Board of Appeal has recalled that proceedings before the EPO are conducted in accordance with the principle of free evaluation of evidence (see G 1/12, OJ EPO 2014, A114). Thus, the departments of the EPO have the power to assess whether the alleged facts are sufficiently established on a case-by-case basis. Under the principle of free evaluation of evidence, each piece of evidence is given an appropriate weighting according to its probative value. The deciding body takes its decision on the basis of all evidence available in the proceedings and in the light of its conviction arrived at freely on the evaluation of the submitted evidence.

6 May 2021

T 1839/18 - Strawman oppositions revisited

 Key points


  • In this opposition appeal, patentee argues that the opposition was filed by a strawman and that the opposition is hence inadmissible. The named opponent is a natural person.
  • Patentee's argument is that “at no point had the opponent proven that he had a true interest in the opposition, which however was a condition for any procedural act under the EPC. This position was supported by decision G 1/06 that thereby superseded earlier decisions to the contrary such as G 3/97.” G 3/97 hn.1(a) held that “an opposition is not inadmissible purely because the person named as opponent [...] is acting on behalf of a third party.”*
  • G1/06 pertains to the application of Article 76(1) EPC for divisional applications but includes the paragraph: “13.4 The Board accepts that the principle of prohibition of double patenting exists on the basis that an applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter if he already possesses one granted patent therefor.” 
    • This paragraph is the subject of referral G4/19 (pending as of 21.04.2021).
  • The Board undertakes an extensive review of the case law and also a comparative and historical legal analysis (legal board member Mr. Heath). 
  • The Board: “Summarising, the political rationale behind the remedy of opposition to be initiated by any person is the public interest. Already the English Statute of Monopolies 1623/24 has spelt out that patent monopolies are a burden to society. Their grant can only be justified by their technical contribution to society. Any person challenging a patent by way of opposition contributes to society by clearing the register from undeserved monopolies (where the patent is revoked), by reducing monopolies to the scope of their technical contribution (where the patent is limited in scope), or by adding legal certainty (where the patent is maintained unamended). Patents that are granted without meeting the requirements of patentability put in jeopardy the patent system's purpose of fostering industrial development in that competitors wishing to engage in research and development may divert such activities due to such wrongful titles. A further reason is that by opposition proceedings, legal certainty is enhanced.”
  • “The Board therefore remains unconvinced that the Enlarged Board's case law on "straw man" oppositions is inconsistent with later decisions, has been superseded or is in contravention of Art. 6 ECHR. Nor is it able to see how such an opposition might put the proprietor at a procedural disadvantage. Finally, labelling an opponent as a "straw man" is misguided, as no interest in raising an opposition is necessary or needs to be proven, and consequently any argument based on an opponent's alleged lack of "real interest" must fail.”

*) of course hn.1b adds: "Such an opposition is, however, inadmissible if the involvement of the opponent is to be regarded as circumventing the law by abuse of process" with further details given in the decision and in headnote 1(c).

Disclosure: the decision indicates V.O. - the firm where I work - as representative of the opponent.


Reasons for the Decision



1. The appeals are admissible.

2. Admissibility of the opposition

2.1 The patentee argued that the opposition was not validly filed because the opponent, whom the patentee referred to as a garage owner in Valladolid (Spain), had no interest whatsoever in doing so.

2.2 Of the various arguments advanced by the patentee to question admissibility of the opposition is decision G 1/06 (OJ 2008, 307), namely the following passage:

"13.4 The Board accepts that the principle of prohibition of double patenting exists on the basis that an applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter if he already possesses one granted patent therefor."


The patentee construes this statement as a general acknowledgement that every act performed before the EPO requires a legitimate interest, thereby making previous case law of the Enlarged Board in regard of straw man oppositions obsolete.