22 Mar 2019

T 0872/13 - Strawman opponent and accelearation appeal

Key points

  • The opponent asks for acceleration of the appeal. The opponent is "Strawman Limited". The opponent submitted that: "The real party of interest behind the opponent Strawman Limited was CSL Limited, which was developing a recombinant Factor VII- albumin fusion protein and therefore needed certainty to continue its development activities in view of the large sums involved. Any decision of CSL Limited as a potential licensee under the patent depended on the outcome of the appeal proceedings, and thus the request for accelerated proceedings should be granted as falling within one of the examples given in tOJ 2008 p.220].
  • The Board denies the reuest. "As to the appellant-opponent's second request for acceleration, the board noted that the party requesting acceleration, the appellant-opponent, had not argued that it had itself a legitimate interest in the proceedings being dealt with rapidly. The interests on which the request for acceleration were based concerned the company CSL Limited. This company was however not a party to the present appeal proceedings and the board saw no reason why the interests of this third party should be attributed to the appellant-opponent." 
  • This shows a disadvantage of a strawman opponent. 



EPO T 0872/13 - link

XVII. The arguments of the appellant-opponent, in so far as they are relevant to the present decision, may be summarised as follows:
Request for accelerated proceedings
The patent was causing uncertainty and hampering investment and development decisions by interested parties (first request for acceleration presented with the statement of grounds of appeal). The real party of interest behind the opponent Strawman Limited was CSL Limited, which was developing a recombinant Factor VII- albumin fusion protein and therefore needed certainty to continue its development activities in view of the large sums involved. Any decision of CSL Limited as a potential licensee under the patent depended on the outcome of the appeal proceedings, and thus the request for accelerated proceedings should be granted as falling within one of the examples given in the Notice from the Vice-President DG3 of 17 March 2008 (OJ EPO 2008, 220; second request for acceleration of the appeal proceedings).

21 Mar 2019

T 1455/14 - Correcting an error: threefold procedural violation

Key points
  • In this opposition appeal, the Opposition Division had used "its discretion to correct this obvious error" in the text of claim 1 after the oral proceedings had been closed. The Board finds this to constitute three procedural violations.
  • " there is no basis in the EPC for such an alleged discretion of the Oppo­si­tion Division. Furthermore, even if the opposition division considered there to be an obvious error, there was no corre­spon­ding request according to Rule 139 EPC on the part of the patent proprietor who may not have been aware of the existence of such an error. 
  • This results in a threefold procedural violation, because the written decision is based on a text amended by the opposition division" 



EPO T 1455/14 - link


Reasons for the Decision
1. Procedural violations
1.1 According to point 8 of the contested decision, the "Opposition Division uses its discretion to correct this obvious error" in the text of claim 1 after the oral proceedings had been closed. However, there is no basis in the EPC for such an alleged discretion of the Oppo­si­tion Division.
Furthermore, even if the opposition division considered there to be an obvious error, there was no corre­spon­ding request according to Rule 139 EPC on the part of the patent proprietor who may not have been aware of the existence of such an error.
This results in a threefold procedural violation, because the written decision is based on a text amended by the opposition division:
- which was not submitted by the patent proprietor [The reasoning of the decision is thus not based on an actual request of the patent proprietor - fundamental procedural violation number 1],
- on which the opponent had had no opportunity to comment [The opponent's right to be heard has been violated - fundamental procedural violation number 2] and
- which does not correspond to the decision announced at the end of the oral proceedings (Minutes, page 4, last paragraph) [The decision as announced at the end of the oral proceedings is not reasoned in wri­ting - fundamental procedural viola­tion number 3].

20 Mar 2019

T 1000/14 - Remittal in examination appeal?

Key points

  • In this examination appeal, the applicant requests remittal on the ground that "the board had raised new objections in the appeal proceedings which had not been discussed in the decision under appeal". Furthermore, according to G10/93, the Board can also examine new issues.
  • The Board discusses this request first. The Board notes that is a discretionary power to remit the case. The Board then " that both the claims under examination and the issues to be discussed have remained the same. The appellant could not have been taken by surprise by the aspects of the case pointed out by the board" 
  • " Since the substantive basis of the discussion has not changed, the board finds it appropriate not to remit the case to the department of first instance." 
  • I wonder if this means that if the Board had raised new issues, remittal would have been necessary. Article 111(1) EPC appears to assume that the Board first carries out "the examination as to the allowability of the appeal" and is quite clear that only following such examination, the Board "shall decide on the appeal". Article 111(1) EPC second sentence then states that "the Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution". In my view, this second sentence gives more information about the "shall decide" of the first sentence. This means that the Board must first decide whether the appeal is allowable, only if the appeal is allowable and the impugned decision is hence set aside, can a remittal be ordered. This rule is actually quite important because it safeguards the appellants right to a decision of the Board on the merits of his appeal: the Board can not simply remit the case to avoid having to take a decision on the merits of the appeal. 


EPO T 1000/14 - link

X. The appellant's arguments may be summarised as follows:
Remittal (Article 111 EPC)
The board had raised new objections in the appeal proceedings which had not been discussed in the decision under appeal, in particular the objection concerning lack of clarity. The board's further remarks implied that it regarded document D2 rather than D1 as the closest prior art. It was not fair for the appellant to have only one chance to respond to these new issues.
Reasons for the Decision
1. Remittal (Article 111 (1) and (2) EPC)
1.1 Under Article 111(1) EPC, a board of appeal has the discretionary power either to exercise any power within the competence of the department of first instance or to remit the case to that department for further prosecution.
1.2 Thus the appropriateness of remittal is a matter for decision by the boards, which assess each case on its merits.
1.3 In its Decision G 10/93 (OJ EPO 4/1995, 172), the Enlarged Board of Appeal held that in an appeal from a decision of an examining division in which a European patent application was refused, the board of appeal has the power to examine whether the application or the invention to which it relates meets the requirements of the EPC, including requirements which the examining division did not take into consideration or which it regarded as having been met. If there is reason to believe that such a requirement has not been met, the board shall include this ground in the proceedings.

19 Mar 2019

T 0174/16 - Airline strike and oral proceedings

Key points

  • This opposition appeal deals the decision of the OD to not cancel the oral proceedings held on 10 November 2015 in Munich when Lufthansa had a strike (with nearly 1,000 flights cancelled). 
  • The representative of the proprietor (patentee) found out about the strike on Monday 9 November 2015 (the strike was announced only on Saturday 7 November). By that time, he could not arrange for alternative flights from Warsaw to Munich. 
  • The Boards considers the decision of the OD to not cancel the oral proceedings to be a substantial procedural violation.
  • " It was also unreasonable to consider it "possible by taking due care" to travel by airplane and that "at least going by car would still have been possible". 
  • " it is not reasonable to expect the appellants' representative to take the car on the afternoon of the day before the oral proceedings by referring to "Google Maps" for a total (net) driving time of "8 - 10 hours", as the opposition division did, irrespective of whether the appellants' representative had a driving licence. Whether a [member of the public] present at the oral proceedings came by car from Warsaw is immaterial in this respect. Thus, it can certainly not be said that the appellant's representative "did not [make] all efforts [...] to get to the oral proceedings in Munich". It is thus unreasonable to consider the cancellation of the flight, along with the impossibility of using other travel means, not to constitute "serious reasons" within the meaning of the above provisions."
  • This is a substantial procedural violation. The impugned decision is set aside, the case is remitted, and the appeal fee is reimbursed.

EPO T 0174/16 -  link

Summary of Facts and Submissions
I. The appeal was filed by the appellants (patent proprietors) against the decision of the opposition division to revoke the patent in suit.
II. In the proceedings before the opposition division, the parties were summoned to oral proceedings to be held on 10 November 2015 in Munich.
[...]
VIII. The arguments of the appellants, as far as relevant to the present decision, may be summarised as follows:
The opposition division's decision to refuse the request for postponement was flawed. The request for postponement was not filed late, because the appellants' representative only found out about the strike on the morning of 9 November 2015, when he tried to perform an online check-in. As soon as he had found out about the strike he did everything he could to remedy the situation. While the written request was filed by fax only at about 15.00 hrs, the representative tried to contact the opposition division by telephone as early as 12.20 hrs, immediately after he had found out that rebooking of the flight was not possible, and around 13.45 hrs there was a telephone conversation with the first examiner of the opposition division, who was informed of the situation. It was not possible to fly to Munich on 9 November 2015. The fact that three people on the side of the opponent were present at the oral proceedings and came from Warsaw and Krakow cannot justify the assumption made by the opposition division that it was possible to fly to Munich. It was not possible to drive by car in particular because the appellants' representative does not have a driving licence. Immediately after the representative had been informed by the EPO that a written request was necessary, such a request was prepared and submitted by fax at about 15.00 hrs. The opposition division's argument that the representative could have gone to the airport in order to try to rebook was unreasonable. The representative had contacted the airline trying to rebook his flight, but to no avail. It was therefore pointless to go to the airport in order to try to rebook the flight.
Not only was the opposition division's decision unreasonable, but the appellants had also been misled by the EPO, in that the formalities officer had assured the appellants' representative in several telephone conversations that the oral proceedings would be postponed.


Reasons for the Decision
1. Request for postponement of the oral proceedings before the opposition division
1.1 It is within the discretion of the opposition division to grant a request for postponement of the oral proceedings before it. When arriving at its decision the opposition division has to consider all relevant factors of the particular circumstances of the case and must exercise its discretion in a reasonable way (T 1505/06, Reasons 1.3 and 1.4; T 447/13, Reasons 2 and 3 referring to G 7/93, Reasons 2.6, and citing T 2526/11, Reasons 2.2).

18 Mar 2019

T 0683/14 - Appeal decision without appeal

Key points

  • The decision was taken by the Board in extended composition with five members.
  • In this examination appeal, interlocutory revision was granted but the request for refund of the appeal fee was refused. Hence, this request is forwarded to the Board. The Board issues summons. The applicant withdraws the appeal and requests a 50% refund under (relatively new) Rule 103(2)(a) EPC.
  • The Board refuses the 50% refund. The reason is that there was no appeal to be withdrawn.
  • " The board notes that the examining division rectified the decision under appeal pursuant to Article 109(1) EPC. [...] This means that the examining division set the decision under appeal aside and allowed the appeal. The appeal was not remitted and has thus never been pending before the board. [...] In the absence of a pending appeal that might be withdrawn, Rule 103(2) EPC does not apply."
  • The Board also decides on the request for 100% refund based on an alleged procedural violation.
  • The facts are as follows. Oral proceedings were held before the OD, no decision was announced. A Rule 71(3) intention to grant based on auxiliary request was issued. In response, the applicant filed new claims and a new document, namely a declaration evidencing that an alleged prior art document was confidential. The ED then issued the refusal decision, which also stated that the new evidence was disregarded.
  • The Board finds that the ED erred by acting in this way. Even if the debate was closed at the end of the oral proceedings, no formal decision was taken, and the debate may be re-opened. The Board cites T 595/90 and finds that it applies by analogy to EPO departments of first instance. The quote of T95/90 is " ... the closing of the debate ... normally terminates the possibility of [making] further submissions. Observations submitted thereafter could only be taken into account if the Board reopened the debate (Article 113 EPC) which depends on its discretion." 
  • However, the Board labels this as an error "of a substantive nature" 
  • " In so proceeding, the examining division implemented its erroneous position that the confidentiality document submitted on 1 August 2013 could not be taken into account because the debate had been closed and a "decision" had been taken during the oral proceedings of 10 December 2012. This error was of a substantive nature, and the procedural consequences thereof, i.e. in particular the adopting of a decision directly, without considering resuming examination, on the basis of the confidentiality document, were caused exclusively by the implementation of the erroneous substantive position." 
  • As a comment, this means that if an Examining Division applies Article 113 erroneously (see the cited decision T 595/90) based on an incorrect understanding of case law, this is not a procedural violation according to this Board. I find this difficult to understand. Does the Board mean that a violation of the right to be heard based on a mistaken view on the case law or the meaning of Article 113 EPC is not a procedural violation? 
  • As a further comment, I note that the Board decides on the part of the appeal relating to the request for 100% refund while simultaneously finding that there was no appeal at all. Clearly, had the applicant not filed a notice of appeal, there would have been no decision on this point by the Board. So here we have a decision of the  Board, resulting from a Notice of appeal, but were an appeal "never [has] been pending before the board". I don't find this persuasive. Clearly, granting the 50% refund would have opened a loophole in Rule 103 in case of interlocutory revision (Rule 103 appears to assume that the negative impugned decision is accepted by the appellant rather than overturned by interlocutory revision). However, that loophole can easily be remedied by amending Rule 103(2) EPC.
  • The actual reasoning of the Board merely refers to the Board's preliminary opinion. This makes the decision difficult to read.


EPO T 0683/14 -  link

Summary of Facts and Submissions
I. The then applicants, now patent proprietors, had filed an appeal against the decision of the examining division refusing European patent application number 10 153 812.2. The examining division, enlarged by a legal member, rectified the decision under appeal pursuant to Article 109(1) EPC. The corresponding Form 2710 was dispatched on 25 March 2014.
The examining division did not allow the request for reimbursement of the appeal fee made in the statement of grounds of appeal. As a consequence, the case was referred to the board pursuant to Rule 103(2) (now 103(3)) EPC. The present decision deals with this sole pending request.
II. The board issued a summons to oral proceedings. In a communication attached thereto it expressed its provisional and non-binding view that, in the absence of a procedural violation, the appeal fee could not be reimbursed under Rule 103(1)(a) EPC. The communication is, in essential part, reproduced verbatim below.
[beginning of reproduction]
B. The grounds relating to the request for reimbursement of the appeal fee
1. In their statement setting out the grounds of appeal, the (former) appellants submit that, with the decision of 2 October 2013, the examining division refused the application in issue without having considered new evidence and without having issued a communication prior to the refusal. This constituted a clear violation of the "established procedural steps of the EPO". Accordingly, the appellants request reimbursement of the appeal fee.
2. The appellants explain the chain of events leading to the refusal as follows:
On 10 December 2012 oral proceedings took place before the examining division. The division came to the conclusion that the main request and the auxiliary requests were not allowable, except for auxiliary request 4. The main issue of the oral proceedings was whether or not the content of document D2 was public at the priority date, or which part of it was. The board notes that the examining division concluded that D2 did constitute prior art.
D2 is the following document (see point 1 of the decision of 2 October 2013):
NARROSCHKE, MATTHIAS, "Adaptive coding of the prediction error for H.264/AVC",
INSTITUT FÜR INFORMATIONSVERARBEITUNG, UNIVERSITÄT HANNOVER, [Online] 2 December 2005 (2005-12-02), pages 1-15, XP007902192.
The board notes that in the proceedings before the examining division the applicants submitted that the document was directed towards a non-public meeting of a technical committee ("Fachausschuss ITG FA 3.2", 2 December 2005, venue: Hildesheim, Germany) and was made available to the public only after the priority date of the application.
The appellants say that, with a communication under Rule 71(3) EPC of 4 April 2013, the examining division informed the applicants that it intended to grant a European patent based on auxiliary request 4.
On 22 July 2013 the applicants responded that they did not agree and submitted a new claim set as a basis for the patent. (The board notes that they also made detailed submissions why the examining division's view that D2 was state of the art at the priority date was wrong.)
On 26 July 2013 the primary examiner contacted the applicants' attorney by telephone in order to clarify a mismatch regarding that claim set.
In their reply of 1 August 2013, the applicants made a clarifying submission (declaring the claim set of the auxiliary request of 1 November 2011 dealt with in the oral proceedings of 10 December 2012 to be the valid one and re-filing it). This submission also included a new document (hereinafter: the "confidentiality document"), i.e. a letter by Prof. Dr.-Ing. Rolf Hedtke, dated 24 July 2013, to Dr. Narroschke, one of the applicants. In that letter, Mr. Hedtke explained that, based on a note in his records, he could confirm that Mr. Narroschke had pointed out confidentiality before the presentation of document D2 at the meeting on 2 December 2005. It followed that Mr. Hedtke's letter was further evidence of confidentiality of said meeting and thus of the question whether document D2 was public or not at the priority date and, as a consequence, whether the content of document D2 or part of it formed state of the art or not.
In a communication dated 1 October 2013 the examining division gave a brief summary of the telephone conversation of 26 July 2013. On 2 October 2013, the division adopted the decision to refuse the European patent application.
Accordingly, except for the clarification of the request according to the telephone call of 26 July 2013, the examining division directly sent the decision to refuse the European patent application as a response to the applicants' submission of 22 July 2013 and their submission providing further evidence of 1 August 2013.
In the decision to refuse the European patent application the examining division inter alia said on page 4, 1**(st) and 2**(nd) paragraph (emphasis added):
With their submission of 01.08.2013 the applicants clarified their request by filing the set of claims on which basis grant of a patent was requested. The applicants also submitted a document in which a further participant [Mr. Hedtke] indicated that the presentation of Mr. Narroschke was confidential.
This submission was filed after the debate on the matter had been closed and a decision had been taken during the Oral Proceedings and has therefore not been taken into account.
Relying on a number of portions of the Guidelines for Examination in the EPO (hereinafter: the "Guidelines"), Part C, Chapter V, the appellants refer to the fact that, further to the communication according to Rule 71(3) EPC, they had requested grant of a patent based on a higher ranking request previously held not to be allowable. They had also provided further evidence showing that document D2 was not state of the art. In these circumstances, it would have been mandatory for the examining division to resume examination. Instead, the examining division refused the application directly. This was a clear violation of the "established procedural steps of the EPO" justifying reimbursement of the appeal fee.
C. Subsequent procedure
The board notes that the examining division, in their communication of 23 October 2014 (at points 2 to 4) explained that they had rectified their decision to refuse. This was in view of the confidentiality document submitted on 1 August 2013 to which the appellants had referred in their statement of grounds of appeal and which put the public availability of document D2 in doubt. In that communication the division also requested a copy of notes made by Mr. Hedtke that were mentioned in the confidentiality document. With a letter of 28 January 2015 the appellants furnished a copy of those notes.
On 21 May 2015 the examining division decided to grant European patent number 2192783.
D. Legal assessment
Pursuant to Rule 103(1)(a)
The appeal fee shall be reimbursed in full
in the event of interlocutory revision ... if such reimbursement is equitable by reason of a substantial procedural violation...
The board is of the preliminary opinion that the request for reimbursement of the appeal fee cannot be acceded to, because the (former) appellants have not established any relevant procedural violation and the board has not been able to detect any such violation. The reasons for this view are given below.
The 2**(nd) paragraph of the decision of the examining division reproduced above says that the division did not take into account the submission of 1 August 2013. The submission comprised a clarified set of claims and a document pertaining to the confidentiality of the presentation of Mr. Narroschke (the "confidentiality document" of 24 July 2013). It is clear however from the third paragraph of page 4 of the decision saying that "[t]his decision concerns the claims as filed on 01.08.2013..." [being identical with the claims filed as auxiliary request on 1 November 2011] that it was only the confidentiality document, which the division did not take into account in reaching its decision to refuse. The reason given in that 2**(nd) paragraph was that the confidentiality document had been filed after the debate had been closed and a "decision" had been taken during the oral proceedings. As set out above, after the appeal had been filed, the examining division had rectified their decision to refuse, this time taking into account the confidentiality document and considering that it put the public availability of D2 in doubt.
The position taken by the examining division as spelt out in the above 2**(nd) paragraph was wrong.
It may be true that the division was not required under Rule 71(6) EPC to resume the examination proceedings given that the claims of 1 November 2011 (re-filed on 1 August 2013) had been considered in the oral proceedings of 10 December 2012 (see T 1567/17, at point 2.2).
However, the division erred in two respects:
First, the oral proceedings held on 10 December 2012 were not terminated by a formal decision. Only a formal decision would have prevented admittance of new submissions, such as the confidentiality document, at a later stage. A formal and final decision refusing the application was issued on 2 October 2013 only.
According to the minutes (in fine, under "Conclusion"), the chairman announced at the end of the oral proceedings that none of the main or first to third auxiliary requests complied with the EPC. However, auxiliary request 4 met the requirements of the EPC and a communication under Rule 71(3) EPC would follow. The board recalls that this communication was issued on 4 April 2013. In a submission of 22 July 2013 the appellants expressed their disagreement and filed a set of amended claims. With the final decision of 2 October 2013 relating to the (clarified) claims filed on 1 August 2013 the application was rejected.
Second, even if the debate has been formally closed at the end of oral proceedings, as in the present case was indicated in the decision of the examining division, the debate may be re-opened. In T 595/90 (OJ 1994, 695, at point 1) the board held that
... the closing of the debate ... normally terminates the possibility of [making] further submissions. Observations submitted thereafter could only be taken into account if the Board reopened the debate (Article 113 EPC) which depends on its discretion.
In the board's view, analogous considerations apply to the EPO departments of first instance. Given that a closed debate may be re-opened, there is no need to enter into a discussion on those provisions of the Guidelines quoted by the appellants that may even require reopening the debate before an examining division.
As a consequence of the above errors, the examining division felt categorically prevented from admitting the confidentiality document submitted on 1 August 2013 into the proceedings and therefore did not consider admitting it. Rather, the decision to refuse of 2 October 2013 was solely based on the evidence on file at the end of the oral proceedings of 10 December 2012.
In so proceeding, the examining division implemented its erroneous position that the confidentiality document submitted on 1 August 2013 could not be taken into account because the debate had been closed and a "decision" had been taken during the oral proceedings of 10 December 2012. This error was of a substantive nature, and the procedural consequences thereof, i.e. in particular the adopting of a decision directly, without considering resuming examination, on the basis of the confidentiality document, were caused exclusively by the implementation of the erroneous substantive position.
It follows from the foregoing that the examining division did commit an error, but a substantive and not an (independent) procedural one. As a consequence, the board cannot find a procedural violation, let alone a substantial one, justifying reimbursement of the appeal fee under Rule 103(1)(a) EPC.
[end of reproduced part of the communication attached to the summons to oral proceedings]
III. In a response to the board's summons to the oral proceedings the requesters stated:
We hereby withdraw our appeal, filed on 6 December 2013 against the decision of the Examining Division dated 2 October 2013.
Additionally, it is herewith respectfully requested to refund 50% of the official appeal fee to our deposit account no. 28000148.
IV. Further to the requesters' response, the board issued a communication which, in essence, is reproduced below (text in italics added, text [deleted: struck through] deleted).
[beginning of reproduction]
2. The board notes that the examining division rectified the decision under appeal pursuant to Article 109(1) EPC. The corresponding Form 2710 was dispatched on 25 March 2014. This means that the examining division set the decision under appeal aside and allowed the appeal. The appeal was not remitted and has thus never been pending before the board. However, as the examining division refused the request for reimbursement of the appeal fee based on a substantial procedural violation pursuant to Rule 103(1)(a) EPC (a clear violation of the "established procedural steps of the EPO"), the division remitted that request to the board. Proceeding this way was in line with Rule 103(3), second sentence, EPC. See also the decision of the Enlarged Board of Appeal in case G 3/03.
3. Given that the examining division allowed the appeal in year 2014, the "withdraw[al] of [deleted: the] our appeal" declared in the above letter of 29 October 2018 has no object.
In the absence of a pending appeal that might be withdrawn, Rule 103(2) EPC does not apply. According to that provision the "appeal fee shall be reimbursed at 50% if the appeal is withdrawn" under certain conditions. As there is no effective withdrawal of the appeal, the request to refund 50% of the appeal fee cannot be allowed.
4. Since the request for reimbursement of the appeal fee made under Rule 103(1)(a) continues to be valid, the oral proceedings will be held as scheduled on 4 December 2018 at 13.00 hrs.
[end of reproduced part of the communication]
V. With a letter of 29 November 2018 the requesters announced that they would not attend the appointed oral proceedings.
VI. Oral proceedings were held as appointed on 4 December 2018 in the absence of the requesters.
The Chairman noted that the requesters had requested that the appeal fee be reimbursed in full under Rule 103(1)(a) EPC and that 50% of the appeal fee be refunded under Rule 103(2) EPC.
At the end of the oral proceedings, the Chairman announced the board's decision.
Reasons for the Decision
1. In the communication annexed to the summons to oral proceedings the board expressed its preliminary opinion on the request for reimbursement of the appeal fee pursuant to Rule 103(1)(a) EPC because of an alleged substantial procedural violation committed by the examining division. The board said that it could not find a procedural violation, let alone a substantial one, justifying reimbursement of the appeal fee under Rule 103(1)(a) EPC. The board arrived at its preliminary opinion after a thorough analysis of the request for reimbursement which is reproduced above, at point II.
2. In a further communication reproduced in essence above, at point IV, the board explained why, in its provisional view, it was unable to accede to the requesters' subsequent request for a refund of 50% of the appeal fee in connection with their withdrawal of the appeal. The board considered that, in the absence of a pending appeal that might be withdrawn, Rule 103(2) EPC providing for a reimbursement of the appeal fee at 50% under certain circumstances, did not apply.
3. The requesters did not attempt to rebut the board's provisional opinion as expressed in the two aforementioned communications. Nor did they attend the oral proceedings. Despite a re-assessment of the case the board sees no reason to depart from its preliminary opinion expressed in those communications, which therefore becomes final.
4. It follows that neither the request for reimbursement of the appeal fee at 100% under Rule 103(1)(a) EPC nor the request for reimbursement of the appeal fee at 50% under Rule 103(2) EPC can be allowed.
Order
For these reasons it is decided that:
The requests for reimbursement of the appeal fee are refused.

15 Mar 2019

T 0324/14 - Request for remittal

Key points

  • In this examination appeal, the Board decides that claim 1 of the Main Request is obvious. AR1 to 4 are not admitted into the proceedings as being filed late. The applicant then requests remittal to the examining division. The applicant argues "that the new objections raised by the board as well as the fact that there seemed to be patentable subject-matter included in the application, justified remittal and further consideration by the examining division" .
  • The Board does not grant this request. " the mere presumption of potentially patentable subject-matter in the application does not justify a remittal to the department of first instance. Should the appellants have wished to proceed with requests that they considered to contain potentially patentable subject-matter and thus as a promising basis for the examination proceedings, requests defining subject-matter of this nature should have been filed already in the first instance proceedings." (the Board also expresses that it had not raised new objections).
  • As a comment, appeals before the USPTO can be taken back to the examiner by filing an RCE and paying the applicable fee.
T 0324/14 - link



2.12 The board therefore concludes that the subject-matter of claim 1 is an obvious combination of concepts known from documents D1 and D2. In particular, the combination of two stages of amplification in each amplifier with pre-distortion provided in a first stage in the amplifier is obvious to the person skilled in the art and the subject-matter of claim 1 of the main request therefore does not involve an inventive step in the sense of Article 56 EPC.
3. First to fifth auxiliary requests - Admittance (Articles 12(4) and 13(1) RPBA)
[...]
3.8 In consideration of the specific circumstances of the present case, in particular the late stage of the proceedings as well as the new complex issues raised by the auxiliary requests, the board exercised its discretion under Articles 12(4) and 13(1) RPBA to not admit the first to fifth auxiliary requests into the appeal procedure.
4. Remittal to the department of first instance
4.1 The appellants have requested that the case be remitted to the examining division for further prosecution. They have particularly argued that the new objections raised by the board as well as the fact that there seemed to be patentable subject-matter included in the application, justified remittal and further consideration by the examining division.
4.2 Contrary to the appellants' arguments, no new objections have been raised by the board during the appeal procedure (see the reasons under point 3.7 above). Furthermore, the mere presumption of potentially patentable subject-matter in the application does not justify a remittal to the department of first instance. Should the appellants have wished to proceed with requests that they considered to contain potentially patentable subject-matter and thus as a promising basis for the examination proceedings, requests defining subject-matter of this nature should have been filed already in the first instance proceedings.
4.3 For these reasons, the board refuses the request for remittal of the case to the examining division.
4.4 Since there is no allowable request on file, the appeal has to be dismissed.
Order
For these reasons it is decided that:
The appeal is dismissed.

14 Mar 2019

T 0691/18 - Interlocutory revision

Key points

  • In this examination appeal, the amendments made in the main request address the clarity objections. The Board then discusses whether interlocutory revision should have been granted by the ED.
  • " In the context of Article 109(1) EPC, an appeal is to be considered "well founded" if the main request submitted with the appeal includes amendments which clearly overcome the objections on which the decision relies, such that the examining division could reasonably be expected to recognise this and thus rectify its decision. It is established case law of the Boards of Appeal that other objections which arise in the current request but which were not the subject of the contested decision cannot preclude the application of Article 109(1) EPC [...]." 
  • "  Thus, even if the amendments raise new objections not previously discussed, interlocutory revision must be allowed since an applicant should in such circumstances have the right to examination at two instances. In particular this would enable the applicant to address the objection under Article 123(2) EPC, by argument and/or amendment, as well as, if appropriate, giving the examining division the opportunity to address the issues of novelty and inventive step."
  • This appears a good summary of established case law. EPO GL E-XII,7.4.2 still prescribe that interlocutory revision is not granted if "amendments made to the independent claims clearly do not meet the requirements of Art. 123(2)".
EPO T 0691/18 -  link


Reasons for the Decision
1. Admissibility
The appeal was filed in due time and form and is therefore admissible.
2. Clarity (Article 84 EPC)
The examining division based their decision on objections under Article 84 EPC regarding two features of the former independent claims.
On the one hand, it was argued that the resonant frequency of the electronic horn was not characteristic for the claimed driving circuit. This objection is overcome by the amendment to "connectable to" in the main request and in the first auxiliary request, and by the inclusion of the electronic horn into the subject-matter of the second auxiliary request in accordance with the Guidelines for Examination in the European Patent Office F-IV-4.14.
On the other hand, the examining division held the expression "consistent with" unclear in the sense of Article 84 EPC. The examining division had assumed that "consistent" meant "compatible" and found that there was a contradiction with the description which allegedly meant something more specific. However, the expression "consistent with" no longer forms part of any of the requests of the appellant. Consequently, neither of the two features on which the reasoning in the decision under appeal is based forms part of the current requests of the appellant as filed together with the statement of grounds of appeal.
Under Article 109(1) EPC, if the department whose decision is contested considers the appeal to be admissible and well founded, it shall rectify its decision.
In the context of Article 109(1) EPC, an appeal is to be considered "well founded" if the main request submitted with the appeal includes amendments which clearly overcome the objections on which the decision relies, such that the examining division could reasonably be expected to recognise this and thus rectify its decision. It is established case law of the Boards of Appeal that other objections which arise in the current request but which were not the subject of the contested decision cannot preclude the application of Article 109(1) EPC (T 139/87, point 4; T 1060/13, point 4.1). Thus, even if the amendments raise new objections not previously discussed, interlocutory revision must be allowed since an applicant should in such circumstances have the right to examination at two instances. In particular this would enable the applicant to address the objection under Article 123(2) EPC, by argument and/or amendment, as well as, if appropriate, giving the examining division the opportunity to address the issues of novelty and inventive step.
3. Conclusion
In the present case no other conclusion is possible than that the appeal is admissible and well founded, since the features leading to the objections under Article 84 EPC are no longer claimed.
The examining division should therefore have rectified its decision and continued with the examination of other requirements of the EPC.
Consequently, the board decides to remit the case.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the department of first instance for further prosecution.