T 0129/24 - Not paying the opposition fee

Key points

• The opponent filed an opposition in August 2020 using Form 2300E, but did not specify a debit order or fee payment method in that form. The reasoned statement of opposition did not indicate a (purported) debit order or a statement about an attached debit order.
• The OD decided that the opposition was deemed not filed for not paying the prescribed fee in time (after holding oral proceedings which lasted two hours, see the minutes.
• The opponent appeals. The Board summons for oral proceedings, but these are cancelled after the appellant (opponent) announces that it will not attend the hearing.
• The appeal is dismissed.
• The most interesting points are the following. First, the OD / formalities officer first issued an invitation on 03.09.2020 to reply under Rule 79 to the proprietor (supposedly, the OD / formalities officer declares the opposition inadmissible ex officio / in the ex parte procedure of Rule 77(1). The formalities officer then issues a notice of loss of rights to the opponent (03.09.2020). The opponent then requests re-establishment (which is not available for the opponent for non-payment of the opposition fee). 
• On 21.05.2021, the formalities officer issued a letter stating "for the opposition division" that "Opposition was filed with EPO Form 2300 on 20.08.2020. However, the method of payment was not specified on the mentioned form. Having regard to the circumstances including technical aspects, the EPO has come to the conclusion that the opposition fee is considered deemed to have been paid due in time, i.e. on 20.08.2020."
• The formalities officer then issues a new invitation to the proprietor to reply to the opposition (18.06.2021).
• The proprietor contests the validity of the payment of the opposition fee.
• The OD is enlarged with a legal member, and summons are issued.
• The OD issued summons. The preliminary opinion was negative on the validity of the payment. The OD noted that at the relevant time, OLF (old), in the then applicable version 5.12, did give a warning if the payment method was left 'not specified'). The OD also qualifies the letter of 21.05.2021 as a preliminary view.
• The opponent in appeal inter alia argues that the EPO's letter of 21.05.2021 created legitimate expectations that the opposition fee was considered to have been paid.
• The Board: "The principle of the protection of legitimate expectations is a general principle well established in EU law and generally recognised in the EPC contracting states and boards of appeal case law (see CLB III.A.1). The protection of the legitimate expectations of users of the European patent system has two main principles. It requires that the user must not suffer a disadvantage as a result of having relied on erroneous information or a misleading communication received from the EPO. ... In the present case no legitimate expectations were created because the above conditions were not fulfilled as will be explained in the following paragraphs.
• "contrary to how the appellant has argued, the opposition division did not conclude (communication of 21 May 2021) that the opposition fee was "in fact paid on time". Rather it concluded that the "opposition fee is considered deemed to have been paid due in time, i.e. on 20 August 2020". In other words the opposition division merely treated the fee as if it had been paid on 20 August 2020 which was the last day of the 9 month opposition period. The appellant does not otherwise dispute the opposition division's statement of fact in its decision (facts and submissions, 5) that the opposition fee was paid on 9 October 2020 together with a fee for re-establishment of rights under Article 122 EPC. Indeed the appellant confirmed this in its appeal grounds (page 1, second bullet point), thus it appears indisputable that in fact the opposition fee was paid late, several weeks after the end of the nine month opposition period."
• "he Board takes the view that T595/11 [blog post] is not relevant to the present case. In that case, a formal check that the correct appeal fee had been paid had not been carried out four years after the filing of the appeal (see reasons point 1.7 and 1.8), and the board in that case considered that after such a long time, since the issue had not already been raised, a legitimate expectation that the fee had been correctly paid was created.
• The present case is not comparable in that the formal check that the opposition fee had been paid was not delayed but timely carried out at the start of the opposition proceedings and the opponent correctly notified of the result that it had not been paid (see communication noting loss of rights of 29 September 2020). The Board also does not see that any legitimate expectations comparable to those considered in T595/11 were created by the opposition division's communication of 21 May 2021, informing the opponent that the opposition fee was deemed to have been paid. This is because the issue had already been raised and the opponent was aware that the proprietor had not commented on the matter at that stage of the proceedings. Indeed, the proprietor questioned the correctness of the information in the communication of 21 May 2021 at its earliest opportunity (27 October 2021) about five months after the communication. This position was taken up by the opposition division in its annex to the summons of 9 December 2022. "

• Compare T 0130/19 for a similar case, but with crucial factual differences.

EPO 

The link to the decision is provided after the jump.

T 0729/24 - A case with a letter rogatory

Key points

• A rare case with a letter(s) rogatory.
• The opponent had filed emails, as alleged prior art, that the original applicant sent to third parties. The original applicant was summoned as a witness by the OD. The witness, an Italian national, requested to be heard by the competent national court
• The EPO sent a letter to the Italian authorities requesting that the competent Italian court hear the witness (the document refers to an attached letter rogatory, but I've not found that in the public file wrapper. The EPO's letter uses 'letter rogatory', though customarily it is always plural (I understand).
• The transcript of the hearing by (and before) the Italian court (attended by the chair and the legal member of the OD), and the English translation of the transcript, can be found here.
• The OD concluded that the emails and documents at issue were not public, except for one email (D18) with attachments (see the OD's decision). D18 was sent to a prospective customer a couple of days before the filing date of the patent (and the priority is only partially valid). 
• The Board's preliminary opinion was that the claims as granted lacked basis in the application as filed, and that D18 was prejudicial to inventive step of most of the auxiliary requests.
• The proprietor then withdraws all auxiliary requests on file. The Board finds, as the OD, that the claims as granted lack basis in the application as filed.
• See T 2893/18 for an earlier appeal in this opposition case.

EPO 

The link to the decision is provided after the jump.

T 1789/22 (II) Amended description can be filed later

Key points

• The Board, in headnote 2: 'A proprietor cannot be expected to file an amended description in appeal proceedings until an allowable set of claims is found. The lack of an adapted description constitutes no obstacle to the admittance of an amended set of claims into the appeal proceedings (see Reasons points 6.3 and 6.4)."
• "There is also a whole body of decisions of the boards of appeal in which the cases where remitted to the opposition division for adaptation of the description to the claims found allowable. This practice is common where the patent proprietor attends the oral proceedings. The board sees no reason to deviate from it where the patent proprietor does not attend the oral proceedings. Decisions addressing requests to not admit a set of claims due to lack of an adapted description, where the board acknowledged the practice of allowing an adapted description to be filed once there is an allowable set of claims, possibly before the opposition division, include T 0807/16 (see Reasons 1.4), T 146/17 (see Reasons 1.2 and 1.3), and T 155/20 (see Reasons point 1.4). 
• 6.4 In view of this long-standing practice, the proprietor cannot be expected to file an amended description until an allowable set of claims is found. Taking into account that the board had not indicated prior to the oral proceedings that it intended to deviate from this established practice, applying the principle of legitimate expectations, the board decided that the lack of an adapted description constituted no obstacle to the admittance of the request into the appeal proceedings."
• Of course, this could be different if the Board expressly indicates that a revised description must be filed.

EPO 

The link to the decision is provided after the jump.

T 0824/23 - An intermediate generalisation is allowable ...

Key points

• The Board: "An intermediate generalisation is allowable ..." (this should pique your interest).
• That's not something I've seen very often in the recent case law, so let's pay attention.
• "An intermediate generalisation is allowable if it is directly and unambiguously, explicitly or implicitly, derivable for a skilled person from the application as filed that the feature can be isolated from the other features, such that the omission of the other features does not add new technical information (i.e. the "gold standard", G 2/10, Reasons 4.5.1). In accordance with the established case law of the Boards, the omission is justified only if the isolated feature is not inextricably linked with the other features, or, as sometimes expressed, "in the absence of any clearly recognisable functional or structural relationship" among those features or if it is clearly recognisable that the extracted characteristics are "not closely related" to the omitted characteristics (see Case Law of the Boards of Appeal of the EPO, 11th edn., 2025 (Case Law), II.E.1.9.1)."
• "These criteria do not refer to the mere "context" in which the isolated feature was presented. The decisive factor is whether the isolated features taken up in the claim are understood, by the skilled person in the art, to be inextricably linked to the omitted features to which the features taken up were linked but which were left out of the claim. This is the case if the person skilled in the art would have regarded the omitted features to be necessary for achieving the effect associated with the added features (see T 1762/21, Catchword)."
  
  
• After a detailed technical analysis: "Accordingly, the specification  [by the amendment of the claim ]of a direct connection in the vertical direction between the straight vertical inner side surface 52b and the waste receiving surface 44 top end 44a (Feature g') is not inextricably linked with the configuration of the flush water spouting system(s), the structure and geometry of further surfaces involved in the flush water distribution, and the problem of avoiding splashing of flush water out of the bowl."
• The amendment is deemed allowable. 

EPO 

The link to the decision is provided after the jump.

T 2342/22 - Partial priority and generic intermediate art

Key points

• Claim 1 is a second medical use claim for a combination therapy. Claim 1 has partial priority for only one embodiment. In particular, the priority document discloses only an embodiment with a specific order for administering the medicines. 
• D9 is a conference paper published in the priority year. It teaches the medical use (the method of therapy), but not the order of the administration. D9 does not specify the order in which the components of the combination therapy were administered to patients. 
• Is claim 1 novel over D9?
• According to the Board, yes, because "Since document D9 fails to disclose an order of administration not covered by the partial priority right conferred by the disclosure in [the priority document], the board considers that the disclosure of document D9 cannot anticipate the subject-matter of claim 1 within the meaning of Article 54 EPC."
• Hence, to anticipate the claim, D9 should have taught an embodiment that is unambiguously outside the part of the claim for which the priority is valid (and that is, also, in accordance with the claim).
• However, the claim is not inventive over D9 as the CPA. 
• "Starting from document D9 as the closest prior art, which discloses the use of a FITC-tagged adapter molecule in combination with AT-CAR T cells but does not specify an administration regimen, the skilled person would recognise that document D9 leaves open three alternative possibilities: administering the tagged adapter molecule prior to, simultaneously with or after the AT-CAR T cells. ... The arbitrary selection of one of them does not involve an inventive step."

EPO 

The link to the decision is provided after the jump.

T 0083/23 - Debit order on paper

Key points

• " In the present case, the opponent filed a notice of appeal within two months of notification of the opposition division's decision. As to the appeal fee, an order to debit the opponent's deposit account was given in the notice of appeal, thus on paper rather than in an electronically processable format."
• Also in January 2023, the ADA specified that debit orders must be "filed in an electronically processable format (xml) via one of the following: - EPO Online Filing using EPO Forms 1001E, 1200E, 2300E or 1038E, or Online Filing 2.0 using EPO Forms 1001E, 1200E or 1038E ... "
• "In the board's view, the debit order filed by the opponent on paper with the notice of appeal on 16 January 2023 was not validly filed. The filing of the debit order in an electronically processable format after expiry of the time limit of two months as set by Article 108 EPC, i.e. on 3 February 2023, was late, with the consequence that the opponent's appeal is deemed not to have been filed."
• " Where an opponent decides to avail itself of the use of a deposit account as a method for paying the relevant fees with the EPO (Article 5(2) Rules relating to fees), it is also its duty to know the relevant requirements for debiting a deposit account, including the types of debit orders and the accepted ways of filing them. The opponent's reference to its clear intention to give the order to deduct the appeal fee is not relevant under the present circumstances either."
• No request for correction under Rule 139 was filed.
• Three comments. First, the Notice of appeal was filed electronically, via Online Filing 2.0 (see the receipt), and Form 1038E was used (link), but that form did not include the debit order. The purported debit order was in the 'PDF' Notice (which does not bear a signature, so could not have been a valid paper Notice of appeal at any rate. The electronic signature is, however, in Form 1038E). Was the debit order really filed on paper?
• Second, the Board obiter holds that a request for correction is ruled out.  "A correction of the debit order in application of Rule 139 EPC presupposes that a valid debit order exists, i.e. filed in an electronically processable format. In the jurisprudence of the Boards of Appeal, correction of a debit order has only been allowed in case of errors concerning the amount of the appeal fee (see e.g.J 8/19 Reasons 2.4, T 317/19 Reasons 2.4.2, T 444/20 Reasons 2.4.3, T 2620/18 Reasons 5)."
• However, see T1146/20.
• Third. The opponent's appeal is deemed not to have been filed. The appeal fee is reimbursed. However, it may be a case of winning by losing. The OD maintained the patent in amended form; the proprietor also appealed, and the Board found the claims as granted allowable. Had the opponent validly paid the appeal fee, the decision in the patent would have been the same, and the appeal fee would not have been reimbursed.

EPO 

The link to the decision is provided after the jump.

T1620/23 - Inventive step as new ground (?)

Key points

• The Board, in translation: "The ground for opposition of lack of inventive step pursuant to Article 100(a) in conjunction with Article 56 EPC was mentioned in the notice of opposition dated 30 August 2021, but not substantiated in accordance with Rule 76(2)(c) EPC. Rather, the opponent reserved the objection of lack of inventive step for a later stage of the proceedings, should this objection become relevant due to new requests (notice of opposition, page 11). Accordingly, no statement was made regarding the question of the lack of inventive step in claim 1 as granted."
• The claim was attacked as not novel, I understand.
• The OD found the claims to be not novel. "the opponent did not make any statements regarding the lack of inventive step of the granted patent in the further course of the opposition proceedings."
• The Board finds the claim to be novel (contrary to the OD). The opponent would like to attack the claim for lack of inventive step.
• "The opposition ground of lack of inventive step under Article 100(a) in conjunction with Article 56 EPC – which, according to the decision of the Enlarged Board of Appeal G 7/95, is to be distinguished from the opposition ground of lack of novelty – was therefore not effectively raised by the opponent. The Opposition Division also did not introduce this opposition ground into the proceedings pursuant to Article 114(1) EPC. In particular, the Opposition Division's decision on claim 1 of the granted version of the patent was limited to the lack of novelty of the subject-matter. If the opposition ground is neither asserted and substantiated in the notice of opposition nor introduced into the proceedings by the Opposition Division, a "new opposition ground" exists according to G 1/95 and G 7/95, in each case reason 5.3. In appeal proceedings, such a new opposition ground may, according to decision G 10/91, only be examined with the consent of the patent proprietor."
• "The patent proprietor refused to consent to the examination of this ground for opposition. The ground for opposition of lack of inventive step may therefore not be examined in the appeal proceedings (G 10/91, principle 3). 
• Cf. T 131/01, published in the OJ: "In a case where a patent has been opposed under Article 100(a) EPC on the grounds of lack of novelty and inventive step having regard to a prior art document, and the ground of lack of novelty has been substantiated pursuant to Rule 55(c), a specific substantiation of the ground of lack of inventive step is neither necessary - given that novelty is a prerequisite for determining whether an invention involves an inventive step and such prerequisite is allegedly not satisfied - nor generally possible without contradicting the reasoning presented in support of lack of novelty. In such a case, the objection of lack of inventive step is not a fresh ground for opposition and can consequently be examined in the appeal proceedings without the agreement of the patentee"
• As discussed in  Visser's Annotated EPC, Rule 76(2):4.3.3, incidentally. 

EPO 

The link to the decision is provided after the jump.