T0862/11 - Assessing the effect under A83 and A56

Key point

• If the technical effect is not valid over the whole scope claimed, this is only an issue under A83 (rather than A56) for clear claims if the technical effect is expressly specified in the claims. Otherwise, it is relevant for A56. In case the claims are unclear, the lack of technical effect can also be an issue under A83 if the claims are so unclear that the desired effect can not be obtained without undue burden.

EPO Headnote (informal translation)
Assessment of the technical effect. A distinction is to be made between (a) assessment of an effect under A83 EPC and (b) under A56 EPC.
Unclear claims: To the extent that inventions are defined by claims which contain unclear features, e.g. unclear parameters, which are not clarified in the description, the invention can possibly only be understood through the effect to be achieved. This effect, which must therefore be taken into account, is then examined under A83 EPC, to assess sufficiency of disclosure.
Clear claims: (i) Effect included in the claims: to the extent the claim is clearly defined, is the effect to be taken into account for the assessment of sufficiency of disclosure, only when it is expressly included in the claim. (ii) Effect not included in the claims: to the extent the claim is clearly defined and the effect is not included in the claims, the question whether the effect is obtained is not relevant for A83 EPC. The question, whether the effect is obtained, is rather relevant for A56 EPC (see eg. T939/92, [2.4.3]), namely for the assessment of the success of the solution.

T 0862/11 - 21.04.2015

Dated 17.03.2015 - Board 3.3.05 (Raths, Glod, Guntz) - publication C - for the decision, click here


Sachverhalt und Anträge

ADA 2015 - changes for deposit accounts

Key point

The Arrangements for deposit accounts (ADA) have been updated (OJ2015, Suppl 3, p. 8; entry into force 1 April 2015). The main point is that automatic debit orders can now also be used for PCT proceedings before the EPO.

Changes relating to repayment

4.3 Repayments of deposit account balances are possible for specific business-related reasons, e.g. closure of the deposit account, ceasing to work as a European patent attorney, or termination of patent proceedings.

4.4 Repayments of deposit account balances can only be remitted to the deposit account holder. For this purpose, the deposit account holder must submit to the EPO, by letter, fax or email attachment, a signed substantiated request containing all bank details necessary for the transfer. The EPO may request further evidence to confirm the account holder's identity and the bank details.

10.1 A deposit account may be closed at the signed written request, on paper or by fax,  of the holder or his successors in title, filed by letter, fax, or email attachment. Successors in title must provide the EPO with documentary proof of their entitlement.

That the EPO intends to check more carefully before transferring the account balance to some bank account, seems positive.

Statement of accounts

 5.4 Registered online users can inspect their transactions and download their statements via Online Fee Payment. Other registered account holders are sent a detailed statement of account several times a month by post postal services. If no transactions have occurred, the statement of account is sent at year-end only. Any errors noted must be notified to the EPO without delay. The EPO checks this information and makes any corrections necessary, retroactively to the original decisive payment date.

Presumably, the rule for accounts of users which are not registered online users, is that if no transactions have occured in one month for, no statement is sent over that mont, apart for december: all such accounts receive a statement at year end.
The error can presumably also be a payment which has erroneously not been carried out by EPO. This seems to form another kind of remedy.

This post was kept in stock for some time.

J 0008/13 - Oral proceedings before Receiving Section

Keypoint

• In case the Receiving Section intends to refuse the application, the obligation to held oral proceedings Article 116 only exists if these had been requested.
• The decision concerns an appeal against a refusal of the application because of the font size, more in particular the request for reimbursement of the appeal fee. Note that if you file the description in a larger font size, you need to pay the page fee according to EPO practice. 

J 0008/13 - 21.04.2015

Dated 13.04.2015 - Legal Board (Vallet, Ungler, Rogers) - for the decision, click here

Summary of Facts and Submissions

I. The appeal is directed against the decision of the Receiving Section dated 12 October 2012, refusing the application under Article 90(5) EPC. According to the findings of the Receiving Section no application documents complying with the requirements of Rule 49 EPC were submitted within the time limit set in the communication pursuant to Rule 58 EPC of 27 September 2011. In particular it was held that the newly formatted application documents received on 2 May 2012 did not satisfy the minimum character height of 0,21 cm for capital letters as laid down Rule 49(8) EPC. Furthermore, the applicant's attention was drawn to Article 109 EPC and the fact that the decision could be rectified by the first instance provided that application documents in font size "9 pt" were filed and the corresponding additional fee pursuant to Article 2.1a RFees for the final number of pages was paid.

II. On 2 January 2013, the appellant appealed against this decision and submitted newly formatted application documents in font size "9 pt". Furthermore, reimbursement of the appeal fee was requested. In that regard the appellant referred to the arguments provided in its letters dated 7 December 2011 and 2 May 2012 filed during the first instance proceedings. In addition it was pointed out that the originally filed application documents had been created by the Amyuni PDF converter, i.e. they were already text based for which reason an Optical Character Recognition (OCR) was not necessary. Apart from that substantial reasoning the appellant noted that the taking place of oral proceedings, although not requested by the applicant, would have been expedient in order to prevent the refusal of the European patent application in suit.

III. In response to a consultation by telephone the appellant confirmed by letter dated 14 February 2013 the maintenance of its request for reimbursement of the appeal fee and requested oral proceedings in case the Board of Appeal should not order the reimbursement of the appeal fee.

IV. With a decision on rectification dated 28 February 2013, the Receiving Section granted interlocutory revision. The appellant's request for reimbursement of the appeal fee was considered not allowable and was therefore remitted to the Legal Board of Appeal.

V. In a communication under Rule 100(2) EPC the Board informed the appellant about its preliminary view that in absence of a procedural violation, the request for reimbursement of the appeal fee had to be refused. Furthermore, the appellant was invited to indicate whether his request for oral proceedings was maintained, and a time limit of two months was set for the filing of further observations. With letter dated 30 May 2014 the applicant withdrew his request for oral proceedings, but maintained his request for reimbursement of the appeal fee.

Reasons for the Decision

1. Object of the appeal

The Receiving Section set aside the decision refusing the application under Article 90(5) EPC by granting interlocutory revision under Article 109(1) EPC and remitted the request for reimbursement of the appeal fee to the Legal Board of Appeal (cf. G 3/03, OJ EPO 2005, 344). Thus, the scope of the present appeal proceedings is confined to the issue of reimbursement of the appeal fee.

2. Reimbursement of the appeal fee; Rule 103 EPC

2.1 In the event of interlocutory revision a request for reimbursement of the appeal fee is to be allowed only where such reimbursement is considered to be equitable by reason of a substantial procedural violation (Rule 103(1)(a) EPC).

2.2 It is long standing case law that in order to be considered as substantial a procedural violation must show an objective deficiency affecting the entire proceedings in the sense that the rules of procedure have not been applied in the manner prescribed in the EPC to the detriment of a party (cf. J 07/83, OJ 1984, 211; T 12/03, point 4.2 of the reasons).

2.3 In the present case the appellant based its request for reimbursement in essence on the allegation that the first instance did not apply Rule 49(8) EPC correctly when refusing the present application. Reference was made in particular to the letter dated 2 May 2012 wherein the applicant pointed out that the font size used for the application documents received by the EPO on 7 December 2011 was in full compliance with the requirements of Rule 49(8) EPC, since the height of the capital letters was 0,282 cm and thus greater than 0,21 cm as prescribed by said provision. Furthermore, in the statement of grounds of appeal it was noted that the originally filed application documents had been created by the Amyuni PDF converter, i.e. they were already text based for which reason an Optical Character Recognition (OCR) was not necessary. Therefore, the appellant concluded, that point II.3(e) of the Notes on the preparation of OCR-readable patent applications (OJ EPO 1993, 59) cited in the impugned decision of the Receiving Section did not apply.

2.4 Considering the appellant's arguments the Board would like to emphasise that an incorrect interpretation of a provision of the EPC dealing with formal requirements of application documents, as alleged by the appellant, does not per se constitute a substantial procedural violation within the meaning of Rule 103 EPC. An error in the application of law cannot be equated with a procedural violation (cf. J 29/95, Reasons, point 10; T 687/05, Reasons, point 3.1). In essence the aforementioned arguments are directed against the substantive grounds of the refusal already set aside by interlocutory revision, but cannot justify the requested reimbursement of the appeal fee. However, as pointed out above the scope of the present appeal proceedings is confined to the issue of reimbursement of the appeal fee, and are not meant for reviewing the substantive ground for the refusal which was set aside by interlocutory revision under Article 109(1) EPC.

2.5 Furthermore the appellant underlined in the statement of grounds for appeal that oral proceedings would have been expedient to prevent the refusal of the European patent application in suit. According to the constant case law of the Boards of Appeal the refusal of a request for oral proceedings amounts to a breach of the right to be heard. In the present case, as confirmed by the appellant himself, oral proceedings have not been requested during the first instance proceedings. Moreover, under the specific provisions of Article 116(2) EPC oral proceedings must be be arranged before the Receiving Section at the request of the applicant, only where the Receiving Section considers this to be expedient or where it envisages refusing the European patent application. However, in the absence of such a request there is no obligation for the Receiving Section to provide for oral proceedings. The failure of the applicant to file such a request can obviously not amount to a procedural mistake to be imputed to the department of first instance.

2.6 Thus, in the absence of a substantial procedural violation, the request for reimbursement of the appeal fee has to be refused.

Order

For these reasons it is decided that:

The request for reimbursement of the appeal fee is refused.

J 0023/13 - Pending application after refusal

Key point

• A divisional can be filed after appeal against refusal of the parent, before expiry of the time limit for filing the statement of grounds, and remains validly filed also if the appeal is later rejected as inadmissible for failure to file the statement of grounds.

Analysis

• In J28/03, it was held that a divisional application is not validly filed after an inadmissible appeal against grant of the parent. For an appeal against a refusal, the present decision gives a different rule. The reason appears to be that Article 67(4) EPC speaks of "finally refused" (G1/09) 

J 0023/13 - 23.04.2015

Dated 30.03.2015 - Legal Board (Schmitz, Fernández de Córdoba, Loizou) - for the decision, click here

Summary of Facts and Submissions

I. The appeal is directed against the decision of the Receiving Section dated 11 July 2013 that European patent application No. XX XXX XXX.X will not be treated as a divisional application of the earlier European patent application No. YY YYY YYY.Y.

T 1840/13 - Refusal not reasoned and containing non-heard arguments

Key point

• Two serious procedural violations in refusal. In the refusal decision, the ED for the first time referred to the description of the present application in order to demonstrate an implicit disclosure of a specific feature in D4, without hearing the application. Moreover, the new arguments still do not provide a comprehensible reasoning regarding the implict disclosure of the feature, according to the Board.

T 1840/13 - 13.04.2015

Dated 16.03.2015 - Board 3.2.07 (Meinders, Hahn, Beckedorf) - for the decision, click here

Reasons for the Decision

1. Violation of the right to be heard (Article 113(1) EPC) - first substantial procedural violation

G 2/12 and G 2/13 - Plant products - Broccolli and Tomato II

EPO G 2/13 and G 3/13 (G 0002/12 and G 0002/13)

Combined EPO Headnotes

1. The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit / such as plant parts.

2 [G2/12] In particular, the fact that the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application does not render a claim directed to plants or plant material other than a plant variety unallowable.
2.(a) [G2/13]The fact that the process features of a product-by-process claim directed to plants or plant material other than a plant variety define an essentially biological process for the production of plants does not render the claim unallowable.

2.b. [G2/13] The fact that the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application does not render a claim directed to plants or plant material other than a plant variety unallowable.

3. In the circumstances, it is of no relevance that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under Article 53(b) EPC.



G2/12


1. The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit.

2. In particular, the fact that the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application does not render a claim directed to plants or plant material other than a plant variety unallowable.

3. In the circumstances, it is of no relevance that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under Article 53(b) EPC.


G2/13
1. The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as plant parts.
2.(a) The fact that the process features of a product-by-process claim directed to plants or plant material other than a plant variety define an essentially biological process for the production of plants does not render the claim unallowable.
2.(b) The fact that the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application does not render a claim directed to plants or plant material other than a plant variety unallowable.
3. In the circumstances, it is of no relevance that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under Article 53(b) EPC.

Analysis

• An important reason seems to be that the exclusion of "plant varieties" is confirmed to be a "very specific and narrow exclusion", such that it is difficult to accept a systematic approach leading to a broad understanding of the exclusion of essentially biological processes which would extend the scope thereof from process claims to product claims. The Enlarged Board rather finds that the exclusion of essentially biological processes "is aimed at averting an inconsistency with regard to the first group of exclusions".

G2/13 and G2/12 of 25.03.2015

G2/13 Enlarged Board - publication A - for the decision, click here
G 2/12 link

[text omitted]

T 0177/15 - Incorrect decision according to state of the file

T 0177/15 - 13.04.2015

Dated 07.04.2015- Board 3.3.08 (Wieser, Vega Laso, Rogers) - for the decision, click here

Keypoint

• Incorrect decision according to the state of the file: auxiliary requests not addressed. Discussion of objections in telephone conversation does not allow the Examining Division to dispense with the requirement of a reasoned (written) decision. Two substantial procedural violations.

Summary of Facts and Submissions

I. The appeal lies from a decision of an examining division of the European Patent Office (EPO) issued in writing on 15 July 2014, by which the European patent application No. 08866069.1 with the title "Treatment of surgical adhesions" was refused under Article 97(2) EPC. The application was filed as an international application under the Patent Cooperation Treaty and published as WO 2009/085273.

T 1734/11 - Presentation of information does not contribute to inventive step

Keypoints

• The Board does not see that the particular manner of presenting rates for travel services, using pricing bands and the corresponding characteristics, contributes to the solution of a technical problem by providing a technical effect. In the Board's judgment, this is a matter of presentation of information, which does not contribute to the technical character of the invention (Article 52(2)(d) EPC)
• "Inventive step is assessed against the state of the art, meaning all prior art. One obvious route from a reasonable starting point is enough to demonstrate a lack of inventive step." (The Board did not accept the argument that some other document forms even closer prior art.)

T 1734/11 - 13.04.2015

Dated 13.01.2015 - Board 3.5.01 (Bumes, Scriven, Schmitz) - for the decision, click here

Summary of Facts and Submissions

I. This is an appeal against the decision of the Examining Division to refuse European patent application No. 05759549.8. The application was published as WO2006/009647 A2.

T 0887/11 - Unclear feature and reformatio in peius

Keypoint

• If the patent is maintained in amended form with a feature added before the OD, only the opponent appeals, and Board finds the feature to be unclear, the feature can be deleted as exception to the principle of reformatio in peius (G1/99)
• G 1/99 (exceptions to reformatio in peius) also applies if the patent was maintained in amended form according to an auxiliary request of the patent proprietor (as was disputed by the opponent).

T 0887/11 of 13.04.2015

Dated 05.03.2015 - Board 3.2.06 (Harrison, Rosenblatt, Ungler) - for the decision, click here

[...] III. In its interlocutory decision dated 17 February 2011 the opposition division found that European patent No. 1 847 436 in an amended form according to a first auxiliary request (filed first during the oral proceedings before the opposition division) met the requirements of the EPC.

IV. The appellant (opponent) filed an appeal against this decision and relied on the following documents and evidence [...]

T 2406/10 - Poisonous priority and fatal family members

T 2406/10 - 16.04.2015

Dated 13.01.2015 - Board 3.3.01 (Lindner, Radke, Buhler ) - for the decision, click here

Keypoint

• No partial priority for claim encompassing a working example, because "A product of a working example within the scope of present claim 1 will however exhibit a dissolution profile corresponding to one distinct value in each of the three media. This combination of three values is just one of an unlimited number of combinations within the dissolution ranges for the three media defining the dissolution profile in present claim 1." Claim not novel over family member containing same working example
  

Analysis

• Apart from poisonous  priority applications, and toxic divisionals, we here have a case of a fatal family member: a second PCT application, filed a few days earlier, and claiming priority from the same earlier application, and containing the anticipating specific example. The Board denies partial priority.
• Quite curiously, the Board does not cite or discuss T1222/11, or the announced referral to the Enlarged Board in T557/13.

T 0932/09 - Filing further requests in opposition

Keypoints

• OD revoked patent after discussion of Art 123(2) EPC without giving opportunity to file further amended claims and without giving indication of negative decision. Substantive procedural violation.

Analysis

• The Board seems quite relaxed in favour of patentee. My impression is that the arguments of the opponent affected all pending requests, and patentee was given the opportunity to hear those objections and react to them. Although the Boards seems to refer to a specific combination of particular circumstances, so may nog have intended to give a general rule.

T 0932/09 - 14.04.2015

Dated 03.11.2014 - Board 3.3.02 (Oswald, Kellner, Cramer) - DE - for the decision, click here

Sachverhalt und Anträge

[] IV. Die Einspruchsabteilung hat mit der unter dem Datum vom 24. Februar 2009 zur Post gegebenen Entscheidung nach Artikel 101 (3) b) EPÜ das Patent widerrufen.

Sie war der Auffassung, dass der Gegenstand von Anspruch 1 des Hauptantrags sowie der Hilfsanträge I bis VI wegen des in allen Anträgen als Antwort auf die Einspruchsbegründung zusätzlich eingefügten Merkmals über den Inhalt der Anmeldung in der ursprünglich eingereichten Fassung hinausgehe und somit gegen die Erfordernisse von Artikel 123 (2) EPÜ verstoße. [...]

Entscheidungsgründe

1. Die Beschwerde ist zulässig.

2. Rechtliches Gehör und Zurückverweisung; Artikel 113 (1) und 111 (1) EPÜ

Aus dem schriftlichen und mündlichen Vortrag der Parteien im Beschwerdeverfahren ist in Übereinstimmung mit dem sonstigen Inhalt der Akte folgender Verfahrensverlauf ersichtlich:

Die Einspruchsabteilung hat mit ihrem Bescheid zur Ladung unter Nennung der Fundstellen der einschlägigen Merkmale eine positive vorläufige Meinung in Bezug auf die Erfordernisse des Artikels 123 (2) EPÜ geäußert. In der Verhandlung hat sie dagegen nach der Diskussion dieses Einspruchsgrundes das Patent widerrufen, ohne den geringsten direkten oder indirekten Hinweis gegeben zu haben, dass sich diese vorläufige Meinung geändert haben könnte. Beispielsweise hat sie vor der entsprechenden Beratung nicht darauf hingewiesen, dass unmittelbar danach eine endgültige Entscheidung verkündet werden könnte.

2.1 Durch diese Kumulation der Umstände, insbesondere des fehlenden Hinweises auf die Möglichkeit, dass unmittelbar nach der Beratung eine endgültige Entscheidung fallen könnte, und der vorherigen vorläufigen, aber zu Gunsten der Beschwerdeführerin begründet positiven Meinung im Gegensatz zur tatsächlichen Widerrufsentscheidung, hat die Einspruchsabteilung das Verfahren so geführt, dass der Beschwerdeführerin de facto die Möglichkeit vorenthalten wurde, einen geänderten Anspruchssatz einzureichen und damit den diskutierten Einwand auszuräumen.

2.2 Daraus ergibt sich, dass ein wesentlicher Mangel im Verfahren vor der Einspruchsabteilung im Sinne der Verletzung des Anspruchs auf rechtliches Gehör vorliegt.

2.3 Nach Artikel 11 der Verfahrensordnung der Beschwerdekammern des Europäischen Patentamts (VOBK) folgt daraus, dass die Angelegenheit an die erste Instanz zurückzuverweisen ist.

Nachdem beide Parteien diese Zurückverweisung gemäß Artikel 111 (1) EPÜ selbst beantragt haben, sprechen aus ihrer Sicht offensichtlich keine besonderen Gründe im Sinne von Artikel 11 VOBK, zweiter Halbsatz, dagegen. Die Kammer sieht auch ex officio keine solchen besonderen Gründe.

3. Rückzahlung der Beschwerdegebühr; Regel 103 (1) EPÜ

Als Konsequenz des wesentlichen Mangels im Verfahren blieb der Beschwerdeführerin nur die Möglichkeit Beschwerde einzulegen, um ihr Anrecht auf rechtliches Gehör zu wahren. Daher entspricht die Rückzahlung der Beschwerdegebühr der Billigkeit im Sinne von Regel 103 (1) a), zweiter Halbsatz.

Entscheidungsformel

Aus diesen Gründen wird entschieden:

1. Die angefochtene Entscheidung wird aufgehoben.

2. Die Angelegenheit wird zur weiteren Behandlung an die Einspruchsabteilung zurückverwiesen.

3. Dem Antrag auf Rückzahlung der Beschwerdegebühr wird stattgegeben.

OJ 2015/3: CMS filing now also for appeal documents (OJ 2015, A27)

Decision of the President of the European Patent Office dated 11 March 2015 concerning the filing of documents using the EPO case management system

Keypoint
Documents relating to appeal proceedings and for petition for review proceedings are no longer excluded for CMS filing (Article 2(1)). Priority documents are still excluded.

Analysis
This seems to be the only change. The change does not seem to be mentioned in the Notice.
The still excluded priority documents are the documents of R53(1), the certified copy. It seems to me that filing with the CMS of the translation under R53(3) should be possible.

OJ 2015 A27
For the text, click here |  Entry into force: 1 April 2015 | Supersedes: Dec. Pres. of 10 September 2014 (OJ 2014, A97) | Explaining Notice 30.03.2015 (not pulished in OJ)

T 0972/13 - Not attending can be costly

Keypoint
If you announce you will not attend oral proceedings in opposition appeal, rather than withdraw the request for oral proceedings, you may be ordered to pay the other parties' costs.

Analysis

• Announcing that you will not attend seems to be almost a standard phrase instead of withdrawing the request for Oral Proceedings (precisely because of the advantage that you can show up if you change your mind). This decision shows that it is not risk free.

T 0972/13 - published 31.03.2015

Dated 28.01.2015 - Board 3.2.05 (Poock, Bridge, Vogel) - DE - for the decision, click here

Sachverhalt und Anträge

I. Die Beschwerdeführerin (Patentinhaberin) hat gegen die Entscheidung der Einspruchsabteilung, mit der das europäische Patent Nr. 1 127 712 widerrufen worden ist, Beschwerde eingelegt.

T 1363/12 - Amendments and the gold standard

EPO Headnote

The fundamental test under Article 123(2) EPC remains the "gold" standard referred to in G 2/10, namely, what would a skilled person directly and unambiguously derive, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the original disclosure.

The decision in T 2619/11 did not lay down a different test, namely, of what was "really disclosed" to the skilled person.

Decisions on Article 123(2) EPC are very case-specific and care should be taken in applying statements of Boards of Appeal made in the context of particular factual situations to other factual situations.

Analysis

• In 2014, Guidelines H-IV, 2.3, the following paragraph was added: "From these rulings it follows that any amendment to the parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) is subject to the mandatory prohibition on extension laid down in Article 123(2) EPC and can therefore, irrespective of the context of the amendment made, only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed, points 1., 1.3 and 3. of the Reasons." 
• This wording seems to have been based on T 2619/11 (Board 3.4.02, published 14.03.2013).
• The present Board "can find no suggestion that the relevant statements in T 2619/11 were in any way intended to override or provide a new assessment of the "gold" standard [of G2/10, point 4.3], nor can they be construed as introducing a more lenient criterion for the assessment of amended subject-matter."

T 1363/12 published 17.03.2015

Dated 12.12.2014 - Board 3.2.06 (Harrison, Rosenblatt, Garnett) - distribution B - for the decision, click here

Summary of Facts and Submissions

I. The appellant (applicant) filed an appeal against the decision of the examining division to refuse European patent application No. 04 254 686.1. [...]

Reasons for the Decision

Main request

1. The issue to be decided in this appeal is whether amended claim 1 contains subject-matter extending beyond the content of the application as filed (Article 123(2) EPC).

1.1 The basic principle when applying Article 123(2) EPC is to be found in the jurisprudence of the Enlarged Board of Appeal and was summarised and confirmed in its decision G 2/10 (OJ EPO 2012, 376, point 4.3). While referring to opinion G 3/89 and decision G 11/91 (OJ EPO 1993, 117 and 125), the Enlarged Board of Appeal considered the following definition given therein to have become the "gold" standard for assessing any amendment for its compliance with Article 123(2) EPC:

"From these rulings it follows that any amendment to the parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) is subject to the mandatory prohibition on extension laid down in Article 123(2) EPC and can therefore, irrespective of the context of the amendment made, only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed, points 1., 1.3 and 3. of the Reasons."

1.2 The appellant has relied on the revised Guidelines for Examination of the European Patent Office, in the version valid as of 1 November 2014, in support of a general submission that a more lenient standard than the "gold" standard should be applied. In particular, the appellant referred to the following paragraph which has been added in section H-IV, 2.3:

"When assessing the conformity of the amended claims to the requirements of Art. 123(2) EPC, the focus should be placed on what is really disclosed to the skilled person by the documents as filed as directed to a technical audience. In particular, the examiner should avoid disproportionally focusing on the structure of the claims as filed to the detriment of the subject-matter that the skilled person would directly and unambiguously derive from the application as a whole."

Quite apart from the fact that the Boards of Appeal are not bound by the Guidelines for Examination, as was acknowledged by the appellant, it is to be noted that the principles established by the Enlarged Board of Appeal (see above) for the assessment of the requirement of Article 123(2) EPC cannot be changed by issuing amended Guidelines. Consequently, the appellant's suggestion that the above statement was somehow applicable in this appeal at the time of the oral proceedings before the Board is wrong: there has been no change in the standard to be applied under Article 123(2) EPC. Thus, in the present case, the assessment to be made is still whether the subject-matter of amended claim 1 is directly and unambiguously derivable from the application as filed.

The Board further notes that neither the above cited statement in the Guidelines nor the entire section H-IV, 2 thereof contains any reference to the decision G 2/10 or the earlier decisions of the Enlarged Board on this issue. The added wording is also not derivable from G 2/10 and appears instead to have been taken from T 2619/11. Although the latter decision was taken after G 2/10, the relevant passages therein (see the Catchword and Reasons, point 2.1) are not expressed to be a development of the Enlarged Board's decision in G 2/10 or the earlier jurisprudence of the Enlarged Board of Appeal. Rather, they were made in the specific factual context of that case, in the light of which the Board came to the conclusion that the Examining Division had made a mistake by focusing disproportionately on the claim structure of the original application and not on what the skilled person would clearly and unambiguously derive from the application as whole. The present Board observes that whether subject-matter has been added in the sense of Article 123(2) EPC can only be decided on the basis of the facts of each individual case (see G 1/93, OJ 1994, 541, Reasons, point 17), i.e. the issue is very case-specific. While the above passage from the Guidelines may well be correct when applied to particular factual situations similar to that which arose in T 2619/11, the present Board does not consider that any more general principle can be derived from this decision. Indeed, the Board can find no suggestion that the relevant statements in T 2619/11 were in any way intended to override or provide a new assessment of the "gold" standard referred to above, nor can they be construed as introducing a more lenient criterion for the assessment of amended subject-matter. In particular, the present Board does not consider the Board's statement in T 2619/11 (point 2 of the Reasons) that such disproportionate focusing had been to the detriment of what was "really disclosed" to the skilled person was intended to add a gloss to the "gold" standard. This can be seen from a consideration of the structure of the reasoning in that case. Thus, first, the Board identified what it considered to have been the mistake made by the Examining Division, namely, that the focus of the decision was "disproportionally directed to the structure of the claims as filed to the detriment of what is really disclosed to the skilled person by the documents as filed." The Board then went on to consider the application as filed in detail, after which it came to a conclusion about what was "directly and unambiguously disclosed to the skilled person ..." (see point 2.8 of the Reasons). The Board at this stage did not ask itself what was "really disclosed" to such person.

Finally, the appellant's argument that a more lenient criterion applied throughout the EPO might be to the benefit of applicants, while no doubt true, is not in itself relevant.

1.3 Therefore the issue to be decided remains the same, i.e. whether the amended subject-matter of claim 1 is directly and unambiguously derivable from the application as filed, taking into account the skilled person's common general knowledge. The facts in T 2619/11 do not correspond to the facts underlying the present case, such that the statement there about not focusing "disproportionally" on the claim structure of the original application has no relevance to the facts of the present case.

1.4 The feature in the characterising portion of amended claim 1, "a reinforcement (70) is mounted to extend across the opening (11) in a position to reinforce the strength of the cabinet (10) and to couple the front wall of the cabinet (10) to the rear wall of the cabinet (10)", is not directly and unambiguously derivable from the application as filed.

Original claim 1 defines "a reinforcement placed at a predetermined portion of the opening to support and reinforce the top plate". Similar definitions are also made in the other independent claims originally filed in regard to the reinforcement and its purpose, i.e. "to support and reinforce the top plate". The purpose of the reinforcement according to amended claim 1 of the main request is however defined differently, namely, that besides coupling its front and rear walls, it shall reinforce the strength of the cabinet. This does not not mean to specifically reinforce and support the top plate, because according to the claim's preamble the cabinet comprises the front and rear walls but not the top plate. The remaining features of amended claim 1 also do not define any structural or functional feature relating to the originally defined purpose, such purpose implying certain limitations with respect to the structural features required for achieving it, such as the structure embodying the "reinforcement" being installed so that it can take up forces acting on the top plate. The amended claim covers arrangements in which the reinforcement extends across the opening somewhat below an upper edge of the cabinet on which the top plate could be located without coming into contact with or necessarily supporting the top plate. Such arrangements, which were not covered by the original claims, are neither disclosed in the originally filed claims nor in the description or figures of the application.

The passages in the originally filed description indicated by the appellant as a basis for the amended feature, in particular page 13, lines 28 to 30, indeed disclose the wording "to reinforce the strength of the cabinet" within the description of the preferred embodiment. It is however clear from the context in which this wording is found, i.e. from the immediately following sentence as well as from the final sentence of the complete paragraph, that the function of the reinforcement resides in reinforcing the strength of the top plate. To this purpose the reinforcement is constituted by a support plate and two upwardly extending side plates. The general purpose of strengthening the top plate is for example also confirmed by the initial paragraph of the description or the last three lines of the first paragraph on page 4, line 12-16. The appellant did not indicate any other passages from which the objected feature was directly and unambiguously derivable, nor could the Board identify a basis for it.

1.5 At least for the above reason the requirement of Article 123(2) EPC is not met, such that the appellant's main request is not allowable.

Auxiliary request 1

[...]

Order

For these reasons it is decided that:

The appeal is dismissed.

G 3/14 - Examination of clarity in opposition

EPO Headnote
In considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC.

Analysis

• Just one of the numerous aspects that deserve analysis: In [54], the Enlarged Board says: "For example, it has never been doubted that when features are taken from the description and are inserted into a granted claim by way of amendment, the amended claim must be examined for compliance with Article 84 EPC in the light of those new features[]. The basis for this can only be Article 101(3) EPC. The Enlarged Board therefore disagrees with the submissions to the effect that the purposes of Article 84 EPC come to an end with the grant of the patent.
• This confirms that A84 as such only provides a requirement for examination of applications before grant. It is to be recalled that Article 84 EPC  is contained in Part III, Chapter I, titled: "Filing and requirements of the European patent application". 
• Article 101(3) EPC, which provides as follows: "If the Opposition Division [or Board of Appeal] is of the opinion that, taking into consideration the amendments made by the proprietor of the European patent during the opposition proceedings, the patent and the invention to which it relates (a) meet the requirements of this Convention, it shall decide to maintain the patent as amended.
• As FICPI has submitted (log date in register online: 24.08.2014): "On its wording, Article 84 EPC on the other hand relates to the claims of patent applications. The purpose of this article (and all of Articles 75 to 86 EPC) have found their end with the grant of the patent." This is rejected by the EBA in [54], however seemingly more based on established EPO practice than on the EPC.
• The examination of clarity of amendments made in opposition hence seems to be based more or less (arguably) on a tacit requirement of the patent implied in A101(3) EPC rather than on A84 itself. Although this is definitely not what the Enlarged Board concludes in this decision.
  
  
• Addendum 29.04.2021: The Enlarged Board also held that: “A granted claim may turn out not to comply with Article 84 EPC but such non-compliance must be lived with. However, any lack of clarity of the claims may still be highly relevant in opposition proceedings in that it can influence the decisions on issues under Article 100 EPC: []. For example the lack of clarity of a claim may have a profound effect on the outcome of the grounds for opposition according to (i) Article 100(b) / sufficiency []  (ii) Article 100(a) EPC / novelty [], or Article 100(a) EPC / inventive step []. ”

G 3/14 - published 26.03.2015

G 0003/14

Dated 24.03.2015 - Enlarged Board - distribution A - for the decision, click here
Enlarged Board (Van der Eijk, Garnett, Beckedorf, Meinders, Oswald, Spineanu-Matei, Tardo-Dino)

T 1283/11 - If you need more time, you've to ask for it

Blog headnote

• If the OD adds a ground of opposition in a late stage, the patent proprietor has to ask for more time if needed for preparing a response
• If a non-appealing opponent withdraws the opposition, this does not affect the proceedings. 
• In view of Article 114(1) EPC and G 10/91, the opposition division has the discretion to admit a late-filed ground for opposition but only if the ground is prima facie a ground for revocation of the patent. This requirement is complied with if the OD revokes the patent. 
• In the discussion of sufficiency of disclosure, the Board agreed that the needed techniques may involve more or less complicated equipment, e.g. more or less precise optical detectors. "However, what is decisive is that such equipment is at the skilled person's disposal. As long as that is the case, the degree of complexity is not relevant."

Analysis

• The decision provides a useful reminder that withdrawal of opposition by the non-appealing opponent does not terminate appeal proceedings (T340/05) The former opponent is no longer a party as of right. Although the Board is restricted in examination of own motion in opposition-appeal, the Board is not obliged to allow the appeal. 

T 1283/11 - published 31.03.2015

Dated 15.01.2015 - Board 3.3.02 (Dufrasne, Ceccarelli, Weber) - for the decision, click here

Summary of Facts and Submissions

I. The patent proprietor has appealed the Opposition Division's decision, dispatched on 20 April 2011, to revoke European patent No. 1 603 615.

T 0014/11 - Falsified prior art?

Blog headnote
A patent proprietor asserts that a novelty-destroying document is in fact falsified or tampered with.

Quote
"The inconsistencies and discrepancies found by the appellant in document E1 are insufficient to warrant the conclusion that document E1 has been manipulated or falsified. The presence of inconsistencies in a document is normally no convincing proof that said document is forgery, since it can be argued that if it were forged, the fraud would have tried to manipulate it in such a way no one can easily tell that it is forged." [3.2]

Analysis
The OD had also heard three witnesses about a trade fair in 1997. As far as can be seen from the present decision, this was handled rather thoroughly by the OD.

T 0014/11 - published 31.03.2015

Dated 03.12.2014 - Board 3.2.05 (Poock, Schram, Weiss, Bridge, Vogel) - for the decision, clik here

Summary of Facts and Submissions

I. On 29 December 2010 the appellant (patent proprietor) lodged an appeal against the decision of the opposition division, posted on 9 December 2010, by which European patent No. 1 031 778 was revoked. The statement setting out the grounds of appeal was filed on 6 April 2010.

The opposition division held that the catalogue "Ball valve from Mars, Series 88" (document E1), was considered as state of the art under Article 54(2) EPC 1973 and that the subject-matter of claim 1 as granted was not new with respect to that document, Article 54 EPC 1973.

T 1724/10 - Incorrect problem solution approach

Blog headnote
The way this Opposition Division had (mis)applied the problem solution approach amounted to a substantional procedural violation, on the ground that the decision was not adequately reasoned. Appeal fee reimbursed.

Quote
9.3.2 In the Board's opinion, the juxtaposition of seemingly contradictory conclusions (e.g. acknowledgement of technical differences but no possibility to define a technical problem), presented in the contested decision as apodictically evident and without any factual support, does not constitute a "reasoned decision" within the meaning of Rule 111(2) EPC.

T 1724/10 - published 31.03.2015

Dated 27.01.2015 - Board 3.5.07 (Moufang, Rognoni, De Man) - for the decision, click here.

Summary of Facts and Submissions

I. The patent proprietor (appellant) appealed against the decision of the Opposition Division to revoke European patent no. 1 462 952.

X. Claim 1 of the patent as granted (main request) reads as follows:
"A computer-implemented process for searching among a collection of Internet or HTML documents (30, 32, 34, 36, 38, 40, 42),

T 1645/10 - Right to be heard even if no oral proceedings

Blog headnote
Not requesting oral proceedings in opposition is no waiver of the right to be heard.

Analysis

• Not requesting oral proceeding in an opposition procedure is no waiver of the right to be heard, the Opposition Decision may only base its decision grounds on which the parties have had the opportunity to comment. 
• In case of substantial procedural violation during opposition against patent with filing date before 13.12.2007, Rule 69 EPC 1973 is applicable for refund of the appeal fee.
• Reliability of witness: more credible as relating to trade fair held during 11 September 2001 (WTC attacks). 
• For public prior use in the own sphere of the opponent, evidence "up to the hilt" is required, but what is required for publication of a brochure?

T 1645/10 - published 31.03.2015

Dated 17.03.2015 - Board 3.2.05 (Poock, Randl, Weiss) - DE - for the decision, click here.

T 0273/11 - Could or should have been presented

Blog headnote
In Art 12(4) RPBA, "could have been presented in the first instance proceedings" is to be read as "should have been presented", as the requirement for holding inadmissible (claim) requests in appeal (see e.g. T 144/09).

Analysis

• Board admits claim request because it is "the logical development of the discussion on inventive step and constitutes a reaction to the opposition division's decision to consider the main request as not inventive". 
• "Mix of mainly" does not provide basis for "comprising".
• The decision also contains a nice example of the Board demonstrating how to formulate the objective technical problem without pointers to the solution in it.

T 0273/11 published 01.04.2015

Dated 28.01.2015 - Board 3.3.07 (Semino, Usuelli, Schmitz) - for the decision, click here.

Summary of Facts and Submissions

I. The appeal of the patent proprietor (appellant) lies against the decision of the opposition division to revoke European patent No. 1 337 238. [...]

VI. [...] Claim 1 of the main request read as follows:

"A device for producing a microfoam suitable for use in scleropathy of blood vessels, comprising