R 0016/13 - Successful petition for review

EPO Headnote

Das Recht nach Artikel 113 (1) EPÜ, gehört zu werden, ist verletzt, wenn eine Beschwerdekammer zur Begründung ihrer Entscheidung ex officio im Verfahren nicht vorgebrachte Gründe heranzieht, ohne der dadurch benachteiligten Partei, Gelegenheit gegeben zu haben, zu diesen Gründen Stellung zu nehmen und, soweit die Patentinhaberin betroffen ist, entsprechende neue Anträge einzureichen, es sei denn, der Partei ist es nach dem Verfahrensablauf ersichtlich möglich gewesen, aus eigenem Fachwissen sich die Argumentation der Kammer zu erschließen.

Informal translation
The right to be heard under Article 113(1) EPC is violated when a Board of Appeal in support of its decision draws ex officio upon reasons which were not put forward in the procedure, without giving, to the party adversely affected thereby, an opportunity to comment on these reasons, and, as far as the patentee is concerned,  an opportunity to submit new requests, unless it was clearly possible for that party to infer the reasoning of the Board based on the course of the proceedings and his own expertise.


R 16/13 published 27.05.2015 " Kristallines Mikronisat des Tiotropiumbromids" 
Dated 08.12.2014 - Enlarged Board of Appeal - [B] - DE - for the decision, click here

Informal summary

• This is the fifth successful petition of review (after R15/11, R21/11, R3/10 and R7/09).
• In review of T 0379/10.
• The Opposition Division had considered the main request to lack inventive step with D2 as closest prior art.
• In appeal, the Patentee had argued that D24 was the closest prior art. A technical effect was supported by D11A, a report of comparative experiments demonstrating the technical effect (better stability) over D24.
• During Oral Proceedings before the Board, the debate was whether D2 or D24 (and possibly D25) was the closest prior art.
• The Board thereafter announced that it considered the main request to lack inventive step over D25, without giving specific reasons and refusing to give these when requested by the Patentee. In the written decision at [4.5], the Board considers that the alleged technical effect is not credible based on report D11A because some of the parameters specified in claim 1 were not specified therein. Hence, the objective technical problem was providing alternative micronized compositions.
• This results in the following reason of the Enlarged Board: 

2.2 Der dafür maßgebliche Grund [for not accepting the technical effect], D11A gebe die Parameterwerte des mit dem Stand der Technik verglichenen Produkts unvollständig wieder, so dass die dort dokumentierten Vergleichsversuche zur Stützung der geltend gemachten verbesserten Stabilität und zur Bejahung einer erfinderischen Tätigkeit nicht ausreichten, wurde jedoch nach den Feststellungen der Großen Beschwerdekammer in dem gesamten, der Entscheidung vorausgegangenen Verfahren nicht angesprochen. Er ist weder von den Parteien vorgetragen worden, noch hat ihn die Kammer von sich aus zur Sprache gebracht, noch ist er in der mündlichen Verhandlung erörtert worden. Dies hat die Einsprechende im vorliegenden Verfahren nicht geleugnet, sondern sogar implizit durch ihren Vortrag bestätigt.

• Hence, the reason of the Board for finding that D11A did not make the technical effect credible was that D11A did not show that the " inventive"  product had in fact all properties as defined in claim 1. This issue had not previously been raised by anyone in the proceedings.
• The Enlarged Board concludes that the issue was introduced by the Board through the examination of its own motion under A114(1). ([5.1]).
•  Although this is in principle allowed, with the following general proviso regarding the right to be heard: 

5.2 Dagegen ist grundsätzlich nichts einzuwenden. Wenn die Beschwerdekammer jedoch entscheidungserhebliche Überlegungen anstellt, die bisher im Verfahren von keiner Seite angesprochen worden sind, hätte sie diese den Parteien im Ladungszusatz oder spätestens in der mündlichen Verhandlung zur Kenntnis bringen müssen. Etwas anderes gilt allenfalls, wenn die Kammer berechtigterweise hätte annehmen dürfen, die Patentinhaberin und die Einsprechende bzw. ihre Vertreter würden ohne Zweifel aufgrund ihres Fachwissens und ihrer Erfahrung mit Vergleichsversuchen in Patentangelegenheiten von sich aus die fragliche Argumentation der Kammer erkennen und in ihren Parteivortrag einbeziehen können.

•  In the present case, this was not complied with, basically because the Patentee had no reason to doubt its interpratation of D11A.

 [5.4] (...) Deshalb hat sich ihr keine Möglichkeit eröffnet, die Auffassung der Kammer, in D11A seien die Parameter des mit dem Stand der Technik verglichenen, erfindungsgemäßen Mikronisats nicht vollständig angegeben bzw. die drei letzten in Anspruch 1 aufgelisteten Parameter fehlten vollständig, zu erkennen und sich dazu zu äußern.

• After further noting that the Board had refused to indicate its reasons after announcing its finding of lack of inventive step over D25, the Enlarged Board finds a violation of the right to be heard, and sets aside the decision under appeal and the case is remitted to the (same) Board. 

T 0359/11 - Abuse of R 137(3)

Keypoint

The ED was incorrect in not admitting any of the requests under R137(3) on the ground that although the claim amendments did address the objection under A123(2), it did not address the objection of lack of inventive step (with which the applicant disagreed). (EPO headnote is about separate issue of declaration of no search)

Quote
The Board wishes to point out that when faced with an objection raised by the examining division that the application fails to meet a requirement of the EPC, the applicant is under no obligation to amend the application documents. An equally legitimate response open to the applicant is to argue that the objection is not well-founded. [...] By refusing its consent to the main request, the Examining Division effectively took the position that any admissible request had to incorporate amendments aimed at overcoming its objections under Article 56 EPC. This unreasonably deprived the applicant of the opportunity of simply disagreeing with the Examining Division and obtaining a decision based on a set of claims, duly admitted into the procedure, reflecting what had been its fundamental position throughout.

Analysis

It is unfortunate that this simple appeal took four years, to correct a manifestly wrong decision of the Examining Division.

T 0359/11 of 19.05.2015

Dated 13.05.2015 - Board 3.4.03 - [C] - for the decision, click here

Reasons for the Decision

T 0037/12 - Handwritten amendments in appeal

Key point

• Handwritten amendments are allowable in appeal. 

EPO Headnote (informal translation)
1. When applying the general reference in Rule 99(3) EPC it is required, according to its development and purpose, to assess whether and how the referred rules are to be applied in the specific circumstances.
2. Applying Rules 49(8) and 50(1) EPC equally to documents filed during oral proceedings before the Board of Appeal, would contradict procedural economy and is not necessary on other grounds.
3. The introduction of Rule 99(3) EPC therefore gives no reason for abandoning the established practice according to which documents filed during oral proceedings before the Boards of Appeal may contain legible handwritten amendments.

This post was kept in stock for some time.

T 0037/12 of 26.03.2015

Dated 02.10.2014 - Board 3.2.01 (Pricolo, Marx, Guntz) - publication B - in German - for the decision, click here

EPO Headnote

1. Bei Anwendung der Generalverweisung in Regel 99 (3) EPÜ ist nach deren Entstehungsgeschichte und Zweck im Einzelfall zu prüfen, ob und wie eine der Regeln, auf die verwiesen wird, auf einen bestimmten Sachverhalt anzuwenden ist.

2. Eine entsprechende Anwendung der Regeln 49 (8) und 50 (1) EPÜ auf Unterlagen, die während der mündlichen Verhandlung vor der Beschwerdekammer eingereicht werden, würde der Verfahrensökonomie widersprechen und ist auch nicht aus anderen Gründen geboten.

3. Die Einführung von Regel 99 (3) EPÜ hat daher keinen Anlass gegeben, die jahrelang geübte Praxis aufzugeben, wonach in der mündlichen Verhandlung vor der Beschwerdekammer eingereichte Unterlagen gut lesbare handschriftliche Änderungen aufweisen dürfen.

[Decision omitted] 

Art 53(1)(d) UPCA: Hearing witnesses

Article 53 Means of evidence 

1. In proceedings before the Court, the means of giving or obtaining evidence shall include in particular the following: [...]
d) hearing witnesses;

Analysis

Article 117(1) EPC is almost identical to Article 53 UPCA. However, whereas the EPO can not summon witnesses (and attending oral proceedings is not obligatory anyway, see Rule 120 EPC), and can not hear witnesses under oath, the UPC can.

According to Rule 179.2 RoP (17th draft), the Court may impose a fine on a witness who fails to appear before the Court or refuses to give evidence. Moreover, the witness must make a declaration " that the evidence I shall give shall be the truth, the whole truth and nothing but the truth." (R 178.1). Giving false evidence is seen as something within the "criminal jurisdiction" of the competent authorities of the Contracting Member States (R179.4).

Notewhorty, and at first sight problematic, is R 178.7, stating that a witness may give evidence in a language other than the language of proceedings "with the consent of the Court" .  It seems doubtful whether someone can be obliged to give evidence in a language he does not master. Compare Rule4(3) EPC.

EPO Case Law Week 21

Notewhorty decisions published 18.05-22.05.2015

T 0755/09 - Examination appeal of (US originating) application with inventors as co-applicants, appeal mentions only company as appellant, appeal inadmissible (appellant did not attend oral proceedings and did not request correction under R 139)

T 0359/11 - Notorious computer - EPO Headnote: " Where the relevant search authority has stated, either in a search report or in a declaration that no search report will be established, that it is not necessary to cite any documentary evidence of the prior art on the grounds that all of the technical features of the claimed invention are notorious, it is always incumbent upon the examining division to consider whether an additional search is necessary. The criterion to be applied is that if the invention as claimed contains at least one technical feature which is not notorious, the application should normally not be refused for lack of inventive step without performing an additional search."

T 1211/10 - Invention about online shopping not excluded - "Although the examples given in the description relate principally to commercial applications, in particular to online shopping, the board considers the invention not to fall under the exclusions listed in Article 52(2)(c) EPC. In particular, the board does not accept the reasoning in the appealed decision that the problem to be solved by the computing devices used in the invention is "not a technical problem but a business one"; see point 1.5 of the reasons. The board considers that, contrary to the finding in the decision, the aim of the invention is token-based authentication by means of a mobile phone, which is a technical problem. The particular application context in which this problem is solved, i.e. online shopping, does not detract from the technical nature of this problem."

T 0297/11 - Implicit disclosure - " The Board observes that it is a generally applied principle that for concluding lack of novelty, there must be a direct and unambiguous disclosure in the state of the art which would inevitably lead the skilled person to subject-matter falling within the scope of what is claimed. In this context an "implicit disclosure" on which the novelty attack of the Appellant is based means no more than a clear and unambiguous consequence of what is explicitly disclosed (see T 1523/07)." (A123(2) EPC)

Update with decisions of 22.05.2015

T 0335/14 - clarity - " The Board therefore considers that the explicit recitation of something which is implicit is not required as it amounts to a mere tautology."

T 1710/13 - A 123(2) / A 84  trap - application as filed uses "mindestens als 60 mN/m" in claim 1. Correction into " mindestens 60 mN/m contravenes A 123(2), amendment into "mehr als 60 mN/m" contravenes A 123(2) as well, "mindestens als 60 mN/m" contravenes A 84. Patent revoked.

T 1539/11 - case law about parameters applies to other features as well. Feature claim 28: "the channeling agent forms passages for moisture transmission through the composition" -
"The question whether the skilled person will always be able to unambiguously distinguish a composition "containing throughgoing channels as defined in Claim 28 at issue from a composition not containing them or containing only a very small amount of them is an issue of clarity (Article 84 EPC) rather than an issue of sufficiency of the disclosure.

Even assuming for the sake of argument that a problem of this type would arise in the case of structures prepared using a relatively low amount of the channeling agent, it has not been shown that such problem would actually "permeate the whole claim" and hence "deprive the skilled person of the promise of the invention" (see e.g. decision T 0608/07).

T 1480/12 - Combining claims, still need to file claims set

Key points

• Amended sets of claims need to be filed on separate sheets, also in appeal, even if you just combine two claims.

T 1480/12 - 23.01.2015

Dated 10.12.2014 - Board 3.4.03 - publication C - for the decision, click here

This post was kept in stock for some time.

T 2130/11 - Unclear disclaimers and disclaiming more than necessary

Key point

• A disclaimer may remove more than necessary for restoring novelty is allowable if this is necessary to keep the disclaimer concise and clear. 

This post was kept in stock for some time.

EPO Headnote


The difficulty for the applicant or patent proprietor in formulating an allowable disclaimer cannot justify an exception in the application of Article 84 EPC which is not foreseen in the Convention. Not even a condition on the allowability of a disclaimer made explicit in a decision of the Enlarged Board as the condition that a "disclaimer should not remove more than is necessary to restore novelty" (G 1/03, point 3 in the reasons, second paragraph, last sentence) may have as a consequence the watering down of one of the requirements of the EPC. The requirements of Article 84 EPC must therefore apply for a disclaimer as for any other feature of a patent claim (see point 2.9).


On the other side, the condition that the disclaimer should not remove more than is necessary to restore novelty should be applied while taking into consideration its purpose, namely that the "necessity for a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily" (G 1/03, point 3 in the reasons, second paragraph, last but one sentence). In this respect situations can be foreseen, in which, while fulfilment of the condition taken in a strictly literal way would not be possible, a definition of the disclaimed subject-matter which satisfies the requirements of Article 84 EPC and fulfils the purpose of the condition (i.e. to avoid an arbitrary reshaping of the claims) may be achievable. In other words, a disclaimer removing more than strictly necessary to restore novelty would not be in contradiction with the spirit of G 1/03, if it were required to satisfy Article 84 EPC and it did not lead to an arbitrary reshaping of the claims (see point 2.10).

T 2130/11 - 02.03.2015

Dated 02.12.2014 - Board 3.3.07 - publication B - for the decision, click here

[text omitted]

Art 25 UPCA and devices made after publication but before grant

Article 25 UPCA and products made before grant

Article 25

Right to prevent the direct use of the invention

A patent shall confer on its proprietor the right to prevent any third party not having the proprietor's consent from the following:
(a) making, offering, placing on the market or using a product which is the subject-matter of the patent, or importing or storing the product for those purposes;

Analysis

• In case a product (say a patented device) is made and used in the EU (contacting states) by a third person between publication of the application and grant of the (non-opted out non-unitary European) patent, can the patent proprietor obtain an injunction to stop further use of that device?

EPO Case Law week 20

Noteworthy EPO decisions of week 20 (published 11 - 15.05.2015)

Week 20 was a quiet week at the EPO regarding published decisions.

T 0522/11 - Art 123(2) Added subject matter by combining claim 1 with (separate) dependent claims 3 and 5 unallowable - " It may be added that whilst nothing would seemingly prevent the combination of the features in claims 3 and 5 from a technical viewpoint, this is not the standard which is to be applied when deciding on the issue of a direct and unambiguous disclosure of the combination of these features."

T 2389/13 - in this examination appeal, the Board cites a Wikipedia printout D8 (dated January 2015) together with the summons for oral proceedings as evidence " that the person skilled in the art by applying his common general knowledge and taking account of the chemical and physical properties of this specific aluminate type will consider trying out other commonly known aluminate spinel compounds such as for example ZnAl2O4 (having a melting point of 1950°C [...] as material for said transition layer 24 (see for example D8, page 1) in order to solve the objective problem of providing an alternative material with high temperature resistance."

T 1023/11 -  Art 54(5) - second medical use - formulation " for use in the treatment of spasticity" - D1 discloses the compound as muscle relaxants and muscle relaxants are useful in the treatment of muscle stiffness, which is a well-known sign of spasticity, however use for treatment of spasticity is still novel, because " a muscle relaxant can also be used for therapeutic applications other than the treatment of spasticity. Therefore, the examining division's conclusion that D1 provides an implicit disclosure of the use of the baclofen compositions in the treatment of spasticity is not tenable." Also inventive because closest prior art D4 teaches away from oral formulations.


T 1164/11 - Art 83 - cancer curing device (cf. perpetuum mobile) apparatus with functional feature "an energy emitter (9) [...] active on the molecules of at least one medicament to cause penetration of same into a skin region to be treated " insufficiently disclosed - "the Board is not aware of a known physical mechanism according to which light is able to push molecules of a medicament, contained in the matrix of a solidified medicamentous solution, into the skin"; " The Board accepts that it may not be possible to provide a scientifically sound explanation and that the invention may still be sufficiently disclosed if such an unexpected effect is convincingly demonstrated. However, the original application is devoid of any test results or experimental evidence that could give an indication of light-induced enhancement of penetration of medicament molecules into the skin."

T 0862/11 - Product-by-process: different for novelty and infringement ?

Keypoint

• A use claim involving a product defined by product-by-process features is only allowable under A84 EPC if it is not possible to define the product by structural features.
• Interesting discussion of UK interpretation of product-by-process claims.

EPO Headnote
When considering the definition of a product in terms of its production process the principles developed in the jurisprudence for the "product-by-process claims" are in general to be applied, also in the case of a claim directed to the use of that product (points 3.2 to 3.7).
Quote

"In the decision of the UK High Court of Justice, Chancery Division, Patents Court of 21 November 2014, in Hospira v. Genentech ([2014] EWHC 3857, points 143 to 147) Mr Justice Birss considered that, as far as infringement is concerned, a product "obtained by" a process means a product which has actually been obtained by that process. However, he did not adopt the same interpretation for the issue of validity but took instead the view that a new process which produces a product identical to an old product cannot confer novelty on that product, an interpretation corresponding to the established case law of the Boards of Appeal for a "product-by-process claim" (Case Law of the Boards of Appeal of the European Patent Office, 7h edition 2013, II.A.7.)."

T 0081/14

Online 05.05.2015 - Dated 12.03.2015 - Board 3.2.08 (Kriner, Alvazzi Delfrate, Keeling) - [B] -  for the decision, click here

Art. 82 UPCA: Open questions

In this new series, I will provide some first thoughts on the Unitary Patent Package, including the Unified Patent Court Agreement.

Article 82 
Enforcement of decisions and orders

1.   Decisions and orders of the Court shall be enforceable in any Contracting Member State. An order for the enforcement of a decision shall be appended to the decision by the Court.

• What is the difference between a decision and an order?
• Does an order refer only to injunctions? (edit: and payments)
• Is "order" as used in the second sentence the same as "order" in the first sentence?
• Why is an order required for a decision, as specified in the second sentence, if a decision is enforceable according to the first sentence?
• Is an order according to the first sentence directed to the party involved and an order of the second sentence to the authorities entrusted with enforcing?

2.   Where appropriate, the enforcement of a decision may be subject to the provision of security or an equivalent assurance to ensure compensation for any damage suffered, in particular in the case of injunctions.

• Does this also apply to enforcement of orders?
• Does this also apply to final decisions?
• Does "damage" refers only to damage suffered due to the enforcement?

3.   Without prejudice to this Agreement and the Statute, enforcement procedures shall be governed by the law of the Contracting Member State where the enforcement takes place. Any decision of the Court shall be enforced under the same conditions as a decision given in the Contracting Member State where the enforcement takes place.

• What kind of "decision given in the Contracting Member State" is referred to? 
• Are formalities allowed, i.e. the same formalities as for enforceable decisions of that state?
• Can the Contracting Member State require a translation, or that the language is the same as languages of decisions given in that state?
• Can an order be given in a different language than the language of proceedings, e.g. a language of the state of enforcement?
• Can the Rules of Procedure specify anything about enforcement, since (3) does not refer to them?

4.   If a party does not comply with the terms of an order of the Court, that party may be sanctioned with a recurring penalty payment payable to the Court. The individual penalty shall be proportionate to the importance of the order to be enforced and shall be without prejudice to the party's right to claim damages or security.

• Is a payment the only sanction?
• What if national law provides for imprisonment?
• Is the party in the first sentence the same as in the second sentence? 
• What is the relation between damages and security and penalties payable to the Court?

Postal service providers (OJ2015, A29)

Decision of the President of the European Patent Office dated 11 March 2015 concerning the application of Rule 133 EPC on the late receipt of documents

This post has been kept in stock for some time.

Key point / analysis

Rule 133(1) has changed since 1 April 2015. The new Rule reads: "A document received late at the European Patent Office shall be deemed to have been received in due time if it was delivered to a recognised postal service provider...". Previously, the Rule read: "if it was posted, or delivered to a recognised delivery service"

Article 2 of the decision specifies the recognised postal service providers and reads:

"The postal service providers generally recognised by the EPO for the application of Rule 133 EPC shall be the designated operators within the meaning of Article 1 of the Universal Postal Convention and: Chronopost, DHL, Federal Express, flexpress, TNT, Skynet, UPS, and Transworld"

Note that "designated operators within the meaning of Article 1 of the Universal Postal Convention" are the generally the traditional post services.

Article 1  of the Universal Postal Convention seems not so easy to find. Perhaps this definition is intended: 

"Designated operator: any governmental or non-governmental entity officially designated by the member country to operate postal services and to fulfill the related obligations arising out of the Acts of the Union on its territory." 

(Article I, point 1.7, Eighth Additional Protocol to the Constitution of the Universal Postal Union)

The listed commercial companies seem to correspond to the previous "recognised delivery service", with the addition of Transworld. 

 OJ2015, A29 | Entry into force 1 April 2015 | Supersedes OJ 2007, Spec. Ed. 3, I.1

OJ 2015/4: Notice about mailbox (OJ 2015, A36)

Notice of the European Patent Office dated 30 March 2015 concerning amendments to Rules 2, 124, 125, 126, 127, 129, 133 and 134 EPC, and the decisions of the President of the European Patent Office dated 11 March 2015 on the late receipt of documents and on the pilot project to introduce new means of electronic communication

OJ 2015, A36

• The implementing regulations have been changed to replace "post" by "postal services", so that the EPO can use commercial post services.
• Rule 127(2) now specifies the 10-day rule for electronic communications. Note that in case of delivery in the Mailbox after the printed date, the 10 period is (apparently) added, based on Art 9(4) of the Decision about Electronic Communication (OJ 2015, A28). (Point 3.2 of the Notice). For paper notifications, this is not the case: if received after more than 10 days, the time limit runs from the date of actual receipt. 

EPO Case Law week 19

Noteworthy decisions of week 19 (published 04.05 - 08.05.2015)

T 1756/11 - [C; DE] - third party observations in opposition and opposition appeal - third party observations filed during opposition appeal procedure are normally disregarded, unless they consider claim amendments, or unless parties take position regarding facts or evidence contained in the observations. (Articles 115, 113, 114 EPC, G9/91).

T 0262/13 - Scope of protection extended by specifying a component in more detail (based on T 2017/07) - not: specific salts were already included in dependent claim 3, so claim 3 had same scope. Feature "applying a salt to at least one of said surfaces of said film; said salt comprises between 0.5% and 15% of the weight of said film, wherein said salt is selected from the following group: consisting of: [...]  does not allow use of salts other than those listed, according the board. (Article 123(2))

T 0617/11 - Claim directed to containing laundry tablets, the container having essentially a window with a matching color, for improving visual appearance. Not excluded aesthetic creation presentation of information, as the claim recites a "container" (Article 52(2)(b); (d); T154/04). Board also rejects insufficiency: "[i]n executing the invention, the skilled person will not have the wish to make the invention not work, i.e. he will not locate the viewing region in the container at a position where the tablets cannot be seen; he will not choose light transmissivity materials which will not have the desired effects." Lack of novelty because distinguishing features are aesthetic - fresh ground of opposition not admitted. Objective technical problem of accentuating colour difference is accepted. Claimed container.  is non-obvious. 

T 0992/12 - Examination appeal - refusal of claim including disclaimer (negative features) which was contained in the application as filed - unallowability of disclaimer to exclude non-working embodiments (G1/03) does not apply if disclaimer is contained in application as filed - "the Board is not aware of a provision of the EPC requiring a European patent application to also provide a full disclosure of the reasons for which a claim of the application as filed was drafted to comprise limitations expressed in terms of disclaimers".

T 0081/14 [B] - Claim 8 is directed to the use of the sintered cemented carbide body obtained according to the method of any one of claims 1 to 7 for the production of a cutting tool. The rule that a product may only be defined as a product-by-process claim if it can not be defined by structural features, applies as well to a claim direct to use of such a product. 

T 0275/12 - If the patentee-appellant requests revocation in appeal, this is to be taken as the withdrawal of the appeal according to established case law. The appeal procedure is terminated. 

T 1677/13 - A technical effect brought forward by patent proprietor for the first time at oral proceedings in opposition-appeal is disregarded as late-filed.

T 0423/11 - Appeal without name appellant

Key point

• Appeal is admissible even if the Notice of Appeal is filed by "the opponent" (without his name).
• Transfer of opposition registered 8 years after actual transfer of business assets.
• Action of opponent performed in the meantime are valid because transfer of opposition is only effective as of "ex nunc" (date of filing request of transfer and required evidence)

T 0423/11

Online 30.04.2015 - dated 11.03.2015 - Board 3.5.06 (Tardo-Dino, Krischer, Teale) - for the decision, click here

Summary of Facts and Submissions

I. This is an interlocutory decision on the admissibility of the appeal and the validity of the transfer of opponent status.

II. A notice of opposition was filed on 7 January 2004 by SAGEM SA represented by [person B] against the European patent No. 0834121.

III. In an interlocutory decision dispatched on 17 December 2010 the opposition division found that the patent as amended in opposition proceedings met the requirements of the EPC.

IV. A notice of appeal was filed on 17 February 2011 by "the opponent" represented by [person B] against this decision. The opponent's name was not indicated.

T 0500/12 - Opposition appeal continued after lapse

Key point

• The Board applies R84(1) EPC in appeal: the appeal of the opponent is continued at his request, even while patentee stated that the patent had been surrendered or lapsed in all States.

Analysis

• The Board states that the opponent had "the appellant provided evidence from several national patent registers showing that the opposed patent had not lapsed in all Contracting States and that it was still in force." Correct as that may be, it does not seem relevant: even if the patent had lapsed fully, the appeal had (imho) still be continued at the simple request of the opponent. If only because revocation is retroactive (from the outset) while lapse is not.

T 0500/12

Online 30.04.2015 - dated 24.04.2015 - Board 3.3.08 (Wieser, Julia, Rogers), for the decision, click here

Summary of Facts and Submissions

I. European patent number 1 716 233 was maintained by the opposition division in amended form in accordance with an Auxiliary Request 2. The opposition division considered the Main Request and Auxiliary Request 1 not to fulfil the requirements of Article 54 EPC. All requests were filed at oral proceedings before the opposition division on 1 November 2011.

II. An appeal was lodged by the opponent (appellant). In the statement setting out its Grounds of Appeal, the sole argument put forward by the appellant concerned a lack of inventive step of the request upheld by the opposition division (Article 56 EPC). As an auxiliary measure, oral proceedings were requested.

III. In reply to appellant's Grounds of Appeal, the respondents (patentees) referred only to their arguments submitted with a letter dated 28 February 2011 in reply to opponent's Notice of opposition. A copy of this letter was enclosed to the respondents' submissions. The respondents requested oral proceedings as an auxiliary measure.

IV. In a letter dated 6 May 2014, the respondents informed the board of their intention not to take further action in relation to the appeal proceedings and not to attend the payment of the national renewal fees for the patent. The request for oral proceedings was withdrawn.

V. In a communication issued on 30 June 2014, the board, with reference to Rule 84 (1) EPC, sought to clarify the appellant's intentions as regards the continuation of the appeal proceedings. The board informed the respondents that the appeal proceedings could not be terminated by informing the EPO that the opposed patent was surrendered.

VI. The appellant requested to continue the appeal proceedings. The respondents did not reply to the board's communication and did not file any submissions regarding appellant's request to continue the appeal proceedings.

VII. The board issued a communication pursuant to Rule 100(2) EPC informing the parties that appellant's Request to continue the appeal proceedings was granted (cf. "Case Law of the Boards of Appeal of the EPO", 7th edition 2013, IV.C.6.2, page 849). [...]

Reasons for the Decision

Appellant's request for continuation of the appeal proceedings

1. In reply to the respondents' notice that they did not intend to take further action in relation to the appeal proceedings, that they did not pay the national renewal fees due in January 2014 and that they did not intend to pay these renewal fees within the available grace periods, the appellant requested the continuation of the appeal proceedings (Rule 84(1) EPC; cf. points V and VI supra).

2. The appellant provided evidence from several national patent registers showing that the opposed patent had not lapsed in all Contracting States and that it was still in force. The appellant further indicated that the annuity fees could be paid not only by the patentees but also by a third party. Furthermore, annuity fees could still be validly paid with surcharge until 31 July 2014 in many of the Contracting States and, even if annuity fees were not paid with surcharge in due time, reinstatement periods had also to be considered.

3. In the light thereof, the board granted appellant's request to continue the appeal proceedings and informed the parties accordingly in its communication pursuant to Rule 100(2) EPC (cf. point VII supra).

T 0840/11 - Repairing in opposition appeal

Key point

• The patent was revoked for essentially correct reasons. Board 3.3.05 admitted an appeal based on a new claim request overcoming the reasons by amendment. The Board distinguishes from T2532/11 by noting that "the statement of grounds of appeal contains a detailed discussion [...] of why the independent claims of the amended requests in the appellant's opinion overcome the objection of added subject-matter."

T 0840/11

Online 28.04.2015 - dated 21.01.2015 - Board 3.5.03 (Van der Voort, Madenach, Cramer) 

Reasons for the Decision

1. Admissibility of the appeal (Article 108, Rules 99(2) and 101(1) EPC)

1.1 The respondent requested that the appeal be rejected as inadmissible, since the appellant's statement of grounds of appeal failed to meet the requirements set out in Rule 99(2) EPC. It indicated neither any reason for setting aside the opposition division's decision nor the extent to which it was to be amended. Instead, [according to the opponent] the appellant [patent proprietor] seemed to wholly accept the opposition division's decision and filed amended requests in response to it. The appellant had thus, according to the respondent, considered the opposition division's decision as an examination report which the appellant had accepted in its entirety and to which it had reacted by filing new requests. Hence, the appellant was attempting to use the appeal procedure as a continuation of the proceedings. Reference was made to T 2532/11 (reasons 2.2.2, 2.2.5 and 2.6.2).

1.2 The board notes that the patent was opposed inter alia on the ground of Article 100(c) EPC, i.e. that the subject-matter of claim 1 extended beyond the original disclosure (Article 123(2) EPC), with the argument that claim 1 as granted did not include a handheld secure token. With its communication annexed to the summons to oral proceedings, the opposition division expressed its doubts as to whether the challenge-response approach in the general way it was claimed was originally disclosed. In its response, the patent proprietor provided arguments and submitted an auxiliary request in an attempt to remove the doubts expressed by the opposition division. The filing of a second auxiliary request during the oral proceedings was not allowed by the opposition division (see point II above). With the statement of grounds of appeal, the appellant filed claims of a main request in which claim 1 specified a handheld secure token, and submitted extensive argumentation (over 5 pages) why some other features which the opposition division in its written decision considered as a necessary part of the challenge-response approach as originally disclosed did not need to be included in claim 1.

1.3 In the board's view, with the filing of the auxiliary request and the arguments in preparation for the oral proceedings before the opposition division in response to the communication annexed to the summons, the appellant made a bona fide effort to remove the opposition division's doubts. The subsequent filing of an appeal with new requests is understood as a response to the detailed reasons given in the opposition division's written decision. In the board's view, these requests and the arguments in their support could not be expected to have been filed in response to the rather unspecific statement of the opposition division in the communication annexed to the summons.

With respect to decision T 2532/11 cited by the respondent, the board notes that at point 2.3.3 of that decision it is held that "none of the main grounds for revocation of the patent presented in the impugned decision was addressed in the statement of grounds of appeal". This does not apply to the present case, since the statement of grounds of appeal contains a detailed discussion (cf. the section "Article 123(2) EPC - Added subject matter") of why the independent claims of the amended requests in the appellant's opinion overcome the objection of added subject-matter. Further, in T 2532/11 at point 2.4.2, it is stated that with respect to the question of whether or not newly filed requests can be seen as implicit grounds of appeal, the issue is "whether the grounds are understandable and sufficiently linked to the contested decision in order to form an admissible appeal" (original underlining). In the board's view, this requirement is met in the present case, considering the appellant's detailed analysis of the reasons given in the decision.

1.4 The board concludes that, since the appeal complies with Rule 99(2) EPC as well as the other requirements for an admissible appeal (which was not contested), the appeal is admissible.

T 1883/12 - Discretion of OD and review

Key points

• Prior art filed after opposition period is at the discretion of the OD, the exercise of that discretion is open to only limited review in appeal. 
• Opponent had submitted a document before OD without using it in an attack, and had only based arguments on it in appeal. This amounted to a fresh case, according the Board, and the arguments are not admitted.

Quote

• "Consequently, a board reviewing a discretionary exercise can only consider whether criteria used are reasonable and have been applied reasonably."
• "The Board is open to the argument that when reviewing a first instance's decision not to admit late filed submissions it may also consider the underlying facts in so far as to establish whether the assessment of prima facie relevance is manifestly in error [...], even if discretion appears to have been exercised in an otherwise proper manner, that is after having heard the parties and reasoned its decision in an ostensibly comprehensible manner"

T 1883/12

Online 30.04.2015 - dated 17.11.2014 - Board 3.2.04 (Heath, De Vries, Frank) - C - for the decision, click here

3. Framework of the appeal

3.1 The Appellant contests the non-admission by the opposition division of D5 to D12. The Appellant generally faults the use of the criterion "not more relevant than admitted evidence", but also argues the use of other criteria such as lateness and complexity. Finally, the Boards should be allowed to reassess relevance of late filed evidence not admitted in first instance.

EPO Case Law Week 18

Noteworthy decisions of week 18 (published 27.4 - 1.5.2015)

T 2579/11 - In case the prior art contains an application and in the file thereof, the priority document, and some examples included only in the priority document are closer to the claim at issue, these examples in the priority document can form the closest prior art, even if the subsequent application has a generally more detailed description.

T1883/12 - (1) Limited review of discretion of OD to not admit any prior art submitted after opposition period. (2) Opponent had submitted a document before OD without using it in an attack, and had only based arguments on it in appeal. This amounted to a fresh case, according the Board, and the arguments are not admitted.

T 0840/11 - The patent was revoked for essentially correct reasons. Board 3.3.05 admitted an appeal based on a new claim request overcoming the reasons by amendment. The Board distinguishes from T2532/11 by noting that "the statement of grounds of appeal contains a detailed discussion [...] of why the independent claims of the amended requests in the appellant's opinion overcome the objection of added subject-matter."

T 0423/11 - (1) Appeal filed by "the opponent" without giving name of appellant is admissible, because there was no doubt about identity of appellant. (2) Transfer of opposition registered 8 years after transfer business assets. (3) Acts performed by opponent in meantime are valid since transfer only has effect as of the date filing the request.

T 0500/12 - The Board applies R84(1) EPC in appeal: the appeal of the opponent is continued at his request, even while patentee stated that the patent had been surrendered or lapsed in all States.

T 1437/10 - Double patenting

Key points 

• The Board does not admit a set of claims defining subject-matter being essentially identical to the scope of protection of the granted divisional filed from the present parent, as a decision thereon is "superfluous".
• US provisional without claims as priority document - the Board analyzes that sections 1 and 2 of the priority document disclose an invention in the sense of Article 87(1) EPC, and that sections 4 and 5 do not disclose essential features. Hence, the claims do not need to include the features of sections 4 and 5 for valid priority. 

This post has been prepared in advance.

T 1437/10 - 20.04.2015

Dated 12.02.2015 -Board 3.5.02 (Ruggiu, Bronold, Muhlens) - publication C - for the decision, click here

Reasons for the Decision