T 0102/12 - Request regarding description

T 0102/12

For the decision, click here

Key point

• The Board does not decide on the requested adaption of the description, mainly because the appellant-proprietor had only pointed to this issue at the end of the oral proceedings, after the decision had been announced. 
• This confirms that a decision is effective the moment it is announced in oral proceedings.

Reasons for the Decision

[...] 3.3.7 Thus the subject-matter of claim 1 of auxiliary request 2 is inventive. Accordingly the patent is to be maintained in the form as decided by the opposition division.

3.4 At the end of the oral proceedings, the appellant-proprietor explained that there was still a request with respect to the amendment of the description. This was contained on page 10 of the letter of 19 March 2012.

[Patentee disagreeed with the deletion of two sentences from the description which had been required by the Opposition Division.]

The Board had not identified this passage to be a request, the requests being contained on page 1 of said letter of 19 March 2012. Moreover, also at the beginning of the oral proceedings when the appellant was asked to confirm the requests, no reference was made to the description and no amended description had been filed. Since the decision had already been pronounced when the appellant-proprietor pointed to this issue, this request could no longer be considered by the Board.

Order

For these reasons it is decided that:

The appeals are dismissed.

T 1910/14 - Broad feature not necessarily unclear

T 1910/14

For the decision, click here

Key point

• "The board notes that the fact that a feature can be interpreted broadly or implemented in several ways does not by itself necessarily render the feature in question unclear." 
• The Board follows established case law, in particular T 1345/08, yet the above statement is nice to have as quote, in particular as it also covers the case a feature can be implemented in several ways.

Reasons for the Decision

1. Clarity (Article 84 EPC)

1.1 The sole ground for refusing the present application was that claims 1 to 4 do not meet the requirements of Article 84 EPC due to a lack of clarity.

More specifically, the examining division held that in claim 1 the feature that the drive coil is "removably engageable" with the transducer housing was unclear due to the fact that it could be interpreted in two different ways, namely "as defining that the coil is merely detachable from the housing even if it requires disassembling another element such as e.g. a sealing, or that there are no additional elements between the coil and the transducer housing and that the coil can be removed from the transducer housing without involving any additional parts of the claimed prothesis. In the latter case it is not known how such defined implantable prothesis could function properly".

The examining division further held that, since claims 2 to 4 were dependent on claim 1, these claims also lacked clarity.

1.2 With respect to the examining division's first reason, the board notes that the fact that a feature can be interpreted broadly or implemented in several ways does not by itself necessarily render the feature in question unclear.

T 1569/11 - No appeal against reasons only

T 1569/11

For the decision, click here

Key point

• In this case, the Opponents had tried to appeal a decision to revoke the patent, because the OD had revoked the patent only on the ground of Art. 100(b) EPC and not (also) under Art. 100(c) EPC. These appeals were, of course, inadmissible. The Opponents are respondents (parties as of right) only. 
" Thus, the opponents I and III do not seek to challenge the decision of the Opposition Division (i.e. revocation of the patent) but the reasons within the decision. In particular, the opponents wish to see the patent found invalid under Article 100(c) EPC. In doing so they misunderstand the nature and purpose of opposition appeal proceedings [...] "
• Both Opponents were represented by European patent attorneys of two of the larger firms. 

Reasons for the Decision

1. Admissibility of the appeals of the opponents I and III

1.1 An appeal is open to any party adversely affected by a decision (Article 107 EPC). The decision of the opposition division was to revoke the patent. In this sense the decision was fully consistent with the request of the opponents in the opposition procedure that the patent be revoked in its entirety. The opponents I and III were thus not adversely affected by the decision. Therefore, the appeals of opponents I and III are inadmissible.

1.2 It may be noted that it is irrelevant in this context that maintenance of the patent was not found to be prejudiced by the ground of opposition under Article 100(c) EPC, on which the opponents had failed to convince the opposition division, since it was found to be prejudiced by the ground of opposition under Article 100(b) EPC. Thus, the opponents I and III do not seek to challenge the decision of the Opposition Division (i.e. revocation of the patent) but the reasons within the decision. In particular, the opponents wish to see the patent found invalid under Article 100(c) EPC. In doing so they misunderstand the nature and purpose of opposition appeal proceedings which are not to re-examine a patent but to decide whether or not a first instance decision is correct (cf. T 854/02 point 3.2 of the reasons; T 437/98, OJ 2001, 231, point 2.2 of the reasons; T 193/07, point 2.3 of the reasons).

1.3 However, all the opponents have the status of respondents (parties as of right) in accordance with Article 107 EPC. Although the opponents OI and OIII had filed their submissions as grounds of appeal, and ultimately these appeals were found to be inadmissible by the Board, does not detract from the fact that the essence of the opponents' submissions is unambiguous in challenging a particular part of the decision where the opposition division had found in favour of the proprietor. As stated in the Board's communication issued under Article 15(1) RPBA, the objections made by the opponents OI and OIII (in their status as respondents) are simply to be considered as those of respondents in the admissible appeal of the proprietor.

T 0217/10 - Auxiliary requests in appeal need arguments

T 0217/10

For the decision, click here ([C] / DE)

EPO Keyword

" Nicht substantiierte Hilfsanträge sind im Beschwerdeverfahren nicht zu berücksichtigen (Punkt 5 der Entscheidungsgründe)" 

" Auxiliary requests without substantiation are to be disregarded in opposition proceedings" .

Key points

• Filing auxiliary requests with the Response as proprietor-respondent in opposition-appeal without substantiation, results in the requests to be disregarded under Article 12(2) and (4) RPBA, which require the Statement of Grounds and the Response to contain a party's complete case; including the reasons why it is requested that the decision under appeal be reversed, amended or upheld.
• The Board recalls that Articles 12 and 13 RPBA have the express purpose of preventing ping-pong submissions and salami tactics in appeal, this applies to the appellant as well as to the respondent; citing the same travaux préparatoires).
• Similar reasoning was given in T 1890/09 of the same Board, published the same day (also in German, unrelated case). 

Entscheidungsgründe

[...]

5. Hilfsanträge I bis V

Gemäss Artikel 12(2) VOBK müssen die Beschwerdebegründung und die Erwiderung den vollständigen Sachvortrag der Beteiligten enthalten. Es ist insbesondere anzugeben, aus welchen Gründen beantragt wird, die angefochtene Entscheidung abzuändern oder zu bestätigen.

Mit ihrer Beschwerdeerwiderung hat die Beschwerdegegnerin beantragt "[h]ilfsweise das Patent basierend auf einem der Hilfsanträge I bis V (eingereicht am 06. Oktober 2009) aufrechtzuerhalten". Der in der Beschwerdeerwiderung weiterhin enthaltene Sachvortrag bezieht sich allerdings lediglich auf die unveränderte Aufrechterhaltung des Patents bzw. die Zurückweisung der Beschwerde (mit einem ergänzenden Verweis auf einen Teil des Schreibens vom 6. Oktober 2009) - zu den (in der Beschwerdeerwiderung lediglich erwähnten, aber nicht als Anlage beigefügten) Hilfsanträgen enthält die Beschwerdebegründung keinerlei Stellungnahme. Das Einreichungsdatum der erwähnten Hilfsanträge liegt nach der Ladung zur mündlichen Verhandlung vor der Einspruchsabteilung.

Während die vorliegende Beschwerdeerwiderung somit Gründe enthält, weshalb die angefochtene Entscheidung zu bestätigen, die Beschwerde also zurückzuweisen ist, ist dies in Bezug auf eine Abänderung dieser Entscheidung - die Aufrechterhaltung auf der Basis der erwähnten Hilfsanträge - nicht der Fall.

5.1 Zur Beurteilung der hier vorliegenden Situation hält es die Kammer für angebracht, die Hintergründe des Zustandekommens der zitierten Bestimmung in der VOBK zu betrachten.

Gemäss Beschuss des Präsidiums vom 28. Oktober 2002 und Genehmigung des Verwaltungsrates am 12. Dezember 2002 (ABl. EPA 2003, 61) wurden damals die Artikel 10a (Grundlage des Verfahrens) und 10b (Änderung des Vorbringens eines Beteiligten) in die VOBK eingefügt. Diese Artikel wurden (mit für den im Folgenden zu diskutierenden Sachverhalt unbedeutenden Änderungen) mit Beschuss des Präsidiums vom 12. September 2007 und Genehmigung des Verwaltungsrates vom 25. Oktober 2007 in Artikel 12 und 13 VOBK umnummeriert. Die Einführung dieser Artikel in die VOBK zielte gemäss Dokument CA/33/02 [probably: CA/133/02] darauf ab, ein effizienteres und faireres Verfahren vor den Kammern zu gewährleisten: "Die Vorschriften in den Artikeln [12 and 13, then: 10a und 10b] dienen generell dazu, "Pingpong"-Vorbringen und "Salami"-Taktik im schriftlichen Verfahren zu vermeiden, und sollen dafür sorgen, dass die Kammer (und insbesondere der Berichterstatter) mit einer Beschwerdeakte arbeiten kann, die nur einen vollständigen Sachvortrag jedes Beteiligten enthält." (Seite 2, Punkt B.2).

T 0614/13 - Admissibility of intervention

T 0614/13 

For the decision, click here ([C] / DE)

Key points

• The case is about admissibility of an intervention by an alleged infringer, since the three month  period of Rule 89 EPC was triggered by the serving of a writ in China of which the precise date was difficult to prove. 
• A party intervening in opposition can appeal the decision of the OD holding the intervention to be inadmissible as being late filed after the three month period of Rule 89. 
• In this case, the period of about six months between the filing of the complaint with the German court and the serving the writ in China under the 1965 The Hague Service Convention, does not change the fact that the three month period of Rule 89 started from the receipt of the writ by the defendant.  
• The case is interesting since the patentee disputed admissibility of the appeal, of the intervention, and of the documents filed as evidence of the date of serving of the writ. 
• Refusal of the remittal to the OD requested by patent proprietor and intervener (not by other opponent). 

Sachverhalt und Anträge

I. Die Beschwerde der Einsprechenden/Beitretenden Kingfa Sci. & Tech. Co. Ltd. (Beitretende) richtet sich gegen die auf die mündliche Verhandlung vom 14. Dezember 2012 ergangene Entscheidung der Einspruchsabteilung vom 22. Januar 2013. Mit dieser Entscheidung hat die Einspruchsabteilung u.a. den "… Einspruch der Einsprechenden Kingfa Sci. & Tech. Co. Ltd. … als unzulässig verworfen". Die Beitretende habe nicht hinreichend nachgewiesen, dass ihr die Klageschrift (beim Landgericht Düsseldorf von der Patentinhaberin gegen die Beitretende eingereichte Klage auf Verletzung des Streitpatents) erst am 3. Juli 2012 zugestellt wurde, und damit die Erklärung des Beitritts mit Schreiben vom 27. September 2012 rechtzeitig erfolgte.

Mit der angefochtenen Entscheidung hat die Einspruchsabteilung zugleich den Einspruch der Einsprechenden Arkema France (Einsprechende 1) zurückgewiesen. Die Einsprechende 1 hat gegen die Entscheidung der Einspruchsabteilung ebenfalls Beschwerde erhoben.

II. Mit ihrem Schreiben vom 27. September 2012 hat die Beitretende u.a. die Dokumente D 13 und D 14 vorgelegt. Danach - insoweit zwischen den Beteiligten unstreitig - hat die Patentinhaberin gegen die Kingfa Sci. & Tech. Co. Ltd. am 3. November 2011 auf der Grundlage des Streitpatents eine Verletzungsklage beim Landgericht Düsseldorf (Az: 4b O 168/11) eingereicht (D 13). Das Landgericht Düsseldorf hat dann mit Datum vom 11. Januar 2012 einen Antrag auf Zustellung der Klage an das Bureau of International Judicial Assistance, Ministry of Justice der Volksrepublik China nach dem "Übereinkommen über die Zustellung gerichtlicher und außergerichtlicher Schriftstücke im Ausland in Zivil- oder Handelsachen, unterzeichnet in Den Haag am 15. November 1965" ("Haager Zustellungsübereinkommen") gerichtet (D 14).

T 1682/13 - Broader claims in appeal

EPO T 1682/13

For the decision, click here

Key points

• In this case, the patentee had submitted a (final) main request with narrow claims before the OD. The OD maintained the patent in amended form according to an auxiliary request. In the Statement of Ground, the patentee had submitted as main request the (broader )claims as granted. The opponent disputed whether the appeal was admissible. 
• The Board finds that filing such broader claims does not render the appeal inadmissible, even though the decision of the OD on the main request (as it then was) is hence not contested.  
• Although the appeal is admissible, the (broader) main request is not admitted as it could have been filed before the OD. The patentee had withdrawn its request for maintenance of the patent as granted during the first instance proceedings. Therefore, following established case law, such request can generally not be reintroduced in appeal.

Entscheidungsgründe

1. Zulässigkeit der Beschwerde der Beschwerdeführerin 1

Die Zulässigkeit der Beschwerde der Beschwerdeführerin 1 (Patentinhaberin) wurde von der Beschwerdeführerin 2 und der weiteren Verfahrensbeteiligten mit der Begründung in Frage gestellt, der einzige mit der Beschwerdebegründung geltend gemachte Anspruch, sei nicht Gegenstand der angefochtenen Entscheidung gewesen.

Diese Feststellung ist zwar zutreffend, denn die Beschwerdeführerin 1 hat in ihrer Beschwerdebegründung lediglich die Aufrechterhaltung des Patents in der erteilten Fassung beantragt, während sie vor der Einspruchsabteilung einen davon abweichenden neuen Hauptantrag sowie weitere Hilfsanträge geltend gemacht hat. Dies führt jedoch nicht zur Unzulässigkeit der Beschwerde.

T 2168/11 - Reintroducing requests

T 2168/11

For the decision, click here

Key point

• Patentee had withdrawn an auxiliary request before the OD, patent was revoked, in the first appeal the case was remitted to the OD. Patentee reverts to one of previously withdrawn requests as auxiliary request. The Board decides to not admit this request. 
• As a comment, this case shows that if you withdraw an auxiliary claim request before the OD, reintroducing it in the second appeal (after remittal) may be difficult. 

Summary of Facts and Submissions

I. European patent no. 0 730 643 is based on European patent application no. 94 931 891.9, published as International patent application WO 95/11968. The patent was opposed by three opponents on the grounds as set forth in Articles 100(a),(b) and (c) EPC. The opposition division considered the Main Request and an Auxiliary Request to contravene Article 54 EPC and, accordingly, the patent was revoked.

Full decision after the jump. 

T 0450/13 - Public prior use in appeal

EPO T 450/13 

For the decision, click here [C]


EPO headnote

1. Submitting new documents together with the statement of grounds of appeal without discussing them may obscure any argument the appellant may have intended to make in the statement of grounds of appeal.

It is in particular not acceptable if it is then necessary for the board and any other party to read the new documents, to identify the possibly relevant passages in them and then to knit them together to understand why, in view of these documents, the decision of the opposition division was in the appellant's view wrong (see in particular point 4.4 of the Reasons).

2. Not substantiating a public prior use in opposition proceedings but attempting to substantiate it in the statement of grounds of appeal may lead to the inadmissibility of this attack under Article 12(4) RPBA (see point 3 of the Reasons).

Key points

• "The above lack of substantiation [of the Statement of Grounds] with regard to the public prior uses [] is aggravated by the fact that with the statement of grounds of appeal, 83 new documents were submitted in relation to the public prior uses of which only 8 documents were discussed in the statement of grounds of appeal. This obscured any argument the appellant may have intended to make in the statement of grounds of appeal."  [4.4]
• " The board therefore decided not to admit the public prior use attacks BASF, Fabo and Straptech into the proceedings." [4.7]

Summary of Facts and Submissions

I. This decision concerns the appeal filed by the opponent against the interlocutory decision of the opposition division that European patent No. 1 923 441 as amended met the requirements of the EPC.

T 0460/13 - Evidence of public prior use in appeal is too late

EPO T 460/13

For the decision, click here 

Key points

• The opponent had filed extensive documentation to back up its alleged public prior use first with the statement of grounds. The Board deems this essentially to be too late. Public prior use must be substantiated already with the Notice of Opposition.
• The Board also explains that in case the OD admits an attack based on public prior use, but does not considered it convincing, the statement of grounds must directly address why the decision of the OD is incorrect, otherwise the attack is yet inadmissible in appeal.
• During appeal, the opponent switched from lack of novelty,  to lack of inventive step in view of the public prior use. This new inventive step was not admitted, since it should have been fully substantiated with the Statement of Grounds. 

Summary of Facts and Submissions

I. This decision concerns the appeals filed by the opponent and the patent proprietor against the decision of the opposition division that European patent No. 1 923 440 as amended met the requirements of the EPC.

T 2187/10 - Accidental surgical method

T 2187/10

For the decision, click here

• The invention concerns mainly new software to assist with surgery. Applicant had included in a method step the feature "performing the surgical procedure" , which is found to contravene Art.  53(c).
• In addition, the inventive step analysis in this case does not start from a document but from "the prior art acknowledged in the application" (statement in the application of the background of the invention, not referencing an actual prior art document). 
• The decision also provides an example of partial problems, non-technical features and usual design choices.

Summary of Facts and Submissions

I. This is an appeal against the decision, dispatched with reasons on 23 June 2010, to refuse European patent application No. 02 801 707.7 inter alia on the basis that the subject-matter of claim 1 according to the main and first and second auxiliary requests did not involve an inventive step, Article 56 EPC, in view of D1 and that the independent method claim according to the main and first auxiliary requests was not allowable under Article 53(c) EPC, because it set out a method for treatment of the human or animal body by surgery. This document is as follows: D1: EP 0 119 886 A1.

VIII. The claims according to the main request comprise an independent apparatus claim 1 and an independent method claim 15, the latter reading as follows (emphasis by the board):

"A method of implementing a computer-implemented procedure, the method comprising: inserting with a media drive (52) of a computer (10) a one-time-use digital medium (50) containing high level graphics processing software (72) with algorithms for graphics processes that are specific to a selected surgical procedure {p. 8, l. 15-20} wherein the high level graphics processing software interacts with low level graphics processing software (60) to enable the computer (10) to perform image and graphics processing which it may be called on to perform during a surgical procedure {p. 8, l. 21-26}; performing the surgical procedure;
after the procedure, erasing, encrypting or deforming the digital medium against reuse in the computer (10) {p. 3, l. 30-32; p. 9, l. 31-36}."

T 0941/11 - Apparatus features in method claim disregarded

EPO T 941/11

For the decision, click here.

Key point

• In this decision, apparatus features in a method claim are disregarded by the Board for inventive step.
• As a comment, it is rather surprising to me that a Board disregards features of a claim. Perhaps this is something not unusual in mechanical engineering, as the Board does not cite any case law in support of its approach, suggesting it is run-of-the-mill. 

Quote

"2.2.3 In the present case claim 1 (of all requests) is only cast as a method claim as such []. Any apparatus features appearing in such a method claim merely set out a given technical context in which the method steps are to be carried out without themselves contributing as such to the patentability of the claimed method steps. [] A method claim such as claim 1 (all requests) can only be evaluated for patenta­bi­lity on the basis of its technical method steps."

Summary of Facts and Submissions

I. Both parties lodged respective appeals against the decision of the opposition division proposing to maintain the European patent No. 0 940 258 in amended form. [...]

"A method for refilling a ink container (12) for a printing system (10), the ink container (12) having a housing (72), an ink reservoir (22) located within the housing (72) and having a fluid outlet (20) and a sealed fill port (122), a cap (116) mounted to the housing (72) which encloses the fill port (122), a memory device (26) for communicating information concerning characteristics of the ink in the ink container (12) to the printing system (10), and at least one adhesive film (118) providing structural support between the housing (72) and the cap (116), the method comprising:

(a) disabling the structural support provided by the adhesive film (118) and separating the cap (116) from the housing (72);

(b) creating an opening in the ink reservoir (22);

(c) refilling the ink reservoir (22) through the opening;

(d) resealing the opening in the ink reservoir (22); and

(e) reassembling the cap (116) to the housing (72); and

(f) refurbishing the memory device (26) for providing enabling information to the printing system (10) to enable the printing system (10) to operate."

[...]

Reasons for the Decision

[...]

2. Claim 1 - Inventive step

All requests

2.1 In its fax of 6 February 2015, appellant II provided comments in response to the boards provisional opinion to the effect that:

- the board has not specified which prior art is considered as the closest prior art;

- the board has not "duly considered" the structural features contained in claim 1, because although claim 1 is directed to a method, the device features referred to in the claim "must" be considered when assessing inventive step. Appellant II considers that there "is no legal basis to simply disregard features of a device used in a method when assessing inventive step. It is established practice at the EPO that if a product is new and inventive, then the use of the product - and refurbishing must be considered as a specific way of using an ink container - is automatically new and inventive as well, as it must be (see also Guidelines G-VII 13, which although not binding for the Board, still reflects the practice of the EPO and the Case Law of the Boards of Appeal)".

2.2 The above points are respectively addressed as follows:

2.2.1 In view of the generic nature of the claimed subject-matter, the closest prior art consists of the common general knowledge that the person skilled in the art of refurbishing ink cartridges is familiar with the refilling ink containers for a printing system. Although, this has not been challenged by the parties, evidence therefore is provided by the magazine extracts A. The associated objective problem is to specify the required method steps.

In addition, as pointed out in the board's provisional opinion annexed to the summons to oral proceedings, further general knowledge of this skilled person is illustrated in document D3, (see column 9, lines 16 to 20 for the need to remove and put back an enclosure for access and column 15, lines 45 to 55 for the need of an opening for inserting ink and sealing it up afterwards) and document D4 (see column 7, lines 19 to 30; column 8, lines 5 to 13 and 39 to 50 for ink containers with a memory device providing enabling information to the printing system).

2.2.2 The only legal basis appellant II has invoked for its position is the case of a claim for a method of using an apparatus being carried by the inventive step of the corresponding apparatus claim. Appellant II's position concerning the legal basis is flawed, because in the present case where method claim 1 does not refer to the use of an apparatus set out in a separate apparatus claim. Moreover, the board would be required to speculate as to the actual wording (Article 84 EPC 1973, first sentence) of a hypothetical apparatus claim consisting only of apparatus features mentioned in method claim 1 and then, of its own motion, proceed to evaluate the patentability of this speculative apparatus claim. Such scenario is contrary to the principle of party disposition, because the board would effectively be examining (a speculative wording for) an independent apparatus claim which has not as such actually been requested by appellant II. It is also contrary to the principle of impartiality, since the board effectively would have to (specula­tive­ly) take over appellant II's task of devising a wording for the missing apparatus claim, thereby taking over the role of appellant II to the detriment of appellant I. Furthermore, appel­lant II's proposed approach confuses method claims (to be characterised by technical method steps) and apparatus claims (to be characterised by technical apparatus features) into a claim of unclear category in which the method steps are supposedly rendered inventive by apparatus features. Such a claim of unclear category is contrary to the clarity requirement of Article 84 EPC 1973 and thus could not have been granted.

2.2.3 In the present case claim 1 (of all requests) is only cast as a method claim as such and is not cast a method of using an apparatus claimed in an separate apparatus claim. Any apparatus features appearing in such a method claim merely set out a given technical context in which the method steps are to be carried out without themselves contributing as such to the patentability of the claimed method steps. In consequence, appellant II's arguments concerning any potential contribution of any apparatus features mentioned in method claim 1 towards the inventiveness of the method steps of method claim 1 cannot be taken into consideration. A method claim such as claim 1 (all requests) can only be evaluated for patenta­bi­lity on the basis of its technical method steps.

T 2120/10 - Decision according to the state of the file

T 2120/10

For the decision, click here

Key point

• The Board finds that the decision according to the state of the file in this case completely ignores the latest response of the applicant, is not reasoned and hence involves a substantial procedural violation.
• The Board adds that a telephone call with the applicant can not replace the reasoning in the decision required by the EPC.

Summary of Facts and Submissions

I. The appeal lies from the decision of the examining division refusing European patent application number 07 108 535.1.

T 0967/12 - Number of requests and cost order

T 967/12

For the decision, click here

Key point

• Filing 11 auxiliary requests with the Statement of Grounds, and withdrawing them and replacing them with two different auxiliary requests, is as such not a ground ofr apportionment of costs.

Reasons for the Decision
[...]

7. Requests for apportionment of costs

7.1 Under Article 104(1) and Rule 100(1) EPC each party to the opposition/appeal proceedings bears the costs it has incurred, unless it is decided otherwise for reasons of equity.

7.2 In the case at hand, the opposition division revoked the patent because the three sets of claims discussed at the oral proceedings failed to meet the requirements of the EPC, in particular Articles 56 (main and first auxiliary requests) and 123(2) EPC (second auxiliary request).

7.3 With the grounds of appeal, the patentee submitted eleven sets of claims, with the two first sets of claims corresponding to the main and first auxiliary requests underlying the decision of the opposition division.

7.4 In the respondents' view, the number of requests filed with the grounds of appeal was excessive and amounted to an abuse of procedure. This was contrary to the principle of equity and greatly increased their costs, since each new request had to be reviewed and countered.

7.5 The board considers that the filing with the statement of grounds of appeal of a large number of requests is not, as such, either an abuse of procedure nor inequitable; it is merely an attempt to overcome the reasons given by the opposition division for revoking the patent, and the alternatives proposed in the different requests are fallback positions if the board of appeal followed the reasoning of the impugned decision. The conduct of the appellant in withdrawing the eleven contested requests and replacing them with two different auxiliary requests is also not objectionable. This is to be seen merely as a legitimate defence of its case (see decision T 0162/04, point 5. of the reasons).

The board therefore does not see sufficient justification for departing in this case from the principle that each party meets the costs it has incurred.

Order

For these reasons it is decided that:

1. The appeal is dismissed.

2. The requests for apportionment of costs are refused.

T 2522/10 - Switching from novelty-destroying to CPA

EPO T 2522/10

For the decision, click here

Key point

• In this case, after the Board had held the claims to be novel over D20 during oral proceedings, the applicant wished to argue lack of inventive step using D20 as closest prior art, while only D6 and/or D7 were relied on as closest prior art in the written submissions. Is the attack based on D20 to be refused under Art. 13 RPBA?
• The present Board does not admit the new inventive step attack based on D20, noting that it had expressed in its preliminary opinion that D20 did not anticipate the claims. However, also the Board also remarks that D20 has a different purpose and hence does not qualify as closest prior art.

[...]

Amendment to the respondent's case (Article 13 RPBA)

37. During the written part of the appeal proceedings the respondent had submitted that either document D6 or document D7 represented the closest prior art. In the course of the oral proceedings before the board the respondent proposed document D20 as closest prior art. This represented an amendment to the respondent's case. Pursuant to Article 13 RPBA any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the board's discretion.

38. The respondent had justified the amendment of its case at this late stage of the appeal proceedings by saying that it was only in the course of the discussion of document D6 during the oral proceedings that it had understood that the board did not consider document D20 as novelty destroying.

39. However, the board had indicated in its communication sent under Article 15(1) RPBA that is considered, albeit provisionally, that the opposition division had correctly decided that document D20 did not anticipate the claimed subject-matter. Accordingly, the respondent was aware of the board's opinion on document D20 well before the date of the oral proceedings.

40. Document D20 is concerned with the processing of C-terminal lysine and arginine residues of proteins isolated from mammalian cell culture. It discloses that C-terminal Lys residues are often absent in proteins isolated from mammalian cell culture and that incomplete removal of C-terminal Lys residues causes charge heterogeneity. Such charge variants can be resolved by cation-exchange chromatography. RhuMAb HER2, for example, shows five charge species (see Figure 2) in cation-exchange chromatography. The acidic peaks 1 and 2 are deamidated at Asn30 in one light chain, peak 1 has no Lys450 residues, while peak 2 has one Lys450 residue. Although document D20 thus mentions deamidation of rhuMAb HER2, it is concerned with the identification of variants after the production of the antibody in culture and not with its purification. Thus it relates to a different purpose and does not qualify as the closest prior art.

41. The board concluded from the above that the amendment to the respondent's case was not only late but that also document D20 did not in fact qualify as closest prior art. For these reasons the board decided, in the exercise of its discretion pursuant to Article 13 RPBA, not to admit the amendment of the respondent's case in the appeal proceedings.

T 0698/10 - Closest prior art and hindsight

EPO T 698/10 - [C]

For the decision, click here.

Key points

• The applicant fundamentally challenged the hindsight which the problem-solution-approach necessarily involves, heavily citing the Case Law Book. The Board does not relent.
• The decision is a nice example of how the BoA case law is, in practice, formed (or defined) not only by the individual decisions of the Board of Appeal, but also by the Case Law Book itself.
• In case you want to challenge the choice of a particular document as closest prior art, you need to at least provide another document as (closer) prior art.

T 1516/11 - Withdrawal after decision

EPO T 1516/11

For the decision, click here.

Key point

• The Board: " The Appellant's fax with the intended withdrawal of the application was received by the EPO [at 11:20] after the announcement of the Board's decision to dismiss the appeal [at 09:10]. Accordingly, the withdrawal has no effect on the present decision finally refusing the application, which took effect with its announcement." 

Summary of Facts and Submissions

I. The appeal lies from the decision of the Examining Division refusing European patent application No. 07 719 328.2 with the International publication Number WO-A-2007/134419.

[...]

T 0305/12 - Method claim novel by purpose

EPO T 305/12

For the decision, click here. 


Key point

• The Board: "The purpose of a method claim is an inherent technical feature of the claim" 
• As a comment, this specific wording does not seem to be present in the chapter of the Case Law Book cited by the Board. The rule was so far more clearly accepted for second non-medical use claims, not so much for method claims. 

Reasons for the Decision

[...] 20. The purpose of a method claim is an inherent technical feature of the claim (Case Law of the Boards of Appeal, 7th edition, 2013, I.C.6.3.1, p. 154).

The purpose of the methods disclosed in documents D16 and D17 was to establish whether Iloprost has an inhibitory effect on embryo development which is different from the purpose of claim 1.

21. None of the prior art documents on file discloses a method of enhancing in vitro development of a mouse embryo comprising the addition of Iloprost during the morula to early blastocyst stage in order to promote complete hatching.

Claims 1 to 5 of the sixth auxiliary request are therefore novel and meet the requirements of Article 54 EPC.
[...]

T 1959/11 - Filing broader claims in appeal does not work

EPO T 1959/11

For the decision, click here

Key points

• The applicant filed in appeal broad claims than before the Examining Division.
• The Board holds: "Appeal proceedings are intended to review the correctness of the decision of the first instance rather than to continue examination by other means. Thus, pursuant to Article 12(4) RPBA, it is at the discretion of the boards of appeal to admit requests which could have been presented in the proceedings before the department of first instance - or which were submitted but then withdrawn, as in the present case." 
• As a comment, the Board particularly did not seem to appreciate reintroducing in examination appeal requests which were broader than the requests subject of the appealed decision. 
• Withdrawing requests before the Examining Division effectively closes the possibility to present them in appeal, even with the statement of grounds.

Reasons for the Decision

3. Admissibility of requests

3.1 Appeal proceedings are intended to review the correctness of the decision of the first instance rather than to continue examination by other means. Thus, pursuant to Article 12(4) RPBA, it is at the discretion of the boards of appeal to admit requests which could have been presented in the proceedings before the department of first instance - or which were submitted but then withdrawn, as in the present case. When exercising their discretion, the boards take into account the circumstances of the particular case.

3.2 With the statement of the grounds of appeal, the appellant filed a main request and three auxiliary requests. None of these requests is identical to the sole request which was the subject of the contested decision. Instead, these requests correspond to the requests submitted with letter of 17 December 2010, as indicated by the appellant, but subsequently withdrawn and replaced by a sole "amended main request" (see the minutes of the oral proceedings, page 1, second and eighth paragraphs). By taking this course of action the appellant (then applicant), de facto prevented the examining division from reaching a decision on these requests.

[...]

3.4 The board notes that claim 1 of the main request encompasses sequences with at least 85% identity to SEQ ID No:7, while the claim 1 which was the subject of the appealed decision required 100% identity. Claim 1 of the present main request is thus broader than claim 1 decided upon by the examining division: such an amendment cannot therefore be considered a legitimate attempt to overcome the appealed decision. Moreover, the main request comprises claims 4 and 5 which were not part of the request decided upon by the examining division; as is apparent from the examination file, the examining division had raised objections under Articles 54 and 56 EPC against these claims (see the minutes of a telephone conversation sent 21 January 2011). Reinstating this request at appeal would thus compel the board to give a first ruling on critical issues, which is contrary to the purpose of appeal proceedings.

3.5 The board thus makes use of its discretion under Article 12(4) RPBA not to admit the main request into the proceedings. Since claim 1 of the first and second auxiliary requests is identical to claim 1 of the main request, these requests are also not admitted into the proceedings.

T 0998/14 - Unsearched subject-matter

EPO T 998/14 

For the decision, click here 

Key points

• Rule 137(4) [2010] aims at preventing a switch to unsearched, not originally claimed parts of the invention. This does not prevent amending the claims by adding the features of an (independent) claim which was not searched. 
• Rule 164(2) [2014] does not stand in the way of restricting a claim by adding features of a non-searched claim. 

Quote

[2.1] [...] Folglich soll der zweite Halbsatz der Regel 164 (2) EPÜ EPÜ, Fassung vor dem 1. November 2014, insbesondere verhindern, dass während des Erteilungsverfahrens einer Euro-PCT-Anmeldung von einer recherchierten Erfindung auf eine ursprünglich beanspruchte, aber wegen Nicht-Zahlung der zusätzlichen Recherchengebühr nicht recherchierte Erfindung gewechselt wird.

Full decision in read more

•  including an extensive analysis of new Rule 164 and the context of Rule 137(4).

T 1846/10 - Non-working examples and A83

T 1846/10

Publication date 03.07.2015 - [C] - for the decision, click here. 

Key point

• For insufficiency of disclosure, the burden of proof lies with the opponent, requiring serious doubts substantiated by verifiable facts. This does not mean that the opponent must file experimental evidence. If one of the examples shows that the invention does not work, this can be sufficient to discharge the opponent of the burden of proof and to shift it to the patentee.
• This should similarly apply to lack of technical effect for A56.
• In this case, the method step of attenuating the live vaccine was insufficiently disclosed. Restricting the claim in an auxiliary request to methods using the deposited attenuated live vaccine overcame this objection.  The claims of the auxiliary requests were also considered to involve an inventive step - in effect based precisely on the insufficiently disclosed attenuating step.

Reasons for the Decision

[...] 27. The board concludes from the above (see points 8 to 26), that example 5 of the patent represents evidence that the skilled person, by following the guidance of the patent, would fail to obtain an attenuated strain of L. intracellularis suitable for the preparation of a live vaccine.

28. The respondent submitted that for an objections of lack of sufficiency of disclosure to succeed there must be serious doubts, substantiated by verifiable facts, that the invention can in fact be carried out by the average person skilled in the art without undue experimentation or inventive skills (see decision T 19/90, reasons, point 3.3). Since the burden of proof lies with the appellant (the opponent), it was necessary to provide experimental evidence that the invention could not be carried. This had not been done.

29. In the board's judgement, verifiable facts are
(i) that example 5 of the patent was carried out in line with the general teaching of the patent,
(ii) that the percentage of animals which developed enteritis in example 5 was the same between the group vaccinated with the culture of a high passage strain of L. intracellularis and the non-vaccinated group, and
 (iii) that the histological lesions were worse in the vaccinated group (the evidence supporting this fact being in paragraph [0103] and the table on page 17 of the patent).

Therefore, the board concludes that example 5 of the patent provides verifiable facts which raise serious doubts that the invention can in fact be carried out by the average person skilled in the art without undue experimentation or inventive skills by following the guidance provided in the patent. Under these circumstances, no additional experimental evidence from the appellant is required as it can rely on the evidence provided by the patent itself. The board concludes that the appellant has discharged its burden of proof.

T 1360/11 - Restricting components and extending scope

T 1360/11

Publication date 06.07.2015 - [B] - for the decision, click here


EPO Headnote

Where a granted claim directed to a composition defined in an open manner and including the presence of a component belonging to a class or list of compounds in a quantity defined by a range is later amended by limiting the definition of the class or list of compounds, a possible infringement of the requirements of Article 123(3) EPC may be avoided by including in the amended claim a quantitative condition on the limited class or list of compounds and an additional constraint on the total amount of compounds belonging to the broader class or list (point 3.11).

Key points

• If the claim as granted defines a composition comprising 1 - 10 wt.% of component X, and X is a group comprising A, B and C, then restricting X  to A contravenes Art. 123(3) because the claims would no longer limit the amount of B and C. For instance, when restricting from 1-10 wt.% alcohol to 1-10 wt.%, ethanol, the scope of the claim is broadened because suddenly also embodiments with 11 wt.% methanol would be covered. 
• The Board finds that in this case a double limitation is necessary, one for the amount of X and another for the amount of A. 
• The present Board suggest as appropriate wording in such case: "wherein the composition comprises 1 - 10 wt.% A, and the total amount of X is comprised in the range 1-10 wt.%" . 

Quote

[3.1] In such a case, in spite of the apparent limitation due to the explicit or implicit deletion of some members of the class or list of compounds, the wording of the granted and amended claims may be such that the deleted compounds are required to be present in an amount within a defined range according to the granted claim, while they may still be present, but with no limitation in quantity, according to the amended claim, therefore resulting in an extension of the protection conferred contrary to the requirements of Article 123(3) EPC. This gives rise to a situation in which a way out for the patentee is anything but easy.

Full decision after the jump
• including comments on T 0287/11 and T 0172/07

T 1278/12 - Second use not medical

EPO T 1278/12

For the decision, click here

Key point

• Claim 1 is not a medical use claim :" Use of [a composition] for the manufacture of a composition for enteral administration to an infant delivered via caesarean section". Board: "An enteral administration to an infant delivered via caesarean section only specifies the mode of delivery to the patient, but does not relate to any therapeutic effect obtained thereby. Therefore, the format of claim 1 is not the one prescribed by G 5/83 for further medical use claims."
• Adding as feature " to the increase of the biodiversity of microorganisms in the intestinal flora of infants born via caesarean section" renders the claim a valid second medical use claim.

Reasons for the Decision

3. Novelty

3.1 Claim 1 refers to the use of at least one microorganism and at least one indigestible oligosaccharide for the manufacture of a composition for enteral administration to an infant delivered via caesarean section, wherein the composition contains at least one species of Bifidobacteria selected from the group consisting of B. breve, B. infantis, B. bifidum, B. catenulatum, B. adolescentis and B. longum, and wherein the composition comprises an indigestible oligosaccharide selected from the group consisting of transgalactooligosaccharides, indigestible dextrins, xylooligosaccharides, arabinooligosaccharides, glucooligosaccharides, mannooligo-saccharides, isomalto-oligosaccharide and fructopolysaccharides.

3.2 As not disputed by the appellant, a composition containing the components required by claim 1 is disclosed in each of D6, D26 and D36. More specifically,

- example 3 of D6 discloses the use of B. longum (corresponding to the Bifidobacteria of claim 1) and fructooligosaccharides ("FOS") (corresponding to the indigestible oligosaccharide of claim 1) for the manufacture of a starter formula for infants;

- example 4 of D26 discloses the use of B. breve (corresponding to the Bifidobacteria of claim 1) and galactooligosaccharides and polyfructose (corresponding to the indigestible oligosaccharide of claim 1) to prepare an infant formula; and

- example 1 (the only example) of D36 discloses the use of B. breve (corresponding to the Bifidobacteria of claim 1) and transgalactooligosaccharide (corresponding to the indigestible oligosaccharide of claim 1) to prepare an infant nutrition.

Since the compositions disclosed in the above examples of D6, D26 and D36 are infant formulae, they must be suitable for enteral administration to infants delivered via caesarean section.

3.3 However, the appellant argued that claim 1 constituted a further medical use claim (also denoted as "Swiss type claim"), where the reference to the patient group of caesarean section infants implicitly indicated a therapeutic effect. Since the use of the claimed composition for this patient group was not disclosed in any of D6, D26 or D36, the implicit therapeutic effect rendered the subject-matter of claim 1 novel over these documents.

It has thus to be decided whether the reference to "an infant delivered via caesarean section" qualifies claim 1 as a further medical use claim.

3.3.1 According to G 5/83, a further medical use claim is a claim directed to the use of a substance or composition for the manufacture of a medicament for a specified therapeutic application (headnote II and points 19 to 21). Such a claim is novel according to G 5/83 if the therapeutic application, i.e. the therapeutic effect obtained by the claimed use, is novel.

3.3.2 In the present case, claim 1 relates to the use of a composition for enteral administration to an infant delivered via caesarean section. An enteral administration to an infant delivered via caesarean section only specifies the mode of delivery to the patient, but does not relate to any therapeutic effect obtained thereby. Therefore, the format of claim 1 is not the one prescribed by G 5/83 for further medical use claims.

3.3.3 While this was not disputed by the appellant, it argued that according to T 1020/03, the therapeutic effect did not need to be specified in a claim to qualify it as a further medical use claim.

3.3.4 The Board does not share the appellant's view.

Firstly, T 1020/03 refers to a case where the relevant claims (claim 1 and 13) read as follows:

"1. Use of insulin-like growth factor-I (IGF-I) in the preparation of a medicament for administering to a mammal so as to sustain its biological response in the treatment of a chronic disorder in the mammal wherein ..." (emphasis added by the board);

"13. Use of insulin-like growth factor-I (IGF-I) in the preparation of a medicament for treating chronic renal failure in a mammal wherein ..." (emphasis added by the board).

Consequently, the claims underlying the case in T 1020/03 specify therapeutic effects, namely the sustainment of a biological response in the treatment of a chronic disorder in a mammal (claim 1) and the treatment of chronic renal failure in a mammal (claim 13). The case underlying T 1020/03 thus is not comparable to the present one where no therapeutic effect at all is specified in claim 1.

Secondly, contrary to the appellant's assertion, the board in T 1020/03 did not hold that no therapeutic effect is needed in a claim to qualify it as a second medical use claim. More specifically:

- In point 7 of that decision, the board held that a claim to the preparation of a composition for a further medical use was allowable, irrespective of the detail in which that use was specified, subject to the use being novel and inventive.

The Board then went on to discuss three specific cases, in all of which the claims specified a therapeutic effect.

- In subsequent passages of T 1020/03, the Board referred numerous times to the claim format approved by G 5/83. For instance, in point 12, the board stated that "it considers that a claim formulated in the way approved by the Enlarged Board of Appeal in decision G 0005/83 prima facie cannot be considered as producing any results contravening Article 52(4) EPC [1973], ...". The way approved by the Enlarged Board of Appeal in G 5/83 can only be the one defined in headnote II of this decision, namely of the use of a substance or composition for the manufacture of a medicament for a specified new and inventive therapeutic application.

- In point 18, the board held that claims "which take the form of the use of a composition for the preparation of a medicament for a specified therapeutic use, will thereby avoid being in conflict with Article 52(4) EPC [1973], irrespective of the degree of detail with which the therapeutic use is stated" (emphasis and insertion in square brackets added by the present board).

Consequently, there can be no doubt that the claims which the board in T 1020/03 had in mind and on which its decision was based were claims in which the therapeutic use was specified to some extent. In fact, the board even explicitly stated in point 34 of its decision that in a further use claim "... the further medical indication must be specified in the claim with some degree of specificity" (emphasis added by the board).

3.3.5 Since claim 1 of the main request does not specify any therapeutic effect at all, it represents a non-medical use claim. Therefore the wording "for enteral administration to an infant delivered via caesarean section" limits claim 1 only in so far as the composition has to be suitable for the enteral administration to caesarean section infants. Since this suitability is given in the above examples of D6, D26 and D36 (see point 3.2 above), these are novelty-destroying for the subject-matter of claim 1.

[...]

Auxiliary request 1

8. Novelty

Unlike the claims of the main request, all independent claims of auxiliary request 1 refer with some degree of specificity to a therapeutic effect, namely to the increase of the biodiversity of microorganisms in the intestinal flora of infants born via caesarean section. Hence these claims constitute second medical use claims, so that the novelty objection made with regard to the main request no longer applies, and novelty over the cited prior art is to be acknowledged. Indeed, the respondents did not raise any novelty objection.

Rule 134(5) by analogy for bank closure

EPO Notice of the President of the European Patent Office dated 3 July 2015
concerning problems caused by the closure of banks in Greece beginning on 28 June 2015

Notice 20150703a

Comment

This decision settles the question as to whether R 134(5) EPC applies to payments as well. The answer is - apparently - that the provision is applicable by analogy (hence not directly). 

Note that Rfees 7(3)(a)(ii) could possibly also be used in case the applicant " duly gave an order to a banking establishment to transfer the amount of the payment", depending on whether " duly"  requires the bank establishment to be open, or not.


Text of the notice
1. In view of the problems caused by the closure of banks in Greece and the ban on cross-border payments[1], attention is drawn to the general legal remedies provided for under the European Patent Convention and under the Patent Cooperation Treaty in case of non-observance of time limits for making payments and, in particular, to the possible application of Rule 134(5) EPC and Rule 82quater.1 PCT.

2. Rule 134(5) EPC offers a safeguard in the case of non-observance of a time limit as a result of a dislocation in the delivery or transmission of mail caused by an exceptional occurrence affecting the locality where an applicant, a party or their representative resides or has his place of business. This provision applies by analogy to cases where the failure to observe time limits for making payments is the result of exceptional circumstances beyond the applicant's control.

3. Pursuant to Rule 134(5) EPC, any payment received late will be deemed to have been received in due time if the person concerned offers evidence that:

(1) on any of the ten days preceding the day of expiry of a period, it was not possible to effect cross-border payments due to this exceptional occurrence, and that

(2) payment was ordered within five days after banks resumed business, including the processing of cross-border payment orders. [...] [Provisions for international applications omitted].

T 0979/12 - Appeal in name of only one of joint parties

EPO T 0979/12

Click here for the decision

Key point

• An appeal filed by common representative of joint opponents in the name of only one opponent is admissible, because that the true intention of the common representative was to file the appeal in the name of the same party that he acted for during opposition proceedings, i.e. the joint opponents (G 1/12). 

Reasons for the Decision

Admissibility of Opponent 03's appeal

1. A notice of appeal in Dutch against the decision of the Opposition Division was filed with letter of 19 April 2012 by C. Boerma, expressly on behalf of the opponent, Unilever N.V.. The Appellant attached to the notice of appeal a voucher to debit its deposit account with the amount due as appeal fee and filed with letter of the same day a translation into English of the notice of appeal.

It is in this respect undisputed that in opposition proceedings Unilever N.V. and Unilever PLC acted as joint opponents (Opponent 03) and were represented by the same common representative [mr. X].

1.1 According to the reasons of the decisions of the Enlarged Board G 0003/99 (OJ 2002, 347) and R 0018/09, an opposition filed by several persons in common is to be dealt with as an opposition filed by only one party and such a group of common opponents is to be considered as a single party represented by a common representative (see G 0003/99, points 14 and 15 of the reasons) and, should such a group of common opponents file an appeal, they can only do so jointly as a single party acting through their common representative (see G 0003/99, point 17 and R 0018/09, reasons, point 5).

1.2 The Board remarks that according to the ruling of G 0001/12 (points 28 and 29 of the reasons), which fully endorses the decision T 0097/98 (OJ 2002, 183), the true intention of the appellant must be established "on the basis of the information in the appeal or otherwise on file, i.e. ascertain who must be deemed in all likelihood to have filed the appeal...".

As decided in T 0097/98 (point 1.5 of the reasons) "[i]t can also be presumed that it is the intention of the representative to act in such a way as to ensure that the appeal is admissible in order for it to be dealt with in substance; see in this respect e.g. decision T 920/97 dated 19 December 2000, point 1 of the reasons, where it is stated that in the absence of any clear indication to the contrary a professional representative who was authorised to act for a party adversely affected by a decision and then filed an appeal against this decision must be presumed to be acting on behalf of the same party that he acted for in the first instance proceedings...".

Therefore, even though the notice of appeal of 19 April 2012 mentioned only Unilever N.V. as appellant, there is no doubt, in the Board's view, that the true intention of the common representative was to file the appeal in the name of the same party that he acted for during opposition proceedings, i.e. the joint opponents Unilever N.V. and Unilever PLC.

1.3 In this respect it must also be noted that according to G 0003/99 (point 3 of the order) "[i]n order to safeguard the rights of the patent proprietor and in the interests of procedural efficiency, it has to be clear throughout the procedure who belongs to the group of common opponents or common appellants. If either a common opponent or appellant (including the common representative) intends to withdraw from the proceedings, the EPO shall be notified accordingly by the common representative or by a new common representative determined under Rule 100(1) EPC in order for the withdrawal to take effect."

In the present case the EPO has not received any notification by the common representative of Unilever N.V. and Unilever PLC that Unilever PLC intended to withdraw from the proceedings.

Therefore, both parties, acting through the common representative, are for the EPO still joint opponents and now appellants.

Hence, the Board cannot follow the Respondent's argument that it would not be clear which party is the appellant in the present case and that the appeal thus would not comply with the requirements of Rule 99(1)(a) EPC.

1.4 As regards the Respondent's argument that the appeal had been filed deliberately in the name of Unilever N.V. in order to ensure legal certainty to the request for fee reduction according to Rule 6(3) EPC and that therefore it was the representative's true intention not to file the appeal also in the name of the co-opponent Unilever PLC, the Board remarks that

- the issue of the entitlement to the reduction of the appeal fee according to Rule 6(3) and Article 14(4) EPC is irrelevant for deciding on the admissibility of the appeal since the Appellant correctly paid the appeal fee in full by attaching a voucher to the letter of appeal and, as an additional step, requested the partial refund of the fee;

- moreover, the representative's true intention in filing the appeal has to be established on the basis of the criteria indicated in point 1.2 above, which, taking the reasoning given supra into account, leads without doubt to the conclusion that the representative's true intention was to file the appeal in the name of the joint opponents Unilever N.V. and Unilever PLC.

Therefore, in the Board's view, there is no doubt that in the present case Unilever N.V. and Unilever PLC are joint appellants.

1.5 The Board thus concludes that Opponent 03's appeal complies with the requirements of Rule 99(1)(a) EPC and is admissible.

T 0842/12 - Abandoning and reintroducing grounds for opposition

EPO T 842/12

For the decision, click here

Key point

• Not making further oral submissions on a ground for opposition can be tricky, if in the minutes this is described as abandoning the objection.

2. Main request - Article 100(b) EPC

2.1 In its reply to the statement of grounds of appeal, the respondent raised an objection under Article 100(b) EPC, arguing that the feature of claim 1 that "the bypass conduit ... (is) provided between the pump and the longitudinal drilling fluid passage" is not described in the patent in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

2.2 This issue also concerned claim 1 as granted.

2.3 Consideration of the objection in the appeal proceedings

The ground for opposition under Article 100(b) EPC had been raised and substantiated in the opposition notice. In the communication pursuant to Article 15(1) RPBA, the Board pointed to the fact that the minutes of the oral proceedings before the Opposition Division indicate that the respondent had abandoned all its objections under Article 100(b) EPC (see the minutes, page 2, paragraph 4, page 5, paragraph 2, page 7, paragraph 8 and page 8, paragraph 1).

In response, the respondent contested for the first time the correctness of the minutes and the interpretation by the Opposition Division of its declarations. The respondent submitted that, during the oral proceedings, it never renounced its challenge to the patent on the ground of Article 100(b) EPC. Rather, the respondent did not wish to make further oral submissions during the oral proceedings before the Opposition Division on this issue.

If the respondent was of the view that the minutes did not correspond to what has happened during the oral proceedings before the Opposition Division, a request for correction of the minutes should have been duly filed. In the absence of such a request and a subsequent decision of the Opposition Division to correct its minutes, the Board has to assume that they accurately reflect the course of the oral proceedings.

However, the Board takes the view that the withdrawal of a ground for opposition has to be explicit, unambiguous. In the present case, the Board agrees with the respondent that it cannot be inferred with certainty from the minutes that it did withdraw its ground for opposition under Article 100(b) EPC. Moreover, as acknowledged by the appellant, the re-introduction of the above objection under Article 100(b) EPC in the appeal proceedings does not give rise to any new or complex issue. The Board has also no reason to assume an abuse of procedure by the respondent.

Thus, the Board decided to take the respondent's objection under Article 100(b) EPC into consideration, under Article 114(2) EPC and Article 12(4) RPBA.

2.4 Merit of the objection

A skilled reader of claim 1 using common general knowledge would recognise at once that the bypass conduit, which "bypasses the longitudinal fluid passage", cannot at the same time be "provided between the pump and the longitudinal drilling fluid passage". From the wording of method claim 5 (see the before last method step), as well as the teaching in the description and drawings of the patent specification (see bypass conduit 7 in paragraph [0020] and Figures 1 to 3), it is clear that the disputed wording in claim 1 "that the bypass conduit and the three way valve are provided between the pump and the longitudinal drilling fluid passage" should read "that [deleted: the bypass conduit and] the three way valve are provided between the pump and the longitudinal drilling fluid passage".

The patent comprises a detailed description of a number of ways to carrying out the invention (see Figures 1 to 3), such that a skilled person would be able to perform the invention. Hence, the disclosure of the patent is sufficiently clear and complete within the meaning of Article 100(b) EPC.

T 1918/10 - Non-authorized representative

EPO T 1918/10

For the decision, click here 

Key point

• A sub-authorization to act during oral proceedings does not authorize to submit final written submissions. Which are deemed not filed in this case.
• Lots more of interesting aspects in the full decision.

Reasons for the Decision

1. The appeal is admissible.

2. Letters of the opponent dated 14 August 2014, 18 September 2014 and 24 September 2014

2.1 The validity of the opponent's representation was objected to by the patent proprietor, which raised doubts as to the extent of the representatives' entitlement to act. Therefore, the Board is empowered to deal with that issue (Spec. Ed. 3 OJ EPO 2007, L.1, Art. 1(3)).

2.2 The opposition in the name of the opponent was filed by Mr. [S] who is a registered European patent attorney of the law firm [X] Patentanwaltskanzlei which firm changed its name during the course of te proceedings to [Y] Patentanwälte.

According to the sub-authorisations dated 26 August 2014, Mr. [P] and Mr. [C], both registered European patent attorney of the law firm [F], were authorised by Mr. [S] to act for the opponent during the oral proceedings of 14 October 2014 (Board's emphasis). In that regard, the wording of the sub-authorisation leaves no doubt and can only be understood as being restricted to acting at the oral proceedings.

There is no evidence on file that Mr. [P] or Mr. [C] were authorised to perform any procedural act in the name of the opponent apart from representing them at the oral proceedings before the Board. The authorisations filed during the first oral proceedings before the Board are both post-dated (7 October 2014) and cannot serve to demonstrate that Mr. [P] and Mr. [C] were authorised to represent the opponent before that date.

Therefore, each of the letters dated 14 August 2014, 18 September 2014 and 24 September 2014 filed by Mr. [P] and Mr. [C] are deemed not have been filed (Rule 152(6) EPC).