T 0621/11 - A or the, an inescapable trap

EPO T 621/11

For the decision, click here

Key points

• The invention relates to a medicament for treating or preventing a metastasis of a tumor.The patent is stuck in the inescapable trap (Art 123(2)/(3)) by changing "the step of inoculating a tumor in the patient" in the application as filed into " suitable for inoculating the tumor in a patient", because " the"  tumor is the primary tumor (according to the Board), and inoculating this specific tumor is not disclosed in the application as filed. Reverting back to " a tumor" extends the scope of protection. 
• The Article 123(3) objections was admitted, even though late filed,  "given the nature of the objection".

Summary of Facts and Submissions

I. European patent No. EP1003533, based on European patent application No. 98939886.2, published as WO 99/07394 (hereafter referred to as "the application as filed") and entitled "Use of herpes vectors for tumor therapy", was granted with 17 claims.

National decision - Partial priority

Patents Court of 10 July 2013 – HTC Corporation v Gemalto SA and HTC Corporation v Gemalto NV [2013] EWHC 1876 (Pat) (BAILII) 

Key point

• In this UK decision, a question was whether the claims had priority in view of the requirement of "same invention", because the claims were a generalization from the priority document. 
• This decision is also discussed in recent decision T 557/13 referring the questions about partial priority to the Enlarged Board in G1/15:

15.2.2 In HTC Corporation v Gemalto SA and HTC Corporation v Gemalto NV [2013] EWHC 1876 (Pat) of 10 July 2013, concerning European Patent (UK) 0 932 865, the judge noted with reference to G 2/98 (Reasons, 6.7), that "although one can sympathise with the desire for a limited number", it was questionable whether there was "any principled basis for such a requirement". The "need for clearly defined alternative subject-matters" was expressly accepted "if a single claim is to be given partial or multiple priorities" (paragraph 160).
In effect (paragraph 195), claim 1 comprising features defined with respect to a "high level language", was not found to be (even partially) entitled to priority, since "Java" was the only programming language disclosed in the priority document. However, claim 3, dependent on claim 1 and limited by reference to "Java", was found to enjoy priority.

This post has been kept in stock for some time. 

Summary
OJ 2015, Sp. 2. 

Keyword: priority – same invention – multiple priorities

HTC had challenged the priority claimed for Gemalto SA's European patent (UK) 0 932 865 ("Using a High Level Programming Language with a Microcontroller").

T 1890/09 - Poisonous priority strikes again

T 1890/09

For the decision, click here (online on 23.07.2015)

Key points

• The Board finds a claim to be not novel over an embodiment disclosed in the published priority document.
• The Board 3.2.02 does not at all discus partial priority, although the decision was taken on 26.03.2015, while Board 3.3.06 had announced months earlier in oral proceedings to refer questions to the Enlarged Board about that issue. 
• Credits to EdT for spotting this one (IPKat).

Sachverhalt und Anträge

I. Mit der am 10. Juli 2009 zur Post gegebenen Entscheidung hat die Einspruchsabteilung das Patent

Nr. 1 348 394 in veränderter Form auf der Basis des damaligen Hilfsantrags I aufrechterhalten. In dem Patent wird die Priorität der früheren Anmeldung Nr. 02007218 (veröffentlicht als EP-A-1 348 393 und im Folgenden als Prioritätsdokument bezeichnet) mit Anmeldetag vom 27. März 2002 in Anspruch genommen.

II. Die Beschwerdeführerin (Einsprechende) legte hiergegen am 21. September 2009 Beschwerde ein und entrichtete am selben Tag die Beschwerdegebühr. Die Beschwerdebegründung wurde am 19. November 2009 eingereicht.

[...]

Entscheidungsgründe

1. Die Beschwerde ist zulässig.

2. Hauptantrag

[...]

2.2 Priorität

In Anspruch 1 ist definiert, dass "das [dreidimensionale generische] Modell durch eine Datenverknüpfung auf zweidimensionaler Ebene mit patientencharakteristischen, zweidimensionalen Erfassungsdaten angepasst wird".

Im Prioritätsdokument ist dieses Merkmal nicht wörtlich offenbart. 

Als Basis gibt die Beschwerdegegnerin Anspruch 8 und den (gleichlautenden) Absatz [0022] an. 

T 1882/12 - Optional claim features

T 1882/12

For the decision, click here (online on 09.07.2015). Also discussed here.

Key points

• The Board finds that a claim can recite optional features, in particular preferred ranges. This can not be objected to under Rule 43(3) or (4) and is, within limits, acceptable under Art. 84.
• The obvious advantage is that the clarity of such preferred features can (likely) not be objected to in opposition, based on G3/14.

2. Anforderungen von Artikel 84 EPÜ

2.1 In den Ansprüchen 2 und 4 bis 9 des Hauptantrags werden als fakultative Merkmale nach den Ausdrücken "vorzugsweise", "besonders bevorzugt" und "insbeson­dere" bevorzugte Bereiche (im Hinblick auf Gew.-%, Teilchengröße) oder bevorzugt auszuwählende Komponenten angegeben, die einen gegenüber dem zuerst aufgeführten obligatorischen Merkmal (breitester Bereich oder Klasse von Komponenten) eingeschränkten Umfang aufweisen. Anspruch 3 enthält diese Konstruktion nicht selbst, ist aber rückbezogen auf Anspruch 2.

T 2552/11 - Accompanying person

T 2552/11

For the decision, click here ("online on"  date 23.07.2015

Key points

• The request for allowing an accompanying person to speak should specify the subject-matter on which the person will speak. The present Board applies this requirement strictly.

Reasons for the Decision

1. The appeal is admissible.

2. Oral submissions by the accompanying person

2.1 The appellant announced in its letter dated 18 March 2015 that "Dr. Christoph Jeworrek will give a statement in court as an expert for chemistry. He will refer to the prior art documents cited by the opponent".

The appellant did not provide any evidence indicating that Mr. Jeworrek met the requirements of Article 133 EPC to represent the appellant, nor could his name be found in the list of professional representatives before the EPO.

During the oral proceedings of 14 April 2015 the respondent requested that Mr. Jeworrek not be heard. It emphasised that the appellant had not specified on what subject Mr. Jeworrek was supposed to speak.

2.2 According to decision G 04/95 (OJ EPO 1996, 412), oral submissions by an accompanying person are not a matter of right, but are subject to the permission and discretion of the EPO (see point (3)(a) of the order).

The criteria to be considered by the EPO when exercising this discretion are specified in this decision as follows (see point (3) of the order):

"(i) The professional representative should request permission for such oral submissions to be made. The request should state the name and qualifications of the accompanying person, and should specify the subject-matter of the proposed oral submissions.

(ii) The request should be made sufficiently in advance of the oral proceedings so that all opposing parties are able properly to prepare themselves in relation to the proposed oral submissions.

(iii) ... ."

The statement that Mr. Jeworrek would "refer to the prior art documents cited by the opponent" is very general.

Therefore, the information provided by the appellant about the subject-matter of Mr. Jeworrek's proposed oral submissions was not sufficient to enable the respondent to prepare itself properly.

For these reasons, the board exercised the discretion referred to in G 04/95 by not permitting oral submissions from Mr. Jeworrek.

T 2403/11 - Contradicting yourself

EPO T 2403/11

For the decision, click here. (Published already on 23.07.2014)

Key points

• This decision was published 23.07.2014 and is discussed in OJ 2014, SE4. 
• According to the EPO headnote, "An ill-defined parameter in a claim may lead to insufficiency of disclosure if this parameter is relevant for solving the problem addressed in the patent. If, in such a situation, the patent specification states that the ill-defined parameter is relevant and the patent proprietor initially argued along those lines, then, normally it cannot argue, later on in the proceedings, that this parameter does not matter."
• However, the actual wording of the Board is not restricted to parameters - "The proprietor is not free to choose a particular approach when drafting the patent and when arguing its case, and then to change it later on when it realises that this approach might fail."
• This statement may also be useful in case the patent proprietor initially argues that a technical effect is obtained by a broad claim 1 and later restricts the claim.  

Reasons for the Decision

[...]

2.6.2 The board does not find this argument acceptable. The proprietor is not free to choose a particular approach when drafting the patent and when arguing its case, and then to change it later on when it realises that this approach might fail. So if the proprietor (and in the present case appellant) chooses to include a statement when drafting the patent that, in order to solve the problem underlying the patent, the coating composition must have a certain viscosity, then normally it cannot argue, later on in the proceedings, that in fact the viscosity does not matter.

T 1930/12 - No video conference BoA

EPO T 1930/12

For the decision, click here  (online on date: 06.07.2015)

Keypoints

• In this examination appeal, the BoA refuses a request for oral proceedings via video-conferencing, because (i) the RPBA provide no rules for video-conferencing, and (ii) it was not clear how it can be ensured that the oral proceedings are public in such case.
• GL E-II, 11.1.1. states that " Oral proceedings by video-conference are permitted only in the case of ex parte proceedings before an Examining Division. "
• The second ground may possibly be caused by a lack of video conference equipment in the public part of the Isar Building, while the video conference rooms used by the Examining Division are likely not publicly accessible.

Summary of Facts and Submissions

I. The appeal is against the decision of the examining division to refuse the present European patent application on the grounds of lack of inventive step (Article 56 EPC) [...]

Reasons for the Decision

1. The appeal is admissible.

2. Request for oral proceedings via video-conference

In its letter of 27 March 2015, the appellant requested that the oral proceedings before the board be held as a video-conference (point IV above). The board refused this request for the following reasons:

2.1 On the one hand, video-conferences before an examining division are subject to the rules set out in the "Updated information from the EPO dated 1 May 2012 concerning interviews and oral proceedings to be held as a video-conference" (OJ EPO 2012, 354, replacing the earlier version published in OJ EPO 2006, 585). There are presently no corresponding provisions for the Boards of Appeal. In particular, there are no provisions concerning video-conferences in the Rules of Procedure of the Boards of Appeal (RPBA).

2.2 On the other hand, oral proceedings held before the examining division are, in accordance with Article 116(3) EPC, not public, whereas those before the Boards of Appeal are public pursuant to Article 116(4) EPC. In any future arrangements concerning video-conferences in appeal proceedings, it would be necessary to ensure that the use of video-conferencing is reconciled with the requirement that second-instance oral proceedings are public.

2.3 As those two issues have not yet been clarified, the board was not in a position to allow the appellant's request (see T 1266/07, point 1).

T 2247/11 - Selection from two lists

EPO T 2247/11

For the decision, click here.

Key points

• The issue involves a whether a claim directed to (essentially) feature B + one or more of A, C, and D (each being lists) has basis in a claim specifying one or more of A, B, C and D. Hence, does the application provide basis for singling out B?
• The Board looks what is actually aimed for with the method of the present invention, and notes that the examples only demonstrate B + (particular types of) A. Hence, claim 1 has no basis since it also covers B+C and B+D. The auxiliary request for B+A in contrast has basis. 
• The present case is a good example how the assessment of Art. 123(2) can be not overly formalistic but can be based on the actual technical teaching of the patent. 

Reasons for the Decision

1. The appeal is admissible.

2. The invention concerns a dual-energy X-ray absorptiometry method and device for obtaining, firstly, a three-dimensional representation of the bone mineral density (BMD) of the osseous body (page 1, lines 10 to 28; page 2, lines 5 to 12), and for determining, in addition, the value of a "composite index" using the digitised radiological data and a three-dimensional model of the examined bone (page 2, lines 19 to 31). This composite index allows the evaluation of fracture risks (page 2, lines 2 to 5 and 34 to 38).

T 0343/12 - Not the library

EPO T 343/12

For the decision, click here

Key point

• The issue was the public availability of a dissertation which had been received by a library. 
• The Board rejects public availability based on the receipt by the library, because no evidence of cataloging was submitted (and this would be required according to T 314/99).
• However, the single copy possessed by the thesis supervisor would be a disclosure, because the opponent would not have refuted that this copy was at the free disposal of the thesis supervisor.
• In my opinion, regarding the library issue, the approach followed in T 834/09 is more convincing: "this means that a printed document received by mail at a public library is clearly rendered available to the public, since the staff member in charge of its reception and date stamping is not bound by any obligation to maintain secrecy and is thus free to pass the document on to others, which is precisely his or her job." 

Sachverhalt und Anträge

VIII. Argumente der Parteien

a) Öffentliche Zugänglichkeit der E2

Nach Auffassung der Beschwerdeführerin reicht allein die einfache und bedingungsfreie Übergabe eines Exemplars der E2 an Herrn Odenthal, um die öffentliche Zugänglichkeit dieser zu belegen.

Herr Odenthal sei nie durch eine Vertraulichkeitsvereinbarung verpflichtet und auch, wenn eine überhaupt entstanden haben sollte, sei diese jedenfalls spätestens mit der mündlichen Verhandlung in Juli 2003 nicht mehr bindend.

Nach Meinung der Beschwerdegegnerin sei Herr Odenthal kein Mitglied der Öffentlichkeit. Die Betreuung eines Dissertationsvorhaben impliziere eine Vertraulichkeitsvereinbarung zwischen dem Betreuer und dem Doktoranden. Ferner handele es sich bei der Übergabe gerade nicht um einen Verkauf (siehe hierzu T 1081/01). Unter diesen Umstände reiche ein einfache Übergeben eines Exemplars nicht aus, um die öffentliche Zugänglichkeit zu belegen.

[...]

T 0516/08 - Old secondary document

T 0516/08

For the decision, click here (published 3 May 2010).

Key points

• What is the relevance if a prior art document cited as secondary document is very old?
• According to T516/08, the age of a document can "only play a role as regards the closest prior art". However, this decision seems to have been one-off. The decision has been cited by only one other decision and not for the aspect at issue; the case is not included in the Case Law Book. 
• The Case Law Book  (I.D.9.7) states: "it would not be obvious to a skilled person to combine an isolated, very old document (i.e. 50 year old document), which had not given rise to a trend in the art and whose teaching ran counter to the present trend, with the document reflecting the closest state of the art (T 261/87, T 366/89, T 404/90)." However, this statement unfortunately does not identify the effect alone - what if the document is old, but not counter to the current trend? 
• In T164/03, the Board held that " Even though D29 was published about 45 years before the priority date of the patent in suit, it already related to light Diesel fuel having a sulphur content of 0.05% and the implication of insufficient lubrication [...]. Further, it appears from D15 that low sulphur content in Diesel fuel was not an issue for the suppliers before the governmental restriction due to environmental concerns took effect in Sweden and Japan in 1992, [...]. Given these circumstances, the skilled person had good reasons to consider the old technology of D29 at the priority date of the patent in suit in 1994, even though it did not play any role in the meantime." This suggests that looking in an old document without good reason can be non-obvious. 
• According to T 1408/04, "age of a document by itself is no reason to exclude a document as representing the closest prior art starting point"
• Note that a 50 year old document can be closest prior art, in particular if it is technically closer to the claim than more recent documents (T 1869/11). 
• 
  

T 0516/08 
10. A further argument put forward by the appellant is that the publication dates of documents E1 [closest prior art] and E2 [E2: US 2067998] (1996 and 1937) lay too far apart and the significant time (more than five years) which had elapsed between E1 and the application date of the patent in suit (2001), were a clear indication that the present invention was not so easy to arrive at for the persons skilled in the art.

As regards the age of E2 the Board concurs with the case law in this respect (see Case Law of the Boards of Appeal, 5th edition 2006, Chapter I.D.3.7 [7th edition I.D.3.6 ) that this can only play a role as regards the closest prior art, which is E1, not E2.

[...]

With respect to E2, supporting the missing teaching, having been published 64 years before the application date the Board also concurs with the case law (see Case Law of the Boards of Appeal (supra), Chapter I.D.9.3) that it is not that period that counts, but that between the time at which the problem became apparent and the application date, which in any case cannot be longer than the five years between E1 and the application date, because it was with the package of E1 that the gripping problem emerged in the first place, A period of five years in the field of packaging cannot really be seen as long, particularly as it may result from a variety of causes: for example, there may have been a commercial reason for not adopting this new technique, because the old technique was found satisfactory by the clients and could also be improved in a different way, thus avoiding considerable investment costs involved in the adoption of a new technique on an industrial scale.

T 1426/13 - Opposition and straw man

EPO T 1426/13

For the decision, click here (stated publication date 23.07.2015)

Key points

• The opposition was filed by a German "Gesellschaft bürgerlichen Rechts" (GbR). An issue was whether this was a legal entity capable of being opponent. According to the Board, this is possible, even though a GbR is not registered in a public register. 
• Another issue was that the (notice of) appeal was filed with a different name as used in the notice of opposition. Evidence of the name change was filed only later during the appeal procedure.
• The Board: "The board concludes that the appeal was filed by the same legal entity as the opposition. Consequently, the appeal was admissible when it was filed. In view of the name change from "[X] GbR" to "[X] Patent- und Rechtsanwälte", the appellant was correctly identified when the appeal was filed and there is no need to correct its name."

Reasons for the Decision

1. Representation

The patent proprietor had raised an objection concerning the opponent's representation during the written appeal proceedings which was withdrawn at the oral proceedings before the board. The board did not see any reason to pursue the issue of its own motion. The opponent/appellant has, throughout the whole opposition and appeal proceedings, always been represented by Mr. [S] who may, as a professional representative, represent any party in any proceedings before the EPO. The board has not seen any reason to request an authorisation in view of the decision of the President of the EPO dated 12 July 2007 on the filing of authorisations (OJ EPO Special edition No. 3/2007, 128). It is irrelevant whether Mr. [S] could also act for the legal entity "Isarpatent GbR" by virtue of his role in this legal entity. It is equally irrelevant whether Mr. [S] was or is a member of any association of representatives (Rule 152(11) EPC) which may be related to the opponent/appellant.

2. Admissibility of the opposition

2.1 Identity of the opponent when the notice of opposition was filed

2.1.1 The notice of opposition was filed on 23 December 2011 on behalf of "Isarpatent GbR" (see above point II), said denomination appearing as "isarpatent GbR" on Form 2300E and as "Isarpatent GbR" on the accompanying letter explaining the grounds on which the opposition was based. Any "Gesellschaft bürgerlichen Rechts" ("GbR") may, under German law, be a party to legal proceedings, both actively (e.g. as a plaintiff or claimant) and passively (e.g. as defendant or respondent), even though a GbR is not registered in any public register (see patent proprietor's letter of 6 March 2015, pages 6/7). It has not been contested that a "GbR" existing under German law may act as an opponent in proceedings before the EPO. An opposition under Article 99 EPC may be filed by "any body equivalent to a legal person by virtue of the law governing it" (G 3/99, OJ EPO 2002, 347, point 9).

2.1.2 The board notes that the lack of public registration may contribute to some uncertainty or even confusion about the name (including its spelling) and/or the identity of a GbR at specific points in time. However, the EPO has to accept the fact that such unregistered legal entities lawfully exist and may be a party in any proceedings before the EPO. Any evidence provided with respect to the details of the GbR relevant to the present case had to be evaluated in accordance with the principle of free and unfettered consideration of evidence (see e.g. T 482/89, OJ 1992, 646).

2.1.3 The patent proprietor argued that it was not clear whether Isarpatent GbR or Reinhard Skuhra Weise & Partner GbR as a legal entity or even a group of natural persons was acting as opponent. It also argued that it was not clear who was a member of Isarpatent GbR when the opposition was filed.

2.1.4 When the opposition was filed, "Isarpatent GbR" (or "isarpatent GbR") - and no other person or legal entity - appeared as opponent on all documents filed (above point 2.1.12.1.1 ). From these references, it must have been concluded at the time of filing the opposition that a legal entity using the name "Isarpatent GbR" was the opponent.

2.1.5 The reference to "Reinhard Skuhra Weise & Partner GbR" on the letterhead was explained by the opponent as a reference to the former name of the same GbR. The board is convinced that this is correct. As there is no official registration of the GbR that could be used to verify the details of such legal entity, the board has to rely on the parties' assertions and the documents issued by the opponent. The documents filed with the opponent's letter dated 2 April 2015 [...] clearly show that the members of Reinhard Skuhra Weise & Partner GbR (RSW) intended to continue and continued the GbR as "Isarpatent GbR" without changing the identity of the GbR (see, in particular, the reference "vormals RSW" in Annex 4, preamble). The name change occurred before the opposition was filed (Annex 3 dated 9 December 2011). However, even if "Reinhard Skuhra Weise & Partner GbR" was another entity than Isarpatent GbR, it would still be clear from the documents filed on 23 December 2011 that only "Isarpatent GbR" could be the opponent because it was easy to distinguish between the references to the opponent and the letterhead of the opponent's representative (which is irrelevant for the identification of the party represented).

2.1.6 Under these circumstances, it is clear to the board that no other entity than Isarpatent GbR could have been the opponent. The opposition was therefore admissible when it was filed.

2.2 Identity of the opponent during the proceedings before the opposition division

2.2.1 Subsequent facts, in particular the admission of new members to the legal entity Isarpatent GbR, did not change the identity of said entity either. It is very common for a GbR to have changes in its membership, subject to the terms and conditions set forth by the contracts establishing the GbR. From the extracts from the "Sozietätsvertrag" (Annexes 1 and 4 to the letter of 2 April 2015) the board understands that the members of Isarpatent GbR wished to continue the identity of the GbR regardless of the retirement or admission of individual members. In particular, the preamble of the "Sozietätsvertrag" of 23 March 2012 (Annex 4) refers to the admission of a new member to the GbR (not to the establishment of a new GbR) and indicates that the contracts of 2005 and 2006 - establishing the GbR - were still valid. It must be concluded that the identity of the GbR did not change when Mr. Hecht joined the GbR.

2.2.2 Consequently, the admissibility of the opposition was not affected by any changes in the composition of the GbR after the opposition had been filed. The board agrees with the patent proprietor that it was not possible to find out who was a member of the GbR at a specific point in time, either from any letterhead or from any public register. However, the opposition was filed by a legal entity in its own right, and the legal entity (GbR) may be held liable for its obligations, including costs which might be awarded to another party in opposition proceedings before the EPO (see the patent proprietor's letter of 6 March 2015, pages 6/7), which means that it is not necessary to determine the individual members should this party be liable for costs. The present case therefore differs from the facts underlying decision T 482/02, where it remained unclear whether the party was a legal entity or a group of natural persons.

3. Admissibility of the appeals

3.1 Appeal of the patent proprietor

That the patent proprietor's appeal is admissible has not been contested(see above point V).

3.2 Appeal of the opponent

3.2.1 The admissibility of the opponent's appeal has been contested by the patent proprietor, on the ground that the appellant was not identical to the opponent who was adversely affected by the decision under appeal.

3.2.2 The decisive issue is whether the party filing the appeal was identical to the opponent. If the appellant was not identical to the opponent, this party could not be adversely affected by the decision under appeal and the appeal would be inadmissible.

3.2.3 The appeal was filed on behalf of "ISARPATENT Patent- und Rechtsanwälte" whereas the decision under appeal concerned "isarpatent GbR" (patent proprietor's letter of 6 March 2015, page 14). The denomination "ISARPATENT Patent- und Rechtsanwälte" already appeared on Form 2300E when the opposition was filed under the heading "Representative", together with the name of the representative (Mr. S) and the reference to the association of representatives No. 73 who may have been registered under the name "Isarpatent" or "Isarpatent Patent- und Rechtsanwälte". In any case, as a legal entity may not act as a representative, the reference on Form 2300E can only mean that the opponent was represented by Mr. S or any other professional representative in association No. 73. It does not contain any information on the relationship between "Isarpatent GbR" and "Isarpatent Patent- und Rechtsanwälte".

3.2.4 The notice of appeal and the statement setting out the grounds of appeal referred to "ISARPATENT Patent-Rechtsanwälte" as "Opponent and Appellant". The documents filed by the opponent with its letter dated 2 April 2015 show that the GbR formerly named "Reinhard, Skuhra Weise & Partner GbR" ("RSW") had called itself "isarpatent Patent- und Rechtsanwälte" at least since March 2012 (see Annex 2, § 1(1) and Annex 4, preamble and § 1.2). It appears that the Oberlandesgericht München has accepted that the two entities are identical (Annex 2).

3.2.5 It may well be that the denomination "Isarpatent" or "Isarpatent Patent- und Rechtsanwälte" has been used for different groups of natural persons (e.g. group of persons listed on the letterheads, group of professional representatives registered as association No. 73) and even as a trademark. However, it is clear from the documents filed with the patent proprietor's letter of 2 April 2015 that "Isarpatent Patent- und Rechtsanwälte" was also the name of the GbR formerly called "Reinhard, Skuhra Weise & Partner GbR" (see above point 3.2.43.2.4 ). There is no support for the argument that the appeal may have been filed on behalf of a group of natural persons, and there is no indication for the co-existence of two legal entities (GbRs) at any time. On the contrary, the fact that the professional business had to be carried out exclusively with in the framework of the GbR (Annex 1, § 2(1)) supports the argument that there was only one GbR at any time.

3.2.6 From the above, the board concludes that the appeal was filed by the same legal entity as the opposition. Consequently, the appeal was admissible when it was filed. In view of the name change from "Isarpatent GbR" to "ISARPATENT Patent- und Rechtsanwälte", the appellant was correctly identified when the appeal was filed and there is no need to correct its name.

3.2.7 In the meantime, the opponent/appellant has been converted into a registered "Partnerschaftsgesellschaft mit beschränkter Berufshaftung" while keeping its identity ("identitätswahrender Formwechsel"). The signatories of the decision establishing "isarpatent - Patentanwälte Behnisch Barth Charles Hassa Peckmann und Partner mbB" are identical to the signatories of the "Sozietätsvertrag" of 23 March 2012 (Annexes 4 and 5 to the patent proprietor's letter of 2 April 2015).

3.2.8 As the identity of the opponent/appellant did not change at any time during the entire opposition and appeal proceedings, the admissibility of the opposition and the appeal was not affected by the name changes and there was no transfer of the opposition or other event requiring additional procedural steps. Since the opponent/appellant has not requested the registration of its latest name change and since it is clear that the present decision is binding for "isarpatent - Patentanwälte Behnisch Barth Charles Hassa Peckmann und Partner mbB" even though it refers to "Isarpatent Patent- und Rechtsanwälte", the board does not see a need to take any further steps as a consequence of this name change.

T 1958/13 - Technical effect of user interface

EPO T 1958/13 

For the decision, click here

• The invention relates to copy/pasting with a touch-screen display (e.g. smartphone). The distinguish feature is "the text data within an area between the first and the second position of the dragging motion is cut or deleted based on the direction of the dragging motion." 
• The Board states that the effects of simplifying the user's operation, improving the user experience and providing more user-convenient text editing functions, are in principle technical effects because "in the end they aim at providing tools which serve or assist user activities" 
• However, the Board finds that the claimed technical effects are not credibly obtained because "whether they are actually achieved depends exclusively on subjective user skills or preferences".

Summary of Facts and Submissions

VI. Claim 1 of the main request reads as follows:

"A terminal, comprising:
a touch-screen display configured to be touched by a user, and
a controller configured to determine a portion of the touch-screen display that is touched during a dragging motion by the user,
characterized in that the controller is configured
- to recognize the dragging motion in which the user touch-drags from a first position to a second position on the touch-screen display,
- to determine a direction of the dragging motion on the touch-screen display, and
- to perform a delete or cut operation based on the direction of the dragging motion on the touch-screen display in order to delete or cut the text data between the first and second positions."

T 1502/11 - Self-contradicting but enabled

EPO T 1502/11

For the decision, click here.

Key Points

• Claim 1 of the main request in opposition was inconsistent but apparently not open to a clarity objection (G3/14)
• The claims are interpreted in such a way that technical inconsistencies are avoided and the interpretation is consistent with the description.
• The Board notes that,  the " invention" which is to be sufficiently disclosed according to A83 is the subject-matter of the claims. The Board interprets the claims in the light of the description and finds them to be sufficiently disclosed.
• The opponent had not substantiated lack of inventive step in appeal, hence this ground is disregarded.

Sachverhalt und Anträge

I. Die Beschwerde betrifft die Entscheidung der Einspruchsabteilung den Einspruch, basierend auf Artikel 100(b) und 100(a) in Kombination mit den Artikeln 54 und 56 EPÜ, gegen das Patent EP-B-1 572 336 zurückzuweisen.

[In the pending Main Request, claim 1 is based on claims 1 and 3 as granted].

Entscheidungsgründe

Hauptantrag

[...]

2. Auslegung des Anspruchs 1

2.1 Die Annahme, dass ein erteilter Anspruch klar sei, wenn sowohl die Prüfungs- als auch die Einspruchsabteilung dazu keine Stellung bezogen haben, kann nicht akzeptiert werden. Es ist einerseits nicht eindeutig, ob die Prüfungsabteilung einen möglichen Klarheitsmangel übersah oder als nicht gegeben ansah (G 3/14, Gründe 80 (k)). Andererseits ist ein Klarheitsmangel kein Einspruchsgrund und muss deshalb von der Einspruchsabteilung nicht diskutiert werden.

2.2 Der Wortlaut des Anspruchs 1 ist widersprüchlich, da die Wirkstoffskammer und die Gaskammer durch Kolben verschlossen sind; gleichzeitig jedoch ist der Schaumerzeuger mit der Wirkstoffkammer und der Gaskammer verbunden. Außerdem müssen die beiden Kolben über ein Verbindungselement miteinander verbunden sein, das beim Verschieben eine der beiden Kammern öffnet.

T 1646/12 - No Art 69 for patentability

EPO T 1646/12

For the decision, click here. ([C], no headnote, DE)

Key points

• The Board follows established case law that for patentability (rather than scope of protection) Article 69 EPC is not to be applied, but considers that the claims are nevertheless to be read in the context of the description.
• Two extremes are to be avoided, according to the Board. Features described in the description, but not in the claims, are not to be read into the claims. On the other hand, the claims are not to be considered as completely separate from the description. 

Sachverhalt und Anträge

I. Die Beschwerdeführerin (Patentinhaberin) hat gegen die Entscheidung der Einspruchsabteilung, das Patent Nr. 1 515 857 zu widerrufen, Beschwerde eingelegt. [...]
Die Einspruchsabteilung war der Auffassung, die Erfindung sei nicht ausführbar.

Entscheidungsgründe

1. Die Anmeldung, auf der das Streitpatent beruht, wurde am 6. Juni 2003 eingereicht. Deshalb ist im vorliegenden Fall in Anwendung von Artikel 7 der Akte zur Revision des EPÜ vom 29. November 2000 (Sonderausgabe Nr. 4, ABl. EPA 2007, 217) und des Beschlusses des Verwaltungsrats vom 28. Juni 2001 über die Übergangsbestimmungen nach Artikel 7 der Akte zur Revision des EPÜ vom 29. November 2000 (Sonderausgabe Nr. 4 ABl. EPA 2007, 219) der Artikel 100 EPÜ 1973 anzuwenden.

2. Auslegungsfragen

2.1 Grundsätzliches

Die Beschwerdeführerin hat vorgebracht, die Einspruchsabteilung hätte die Beschreibung unbedingt zur Auslegung des Anspruchs 1 heranziehen müssen und hat in diesem Zusammenhang auf Artikel 69 (1) Satz 2 EPÜ hingewiesen.

Die Beschwerdekammern haben wiederholt darauf hingewiesen, dass Artikel 69 (1) EPÜ nur den Schutzbereich des Patents betreffe, der wiederum nur im Zusammenhang mit der Prüfung in Hinblick auf die Erfordernisse von Artikel 123 (3) EPÜ und in Verletzungsverfahren vor nationalen Gerichten von Bedeutung sei (siehe "Rechtsprechung der Beschwerdekammern des EPA", 7. Auflage, 2013, II.A.6.3.2). Ein allgemeines Gebot der Auslegung der Ansprüche unter Heranziehung der Beschreibung lässt sich aus Artikel 69 (1) EPÜ nicht herleiten.

Die von der Beschwerdeführerin zitierte Entscheidung T 1808/06 enthält ein obiter dictum, dem zufolge in Situationen, in denen es aus verfahrensrechtlichen Gründen nicht möglich ist, Unstimmigkeiten zwischen Beschreibung und Ansprüchen mit Berufung auf Artikel 84 EPÜ 1973 zu beseitigen, die Ansprüche hilfsweise ("purely as an auxiliary construction") unter Zuhilfenahme von Artikel 69 (1) EPÜ 1973 ausgelegt werden können (siehe Punkt 2 der Entscheidungsgründe). Diese Entscheidung befasste sich aber mit der Anpassung der Beschreibung und hat keinen direkten Bezug zu den Fragen, mit denen die Kammer im gegenwärtigen Fall befasst ist.

Dessen ungeachtet sind die Ansprüche eines Patents Texte, deren Auslegung den allgemeinen Grundsätzen zur Auslegung von Texten unterliegt. Zu diesen Grundsätzen gehört auch, dass ein Begriff bzw. ein Textbestandteil nur im Kontext ausgelegt werden kann. Auf Patente angewandt bedeutet dies, dass Begriffe eines Anspruchs bzw. der Anspruchswortlaut als solcher kontextuell, d.h. im Gesamtzusammenhang des Anspruchssatzes bzw. der Beschreibung auszulegen sind. Sie können daher in der Regel nicht völlig losgelöst von der Beschreibung betrachtet werden.

In diesem Zusammenhang gilt es zwei Extreme zu meiden. Zum einen ist es nicht zulässig, die Ansprüche und die Beschreibung gewissermaßen als kommunizierende Gefäße zu betrachten, zum Beispiel, indem man einschränkende Merkmale, die zwar in der Beschreibung beschrieben sind, aber nicht in den Ansprüchen, in letztere hineinliest (siehe dazu "Rechtsprechung der Beschwerdekammern des EPA", 7. Auflage, 2013, II.A.6.3.4). Eine solche Übertragung von einschränkenden Merkmalen kann nicht durch Auslegung, sondern nur durch eine Änderung der Ansprüche erreicht werden.

Zum anderen kann man den Anspruch auch nicht als von der Beschreibung völlig getrennt betrachten. Der Fachmann, der einen Anspruch auslegt, muss sich zumindest vergewissern, ob die Ausdrücke des Anspruchs ihrem üblichen Wortsinn nach zu verstehen sind oder ob die Beschreibung für diese Ausdrücke eine besondere Bedeutung definiert. Auch bei unklaren Ansprüchen kommt der Fachmann nicht umhin, in den restlichen Ansprüchen, aber auch in der Beschreibung und ggf. in den Figuren nach Elementen zu suchen, die zu einer Klärung beitragen können (siehe dazu "Rechtsprechung der Beschwerdekammern des EPA", op.cit., II.A.6.3.3). Es ist also innerhalb gewisser Grenzen zulässig, und unter Umständen sogar notwendig, die Beschreibung bei der Auslegung der Ansprüche heranzuziehen; einer Berufung auf Artikel 69 (1) EPÜ bedarf es dazu nicht.

T 557/13 - G1/15 - Partial priority and poisonous divisional

EPO T0557/13 -  G0001/15 - referral - [A] ( T557/13 ; G 1/15 ; G1/15 )

For the decision, click here

Key points

The Board refers the following questions to the Enlarged Board of Appeal:

1. Where a claim of a European patent application or patent encompasses alternative subject-matters by virtue of one or more generic expressions or otherwise (generic "OR"-claim), may entitlement to partial priority be refused under the EPC for that claim in respect of alternative subject-matter disclosed (in an enabling manner) for the first time, directly, or at least implicitly, and unambiguously, in the priority document?

2. If the answer is yes, subject to certain conditions, is the proviso "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters" in point 6.7 of G 2/98 to be taken as the legal test for assessing entitlement to partial priority for a generic "OR"-claim?

3. If the answer to question 2 is yes, how are the criteria "limited number" and "clearly defined alternative subject- matters" to be interpreted and applied?

4. If the answer to question 2 is no, how is entitlement to partial priority to be assessed for a generic "OR"-claim?

5. If an affirmative answer is given to question 1, may subject-matter disclosed in a parent or divisional application of a European patent application be cited as state of the art under Article 54(3) EPC against subject-matter disclosed in the priority document and encompassed as an alternative in a generic "OR"-claim of the said European patent application or of the patent granted thereon?

R 0009/14 - Summary of problem-solution approach

EPO R 9/14 
For the decision, click here. (For the appeal decision under review T 2044/09, see here)

Key points

• The Enlarged Board (three-member panel) gives a useful and concise summary of the problem-solution approach in this petition-for-review case (with minor edits in italics):
  
  It is established board of appeal case law that inventive step is to be examined using the problem-solution approach. That means first determining the closest prior art. Then the technical problem vis-à-vis the closest prior art that has been effectively solved is determined. If it is established that the claimed subject-matter has a technical effect or improvement compared with the closest prior art - which is usually shown by means of comparative tests - the problem solved [i.e., the objective technical problem] may be formulated in terms of [how to modify the closest prior art to obtain] the effect/improvement. If no effect is identifiable, the problem solved may be formulated in terms of [providing] an alternative to the closest prior art. Finally, it is examined whether the technical features claimed, which achieve the results, i.e. solve the technical problem, are an obvious solution given the information contained in the prior art.

Further main points

• Regarding the alleged procedural violation, the OD had maintained the patent as granted. The opponent-appellant did not attend oral proceedings, the Board had issued no preliminary opinion and only said "please present your case" and asked about comparative tests. The patent was revoked for lack of inventive step. I can imagine the patentee was disappointed. Nevertheless, the EBA approves of this course of events (edit 10.10.2019)
• The EBA also states that "the petitioner was unable to submit comparative tests vis-à-vis the closest prior art when asked by the chairman. And as patent proprietor, the petitioner – not the Board, as it seems to think – bore the burden of proof." In my opinion, the opponent-appellant  initially has the burden of proof to show lack of technical effect or at least cast reasonable doubt on the alleged effect T1797/09), even if he is absent during oral proceedings. The issue may have been how to Board should have proceeded after deciding to shift the burden of proof to the patentee: some time for the patentee to carry out the experiments would be reasonable. Otherwise, the whole purpose of shifting the burden of proof is void if the patent proprietor must carry out the experiment in order to anticipate for any decision of the Board to shift the burden to him. 

Summary of Facts and Submissions

I. The respondent (patent proprietor) in case T 2044/09 has filed a petition for review under Article 112a EPC against the decision of the Technical Board of Appeal 3.3.02 dated 11 February 2014 setting aside the contested opposition division's decision and revoking European patent [..] for lack of inventive step (Article 56 EPC). [...]

T 0038/11 - Postponement not requested

EPO T 38/11

For the decision, click here

Key points

• The Board: "Although the appellant declared being surprised by the course of events [during oral proceedings before OD], it did at no point request a postponement of the oral hearing. The appellant continued defending its case for more than two hours, with the aid of a technical expert, not only for the main request, but also for the claims of the auxiliary requests. For the board, this sequence of events is an indication that the appellant was in effect not prevented from pursuing its case." 
• Practice guidance: if you formally express surprise during OP, always request postponement.
• The decision also deals with an interesting (late-filed) insufficiency attack based on the argument that the patent's examples would not actually provide the synergistic effect recited in the claims.  

Reasons for the Decision

1. Substantial procedural violation, remittal to first instance, reimbursement of the appeal fee

[...]

1.2 Procedural facts

- The summons for oral proceedings, dated 26 February 2010, referred to novelty and inventive step as the issues to be discussed.

- The ground of opposition [of insufficiency of disclosure] was for the first time mentioned in the opponent's letter dated 12 August 2010, page 7 (point 2.1).

- Oral proceedings before the opposition division took place on 12 October 2010. According to the Minutes, the parties' initial requests were established, including the opponent's request for, inter alia, revocation under Article 83 EPC, and the appellant's (patentee's) request that this fresh ground of opposition should not be admitted.

- In the following discussion which lasted for about 2 hours (see Minutes, pages 1 to 3), the reasons for the late filing and the substance and relevance of the objection were extensively discussed.

- After an interruption for deliberation, the opposition division announced its interim decision that the claims of the main request did not meet the requirements of Article 83 EPC.

- At this point, the proprietor stated that it was taken by surprise, but wished to continue with the six auxiliary requests on file.

- As there were no further arguments, the auxiliary requests were also rejected under Article 83 EPC and the patent was revoked.

T 0714/13 - Second use not medical

EPO T 714/13

For the decision, click here
Key points

• The applicant asserts that claim 1 specifies a second medical use. The claim is directed "a composition for use in the induction of selective apoptosis of human tumour cell types comprising ...".
• Board "The wording of claim 1 of the main request does not require that the technical effect is achieved only in and for a medical treatment under Article 53(c) EPC 2000. The purpose stated in feature i) of claim 1 "for use in the induction of selective apoptosis of human tumor cell-types" does not mention any method of treatment as required by Articles 54(5) and 53(c) EPC 2000, but merely relates to a technical effect which may also be attained in vitro.
• 
  

Reasons for the Decision
[...]

5. Main request

5.1 Claim construction

5.1.1 The subject-matter of claim 1 of the main request relates to
i) a composition for use in the induction of selective apoptosis of human tumour cell types comprising
ii) a mineral ascorbate; and
iii) a secondary compound selected from the group consisting of 4-hydroxy-5-methyl-3(2H)furanone and 3-hydroxy-kojic acid,
iv) wherein the amount of secondary compound is from 0.01 to 1.0% by weight of the total composition.

T 0375/13 - "Stable" as parameter

EPO T 375/13

For the decision, click here

Key points

• The OD had deemed the word "stable" in the claim resulted in a lack of sufficiency, the term being an undefined parameter. 
• The Board does not agree. " Even if in most cases a specific condition is not defined of what is meant by a stable pharmaceutical product, the person skilled in the art would not consider the adjective "stable" as so uncommon and ill-defined as to lead to a lack of sufficiency."
• Note that both "uncommon"  and " ill-defined"  are mentioned as criteria. 

Summary of Facts and Submissions

I. The appeal of the patent proprietor (appellant) lies against the decision of the opposition division announced at the oral proceedings on 18 October 2012 to revoke European Patent 1 169 062. The patent was granted on the basis of 9 claims, claim 1 reading as follows: [...]

Reasons for the Decision

Main request - revision of the decision on sufficiency

8. Lack of sufficiency on the basis of the feature "such complex being stable at a temperature of at least 121 °C for a period effective to sterilise the complex" was the main reason for revocation of the patent. 

T 1775/11 - Parameters and testing methods

T 1775/11

For the decision, click here

Key points

• The claims were directed to " amorphous silica for use in a dental composition" having certain parameters.
• The Board first finds that the two examples do not allow for obtaining silicas having properties covering the whole width of the claims.
• More creative and quite ingenious is the following argument of the opponents: "The [opponents] argued convincingly that these highly specific test procedures might be usual in the field of abrasive silicas developed especially for toothpaste applications, but are not common in other important fields of application of finely divided amorphous silicas (e.g. as fillers, thickeners, absorbents etc.). The present claims are however not restricted to amorphous silicas in toothpastes or as abrasives. Therefore, so the [opponents'] argument, it was extremely burdensome for the skilled person to repeat these experiments on a trial and error basis, without proper guidance as to which results could be expected." 

Summary of Facts and Submissions

I. European patent No. 1 456 125 was granted with 32 claims.

Independent claims 1 and 12 read as follows:

"1. An amorphous silica for use in a dental composition having a weight mean particle size in the range 3 to 15 mym with at least 90 per cent by weight of particles having a size below 20 mym, a Radioactive Dentine Abrasion (RDA) determined on an aqueous slurry of the silica powder of 100 to 220, a Pellicle Cleaning Ratio (PCR), when incorporated in a dental composition at 10 per cent by weight, greater than 85, the ratio of PCR to RDA being in the range 0.4 : 1 to less than 1:1 and having a Plastics Abrasion Value in the range 11 to 19."

T 1339/13 - Clarity and description

EPO T 1339/13

For the decision, click here

Key points

• The Opponent considers the claims to be unclear because of the phrase "the spring force increases only slowly"
• "The Board agrees with the appellant that the term "only slowly" is a relative term and that it is preferable not to use such a relative term in a claim. However, in the context of the claim at hand, this term imparts a clear teaching to a skilled reader. In addition, there is no basis in the disclosure for a more precise wording and this feature is not the only feature distinguishing the claimed invention from the prior art"
• It is interesting that lack of more precise wording in the description is a reason why the claim complies with Art. 84 EPC. 
• Also interesting analysis of whether a MSc thesis of 1985 put on the shelf of a library of a university department was publicly available. The Board accepts so, and also admits the document while only introduced in appeal (saying that it "could and should have been filed in the opposition proceedings"). 

Summary of Facts and Submissions

I. European patent No. 1 888 849 (in the following: "the patent") concerns a dredging vessel with a substantially vertical spud, typically a cutter suction dredger ("CSD").

II. The patent as a whole was opposed on the grounds of Article 100(b) and Article 100(a) EPC for lack of novelty and inventive step over an alleged prior use of a self-propelled CSD named "URSA".

III. The Opposition Division held that the prior use was not sufficiently proven and that, account being taken of the amendments made by the patent proprietor during the opposition proceedings, the patent and the invention to which it relates meet the requirements of the EPC (Article 101(3)(a) EPC).

IV. This decision has been appealed by the opponent (here the appellant).

T 1825/11 - Continuation opposition after lapse

EPO T 1825/11

For the decision, click here
Key point

• In the present case, the patent had lapsed in all Contracting States during opposition-appeal. The question was which of the parties can request continuation of the proceedings. Rule 84(1) EPC gives that right to the opponent (in first instance proceedings). 
• The Board notes "that the patent proprietor also can request that the appeal proceedings be continued", thereby following established case law (in particular T 520/10)
• As a comment, note that T 520/10 states that "it is the patent proprietor who can request that the appeal-proceedings". The present decision states "that the patent proprietor also can request that the appeal proceedings be continued". Presumably, each appellant has the right, regardless of its status as proprietor or opponent. 

Summary of Facts and Submissions

I. The patent proprietor (appellant) lodged an appeal against the decision of the opposition division to revoke European patent No. 1 931 711.

II. The patent was opposed by four parties, opponents 1 to 4, now respondents I to IV.

III. In a communication pursuant to Rules 84(1) and

100(1) EPC dated 20 April 2015, the board drew the parties' attention to the fact that the patent had lapsed in all designated Contracting States and the parties were asked to inform the board, within a two-month time limit, whether any of them requested a continuation of the appeal proceedings. The parties were informed that if no request for continuation of proceedings was received in due time, the appeal proceedings would be discontinued.

IV. No party requested a continuation of the appeal proceedings in response to the communication of the board.

Reasons for the Decision

1. If a European patent has lapsed in all of the designated Contracting States, the opposition proceedings may be continued at the request of the opponent, filed within two months of a communication of the European Patent Office informing it of the lapse (Rule 84(1) EPC). According to Rule 100(1) EPC, this also applies in appeal proceedings following opposition proceedings (see e.g. decision T 329/88 of 22 June 1993, points 1 and 2 of the reasons, and decision 749/01 of 23 August 2002, points 2 and 3 of the reasons).

2. However, in the present case, given the status of the patent proprietors as appellant, it would not be appropriate for the opponents alone to decide whether the appeal proceedings, filed against an decision adverse to the appellant, are to be continued. For this reason, the board considers that Rule 84(1) EPC is to be applied mutatis mutandis in such opposition appeal proceedings, so that the patent proprietor also can request that the appeal proceedings be continued (see e.g. decision T 708/01 of 17 March 2005 and decision T 520/10 of 11 June 2013, both point 1 of the reasons).

3. As no party has, within the time limit set, requested the continuation of the appeal proceedings, the appeal proceedings are to be terminated.

Order

For these reasons it is decided that:

The appeal proceedings are terminated.

T 2196/11 - Continuation of opposition after lapse

EPO T 2196/11

For the decision, click here.

Key point

• The case concerns the somewhat unusual case of continuation of opposition-appeal after lapse of the patent in all Contracting States. The Board applies the rules for such case. 
• The opposition-appeal was continued the (appealing) opponent had requested so (following Rule 84(1) EPC) and the patent proprietor had not withdraw approval of the text.
• I wonder whether withdrawal approval of the text would result in termination of the proceedings (as the Board seems to assume) or in revocation of the patent. 

Reasons for the Decision

1. Continuation of the proceedings

Although the respondent (proprietor) had stated that the patent had lapsed in all Contracting States and that no application for restoration had been made in any Contracting State, it did not however withdraw its approval of any text on which the patent could be maintained and indeed it maintained its main request and all of its auxiliary requests. The appellant (opponent) also requested [in response to the Communication under Rule 84(1) EPC) that the opposition proceedings be continued. The stated intention of the appellant (opponent) not to continue proceedings if the patent had irrevocably lapsed is a conditional request over which the Board has no control. Furthermore, by telefax dated 3 July 2015 it explicitly maintained its request that the patent be revoked.

The Board thus continued proceedings.
[After jump: revocation inter alia for failure to amend the description in auxiliary requests]

T 0837/13 - Admissibility appeal and translated appellant name

EPO T 837/13 

For the decision, click here

Key point

• An inconsistent translation of the name of the Japanese appellant does not render the appeal inadmissible.
• Another point was validity of priority in view of the requirement of " same invention" . The Board finds that although for valid priority, the priority-claiming application should not solve a new problem different and not derivable from the problem posed in the priority document (T647/97), it is not required for the priority-claiming application to address all problems solved by the priority application. 

Reasons for the Decision

1. Admissibility of the appeal

The term "Kabushiki Kaisha" refers to a defined legal company status in Japanese law, and is commonly translated into English as "Company", "Corporation" or "Incorporated". In the notice of opposition, the appellant already used both names synonymously: whereas "Terumo Kabushiki Kaisha" was inserted on Form 2300.1, III, the very first page of the notice indicates "Terumo Corp. ./. EP 1 341 482 OrbusNeich Medical, Inc.". Thus, "Terumo Corporation" was simply used as a translation of "Terumo Kabushiki Kaisha" referring to the same (identical) legal entity, the appellant therefore having been party to the opposition proceedings, having been adversely affected by the decision under appeal and thus being entitled to appeal (Article 107 EPC).

With regard to the incorrect indication of the publication number of the attacked patent in the notice of appeal, it has to be noted that the further identifying data, i.e. the application number, the proprietor's name as well as the decision date are all consistent. In this context the Board notes that the date indicated by the appellant corresponds to the date printed on the decision itself, which is also the date from which the respective time limits are calculated. The alleged inconsistency in the date of the decision - brought forward by the respondent, who was of the opinion that the date of the announced order of the decision at the oral proceedings was decisive - is thus not present. Furthermore, the publication number identifying the patent only deviates in one digit from the correct one. From the consistent, redundant further information in the notice of appeal it is, however, immediately evident which decision was appealed, and the appeal is therefore admissible.

After the jump: the priority issue.

T 0034/12 - Rule 164 and amendments of the claims

T 0034/12

For the decision, click here. 
Key points

• Rule 137(5) EPC is a powerful tool for the examiner, but recent case law demonstrates that it is difficult to handle. The present case is an example.
• The Examiner had found D1 anticipating an embodiment of claim 1. Interestingly, he issued a partial search report, alleging lack of unity of invention of claim 1 between the anticipated embodiment wherein a certain monomer is a " diquat" and all other embodiment of claim 1. The applicant did not pay a second search fee, and added a feature from the description to distinguish over D1. The ED refused the application as still relating to embodiment wherein the monomer is not a diquat. 
• The Board finds a substantial procedural violation since the decision is insufficiently reasoned.
• As a comment, note that Rule 164 and Rule 137(5) do not turn on lack of unity of the claims of the application as filed. As the Board states: "If [the] objection of lack of unity of claim 1 turned out to be unjustified in view of the amendment to the claims, the applicant would have been entitled to have the full claimed subject-matter searched." (emphasis added). This despite Rule 164(2) also covering the case that an invention is claimed which is " not covered by the international search report" . Apparently, this must be read in the same way as in Rule 137(5) EPC, namely: unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a singe general inventive concept. Hence, adding features from the description should probably be allowed in the same way as for Rule 137(5), as explained in GL H-II,6.2

Rule 164(2) (old: 01.04.2010 - 31.10.2014)
(2) Where the examining division finds that the application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention, or protection is sought for an invention not covered by the international search report or, as the case may be, by the supplementary international search report or supplementary European search report, it shall invite the applicant to limit the application to one invention covered by the international search report, the supplementary international search report or the supplementary European search report


Summary of Facts and Submissions

I. The appeal lies against the decision of the examining division refusing the European patent application 06 821 491.5 under Article 97(2) EPC on the grounds of "lack of compliance with Rule 164(2) EPC by a repeated violation of Rule 137(5) EPC".

II. The application under appeal was filed under international application number PCT/IB2006/054324 and published as WO2007/057865. The European Patent Office acting as the International Searching Authority, issued an international search [...] report (ISR) and a Written Opinion of the International Searching Authority (WOISA), both covering all claims 1-25 on file.

X. A decision to refuse the European Patent application was issued on 1 July 2011. The decision reads: