T 2174/12 - Not: is it essential

T 2174/12

For the decision, click here

Key points

• Board: " As regards compliance of an amendment with Article 123(2) EPC when features are taken from an embodiment in the description and Figures, it is not of relevance whether features not taken-up into the claim are considered essential to the invention or not. Rather the standard to be met is that the subject-matter resulting from the amendment must be directly and unambiguously derivable, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the application as filed (see e.g. G2/10)." 
• " In the present case, the necessary direct and unambiguous derivability requires that all features structurally or functionally related to the exterior laminate be taken up into the claim."
• The "is it essential" test is usually applied for deleting features from claim 1 as filed (CLB II.E.1.7.2). For extracting a feature from an embodiment, the Guidelines suggest establishing that the feature " is not related or inextricably linked to the other features of that embodiment" (GL H-V 3.2.1). The Board here seems to explain that "not related"  means "not structurally or functionally related". Why the Guidelines also mention the much lower standard of "not inextricably linked"  is not entirely clear to me.

2. Auxiliary request 1

2.1 Non-admittance of request (Article 13(1) RPBA)

[...]

2.1.2 The respondent filed auxiliary request 1 during oral proceedings. The request thus represented a change to the respondent's complete case as defined in Article 12(2) RPBA) and its admittance is to be considered at the Board's discretion under Article 13 RPBA.

2.1.3 As regards prima facie compliance with Article 123(2) EPC, this is not achieved in claim 1.

The exterior laminate has admittedly been defined more clearly through addition of features taken from para. [0010] of the application as filed. However, the features taken-up into claim 1 with respect to the exterior laminate are not disclosed in isolation in the description; para. [0013] provides further details of the laminate at least having two sheets of nonwoven fabric. The exterior laminate is thus structurally disclosed in the description as having 'at least two sheets of nonwoven fabric', such that the omission of this feature from those taken-up into claim 1, to more clearly define the exterior laminate, gives rise at least prima facie to an unallowable intermediate generalisation of the original disclosure in this respect. Although reference was made to paragraph [0062] as a further basis of disclosure, this refers to a nonwoven fabric sheet and a water repellent sheet. Although it might be argued that a water-repellent sheet is an alternative to one of the nonwoven fabrics (and even this is not considered to be unambiguously disclosed) this anyway would not be a disclosure obviating the presence of a nonwoven fabric in the exterior laminate, but one rather confirming it.

As regards compliance of an amendment with Article 123(2) EPC when features are taken from an embodiment in the description and Figures, it is not of relevance whether features not taken-up into the claim are considered essential to the invention or not. Rather the standard to be met is that the subject-matter resulting from the amendment must be directly and unambiguously derivable, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the application as filed (see e.g. G2/10).

In the present case, the necessary direct and unambiguous derivability requires that all features structurally or functionally related to the exterior laminate be taken up into the claim. 

This thus includes not just those features from lines 1 to 2 of para. [0010] of the A-publication but also at least the detail of the exterior laminate in para. [0013] regarding the laminate comprising two sheets of nonwoven fabric. This detail regarding the exterior laminate having at least two sheets of nonwoven fabric is clearly structurally related to the structure of the exterior laminate disclosed in that embodiment and so, at least prima facie, needs to be included in the claim for its subject-matter to meet the requirement of Article 123(2) EPC. This feature of the exterior laminate is however not included in claim 1.

2.1.4 A further, at least prima facie, non-compliance with the requirement of Article 123(2) EPC arises due to only a selection of features concerning the location of the leg portions having been included in claim 1, which features have been taken from a disclosure of a larger number of features disclosed in combination in the description in the specific context of the leg elastic members. Para. [0016] discloses not only that the leg elastic members are disposed along inward curves of the exterior laminate to form the leg portions, but also at least that these members extend to the side edges and overlap with, or continue to, each other, and that a substantially continuous loop of leg gather is formed. These features are structurally related to the leg elastic members taken-up into claim 1 since they describe the only disclosed arrangement of these members, and thus the extent of the leg portions. It thus follows that the omission of at least these features from claim 1 presents the skilled person with new information in the form of a new combination of features which is at least prima facie not directly and unambiguously derivable from the application as originally filed, such that the subject-matter of claim 1 would contravene the requirement of Article 123(2) EPC.

Regarding the respondent's argument that further detail of the leg elastic members from para. [0016] was not necessary, since those in the crotch region and at the side edges were remote from the regions (71) of concern for the definition of the invention, this is not found relevant as regards the matter of compliance with Article 123(2) EPC. The leg elastic members, as stated in lines 1 to 2 of para. [0016], form the leg portions such that the extent and nature of the leg elastic members is of fundamental structural importance for defining the leg portions. In para. [0016] the leg elastic members are stated to 'overlap ... in the crotch section' and to 'overlap with each other .... when the side edges ... are joined together' thus forming a 'substantially continuous loop of leg gather'. By the above definition of the leg elastic members forming the leg portions, these further features of the leg elastic members from para. [0016] define the physical extent of the leg portions and thus have a fundamental structural relationship with the leg portions. It thus follows that the omission from claim 1 of these further features of the leg elastic members prima facie offends Article 123(2) EPC.

2.1.5 The subject-matter of claim 1 thus at least prima facie fails to meet the requirement of Article 123(2) EPC.

2.1.6 Since the subject-matter of claim 1 is not prima facie allowable, which would be necessary for fulfilling the need for procedural economy and consequently admitting the request into the proceedings, the Board exercised its discretion under Article 13(1) RPBA not to admit this request into proceedings.

3. No further request was filed by the respondent. With no request on file which is both admitted and allowable, the patent must be revoked.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

T 1977/10 - Perpetuum mobile

EPO T 1977/10

For the decision, click here

Key points

• The appeal is against the refusal of an application for, essentially, a kind of perpetual motion machine using permanent magnets
• The board refuses under Article 83 (rather than Article 57 EPC).
• The Board cites Wikipedia for "conservation of energy".
• Although the claim is directed to a "rotor for magnetic motor", the Board interprets the claim as if it specifies not just a rotor for a magnetic motor, but a magnetic motor comprising a rotor and a stator. The Board then notes that a motor is defined as a " device that creates motion", and finds that the claimed device can not create motion and hence could not act as a motor. The Board then concludes that the claim, therefore, does not meet Article 83 EPC. 
• If the claim would not have recited "for magnetic motor", but only the structural arrangement of the magnets, Article 57 EPC would have been appropriate as a ground for refusal, in my view.

Summary of Facts and Submissions

I. Contested decision

The applicant's appeal contests the examining division's decision to refuse Euro-PCT application [....]

Claim 1 reads as follows:

"1. Rotor for magnetic motor, formed by magnets (2) and material (4) that orientates the magnetic field, both elements forming groups arranged around a shaft (5), in the radius of the external circumference of the rotor (1) body, separated by a distance; the immobile stator (3) is close to the external circumference of the rotor (1) body, with the axis of the stator being orthogonal to the rotor radius and parallel to the rotation plane of the rotor; the rotor magnets (2) have an only magnetic pole on the flat faces with the largest surface area; characterized because each group of the rotor (1) is formed of at least one magnet (2), which has one face with the two magnetic poles facing the stator (3), and a group of the rotor with several magnets (2) has its magnets arranged one after the other with the magnetic poles of the flat faces with the largest surface area in attraction, on a circular, spiral, staggered or oblique line; the material (4) that orientates the magnetic field is placed on the side of the face of the magnet (2) at the end of the group closest to the stator (3), and the material (4) is placed on the side of an only magnetic pole."  [...]

Reasons for the Decision

T 0910/12 - Public prior use

EPO T 0910/12

For the decision, click here

Key points

• This decision concerns possibly novelty-destroying public prior use. However, the service manual provided as evidence of the public prior use (together with invoices) does not disclose all features of the claim. Hence, the claim is held to be novel over the public prior use.

Reasons for the Decision

1. The appeal is admissible.

2. Background of the invention

The patent relates to materials handling device, such as a fork lift truck, see specification, paragraph [0002]. Typically such a device has a carriage assembly, e.g. for moving forks vertically. The assembly is raised by pumping hydraulic fluid into a cylinder and lowered by releasing the fluid. Conventionally, a mechanical safety valve at the base of the cylinder, called a velocity fuse, shuts off flow out of the cylinder when the lowering speed exceeds a fixed limit.

A disadvantage with this arrangement is that a driver might sometimes want to exceed the lowering speed-limit to improve their productivity, and indeed could safely do so, but the velocity fuse prevents this, see specification column 1, lines 34 to 40.

To overcome this, the invention of claim 1 provides an electronically controlled valve to carry out the function of the velocity fuse. A control structure closes the valve in the event of an unintended descent of a carriage assembly in excess of a commanded speed, see also specification, paragraph [0009]. This allows the driver to execute intended descents, even at high speed, whilst unintended descents at speeds exceeding a command speed are prevented, paragraph [0010].

J 0018/14 - Undoing of transfer

EPO J 18/14

For the decision, click here [DE]

 

Note 02.01.2024: an English version of the decision is available as J 0016/1: link

EPO Headnote

Die Rückumschreibung einer vollzogenen Umschreibung im Europäischen Patentregister ist nicht ohne weiteres gerechtfertigt, wenn nachträglich Zweifel an dem hinreichenden Nachweis der behaupteten Rechtsnachfolge auftreten. Gegebenenfalls kommt vielmehr zugunsten des ursprünglich Eingetragenen die Aussetzung des Eintragungs- bzw. Einspruchsverfahrens in Betracht.

EPO Headnote (informal translation)

Undoing a completed registration of a transfer of a patent or patent application in the European Patent Register is not justified without more, when subsequently doubts occur about whether the proof of the alleged succesion in title is sufficient. Rather, suspension of the examination or opposition proceedings is to be considered in favour of the originally registered person.

"When a title to a European patent or patent application has been transferred and the European Patent Register has been amended to reflect this, it is not justified, if doubt later arises as to sufficient proof of succession in title,to undo the registration of the transfer. Nevertheless a request,(by the party having been registered before), for staying the grant and/or the opposition proceedings could be taken into consideration" (J 16/14)

Key points

• A transfer of a patent application was registered. The previous applicant was informed of the transfer. The previous applicant filed a protest and requested the transfer to be undone. The Legal Division reversed the transfer. The assignee (new owner) filed an appeal.
• The Board decides that the Legal Division was not correct in undoing the transfer, because a duly signed written contract had been submitted as evidence. Questions of whether the person signing on behalf of the assignor was had authority to sign and/or whether the transfer was unlawful, are beyond the scope of examination by the EPO. Because the assignee had been registered as applicant, he is deemed to be entitled in proceedings before the EPO (Article 60(3) EPC).
• The Board suspends proceedings under Rule 14, and considers the proceedings before the national courts regarding the invalidity of the transfer to be proceedings under Article 61.

Sachverhalt und Anträge

I. Die Beschwerde richtet sich gegen die Entscheidung der Rechtsabteilung vom 28. April 2014, mit der sie den Antrag der Beschwerdeführerin, sie wiederum als Anmelderin bzw. Patentinhaberin an den folgenden Patentanmeldungen und erteilten Patenten (im Folgenden "die betroffenen Anmeldungen und Patente") im Europäischen Patentregister einzutragen, zurückgewiesen hat:

Europäische Patentanmeldungen mit den Anmeldenummern
05 002 204.5 (Beschwerdeaktenzeichen J 22/14)
06 013 136.4 (Beschwerdeaktenzeichen J 16/14)
06 762 753.9 (Beschwerdeaktenzeichen J 21/14)
06 762 754.7 (Beschwerdeaktenzeichen J 20/14)
08 008 210.0 (Beschwerdeaktenzeichen J 17/14)

Europäische Patente
EP 1 907 634 (Beschwerdeaktenzeichen J 18/14)
EP 1 698 733 (Beschwerdeaktenzeichen J 19/14).

II. Dem liegt folgender Sachverhalt zugrunde:

Die Beschwerdegegnerin war ursprünglich als Anmelderin der genannten fünf Europäischen Patentanmeldungen und als Inhaberin der genannten beiden Europäischen Patente in das europäische Patentregister eingetragen. Als europäischer Vertreter war jeweils Herr Patentanwalt Weigel im Patentregister genannt. Mit Schreiben vom 23. Juni 2010 (für EP 1 698 733: 22. Juni 2010) hat Herr Patentanwalt Weigel beim EPA unter Berufung darauf, dass er sowohl die bisherige Anmelderin/Inhaberin als auch die zukünftige Anmelderin/Inhaberin der betroffenen Anmeldungen und Patente (die jetzige Beschwerdeführerin), vertrete, jeweils die Umschreibung des Registers auf die Beschwerdeführerin beantragt und zum Nachweis des Rechtsübergangs Auszüge aus einer Übertragungsvereinbarung ("Assignment Agreement") vom 25. März 2010 vorgelegt, die auf Seiten der Übertragenden von Herrn Richard Heindl, von Seiten der Erwerberin von Herrn Enrico Farroni als Präsident ihres Verwaltungsrats unterzeichnet war. Zum Nachweis der Vertretungsbefugnis des Herrn Richard Heindl für die Beschwerdegegnerin lag ein an diesen gerichtetes Schreiben vom 27. Oktober 2003 vor, in dem ihm von Herr Roberto Redondo Wendt als "President" der Beschwerdegegnerin bestätigt wurde, dass Richard Heindl zum CEO der Beschwerdegegnerin bestellt ist ("named and recognized as the CEO of PilePro LLC").

III. Die Umschreibung des Registers auf die Beschwerdeführerin wurde jeweils antragsgemäß vorgenommen.

IV. Hiergegen hat sich die Beschwerdegegnerin mit ihrem am 19. August 2011 beim EPA eingegangenen Schreiben gewendet und die Rückumschreibung oder hilfsweise die Aussetzung der Verfahren bis zum rechtskräftigen Abschluss des über die betroffenen Anmeldungen und Patente anhängigen Zivilverfahrens vor dem Kantonsgericht Zug (Schweiz) beantragt. Die Beschwerdegegnerin hat gerügt, dass Herr Patentanwalt Weigel betreffend die Umschreibverfahren keine Vertretungsmacht für sie besessen habe. Außerdem hat die Beschwerdegegnerin beanstandet, dass der Umschreibungsstelle die Übertragungsvereinbarung nur auszugsweise vorgelegen habe, weswegen die Umschreibung nicht hätte vorgenommen werden dürfen. Die Übertragungsvereinbarung sei auch nicht wirksam, denn Herr Richard Heindl habe keine alleinige Zeichnungsberechtigung für diese Vereinbarung besessen. Nach allgemeinen Rechtsgrundsätzen sei das EPA zum Widerruf von rechtswidrigen Verwaltungsakten, im vorliegenden Fall der Umschreibungen, verpflichtet. Jedenfalls aber seien alle anhängigen Verfahren vor dem EPA wegen einer einstweiligen Verfügung des Schweizerischen Kantonsgerichts Zug vom 1. September 2010, mit der der jetzigen Beschwerdeführerin unter Androhung von Zwangsmaßnahmen untersagt worden war, über die hier betroffenen Anmeldungen und Patente zulasten der jetzigen Beschwerdegegnerin Verfügungen zu treffen, auszusetzen. Die entsprechende Hauptklage sei fristgerecht bei dem Schweizerischen Kantonsgericht anhängig gemacht worden. [...]

T 0720/12 - Repeating arguments in appeal

EPO T 720/12

For the decision, click here

Key point

• In this case, the patentee as respondent argued that the appeal was inadmissible.
• The patentee seems to have argued that the opponent had only repeated earlier arguments and had not presented new arguments in appeal.
• The Board: " Further, the arguments in the cited paragraphs of point 3.1 of the statement deal with the decision, more importantly had to be repeated because they had not been taken into consideration in the impugned decision. This concerns the point made by the opponent that the portion (38) of the shaft (37) is "exposed" and "can be engaged directly", which is indeed not discussed in the impugned decision, points II.3.2 and II.3.4. This would imply that the impugned decision has insufficiently taken into account the opponent's arguments presented in the first instance proceedings. Such a repetition cannot lead to an inadmissible appeal (T 1188/08, supra, point 1.1).

Reasons for the Decision

1. Admissibility of the appeal

1.1 The respondent [Patentee] contests the admissibility of the appeal arguing that the statement setting out the grounds of appeal (hereafter referred to as the statement) fails to indicate the reasons why the decision under appeal is wrong or why it should be set aside, contrary to Article 108, third sentence, EPC and Rule 99(2) EPC.

1.2 For the respondent, the statement does not deal with the impugned decision, does not even refer to it, and merely repeats the earlier objections against the patent. For admissibility, the impugned decision is to be attacked, not the patent, the appeal proceedings being distinct proceedings and not affording to have a "second go" in opposition. In the present case, there is not even a request to set aside the impugned decision. For an appeal to be regarded admissible, an analysis of the reasons given in the impugned decision is required, which is missing in the present statement
(T 1188/08, points 1.1 and 1.4; T 95/10, point 1; T 349/09, points 4-6, 10; none published in OJ EPO; Case Law of the Boards of Appeal, 7th Edition, 2013, IV.E.2.6.3.b).

T 0098/13 - Inescapable trap by disclaimer

EPO T98/13
For the decision, click here

Key points

• Claim 1 as granted contained an undisclosed disclaimer in view of D1. D1 is a US patent and not an accidental disclosure. The disclaimer contravenes Art. 123(2). Simply removing it contravenes Art. 123(3) EPC.
• Hence, the case presents a cautionary example of the inescapable trap. The patentee submitted 35 auxiliary requests. None got the patent out of the trap.

Summary of Facts and Submissions

I. The proprietor appealed against the decision of the opposition division, posted on 17 October 2012, to revoke the European patent No. 1 547 443 B1. The statement of grounds of appeal was received on 25 February 2013.

II. The opposition division came to the conclusion that both the European patent as granted and the claims of the first auxiliary request contained subject-matter which extended beyond the content of the application as filed, contrary to Article 123(2) EPC, and that the proposed second auxiliary request infringed Article 123(3) EPC, while the third auxiliary request prima facie did not comply with the requirements following from Articles 84 and 123(2),(3) EPC.

J 0002/15 - Retraction of withdrawal

EPO J 2/15

For the decision, click here

Key points

• The case concerns the retraction of a withdrawal. The retraction was filed by fax on 21.02, published in the Register on 24.02 and the attempted retraction / correction under Rule 139 EPC was filed on 06.03. The expected publication date of the withdrawal in the European Patent Bulletin was 12.04.
• The request is refused, firstly because the withdrawal had been published in the Register. The publication in the Bulletin is not relevant (following J 1/11).
• The withdrawal is held to be not ambiguous or conditional, as argued by the patentee.

Summary of Facts and Submissions

I. This case concerns the retraction of a withdrawal of European patent application no. 04751794.1 with the title ALLOGENEIC CELL THERAPY: MIRROR EFFECT that was derived from the PCT application WO2004US14589 filed on 11 May 2004 in the name of Immunovative Therapies, Ltd. The application on 28 November 2005 entered into the European phase, and was given the internal reference number P51557D EP by the European representative.

II. On 21 February 2006, the applicant's European representative, Mr. Downing, wrote a facsimile letter to the European Patent Office requesting an unconditional withdrawal of the application. The facsimile mentioned the European application number (04751794.1), the applicant (Immunovative Therapies, Inc.), and provided the reference number "P51557D EP". The text was very short:
"We hereby withdraw the application on behalf of the applicant. We request a refund of any fees possible, in particular the examination fee."

T 0083/05 - Broccoli III

EPO T 0083/05 

For the decision, click here [C]

Key points

• This case is the follow-up of G 2/13.
• Claim 1 at issue is for: " An edible Brassica plant produced according to a method for the production of Brassica oleracea with elevated levels of 4-methylsulfinylbutyl glucosinolates, or 3-methylsulfinylpropyl glucosinolates, or both, which comprises..."
• The Board recalls that in its first decision T 83/05, it had already decided that the then pending Main Request complied with Articles 545, 56, 83 and 123(2) EPC. The ratio decidendi of that decision also applies to the present decision. Decision G 2/13 indicates that the present product claims are allowable under Article 53(b) EPC. Therefore, the claims are allowable.

Reasons for the Decision

1. The board ruled in its second interlocutory decision, supra, that the ratio decidendi of its first interlocutory decision (see section IV above), according to which the main request fulfilled the requirements of Articles 54, 56, 83 and 123(2) EPC, applied (see also section VIII above). In the same decision the board also held that the plants and parts of plants claimed did not fall under the exclusion of plant varieties as laid down in Article 53(b) EPC and defined in Rule 26(4) EPC (see section VIII above and the second interlocutory decision of 8 July 2013, supra, point 16). The ratio decidendi of this interim decision of the board also applies to the main request.

2. The ruling in decision G 2/13 of the Enlarged Board of Appeal of 25 March 2015, supra, has clarified that the process exclusion contained in Article 53(b) EPC has no negative impact on the allowability of product claims as contained in the respondent's main request.

3. The appellants have not submitted any arguments that the ruling in decision G 2/13 of the Enlarged Board of Appeal of 25 March 2015, supra, does not apply to the subject-matter of the claims of the main request. The board has none either.

4. Accordingly, the board decides that the main request complies with the requirements of the EPC.

5. In view of the fact that the order of the present decision is in line with the respondent's final request (1) (see section XIV above) and that the appellants have no further objections (see sections XII and XIII above), no further oral proceedings are required.

6. Irrespective of whether or not the appellants' latest submissions before the board can be interpreted as implying - as argued by the respondent (see section XIV above) - that the appellants had no objections to the pages of the amended description submitted by the respondent with the letter dated 22 May 2015 (see section XI above), the board exercises its discretion under Article 111(1) EPC to remit the case to the department of first instance to adapt the description in order to avoid a further prolongation of the appeal proceedings and consequent delay in the final decision of the board in this case.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance with the order to maintain the patent on the basis of the following documents:

- claims 1 to 5 of the main request filed with the letter dated 29 April 2011,

- a description yet to be adapted thereto, and

- figures 1 to 5 as granted.

T 1155/11 - Shared priority

EPO T 1155/11

For the decision, click here.

Key points

• An EQE DII-like case. The patent claims two priority dates. D9 is a possible  article 54(3) EPC document claiming 3 priority dates, the last priority dates are of both are based on the same priority document.

Summary of Facts and Submissions

I. The appeal lies from the decision of the Examining Division to refuse the European patent application No. 09165318.8. The application concerns allocating defect management areas on a dual-layer write-once optical recording medium.

II. The present patent application No. 09165318.8 was filed as a divisional from European patent application No. 03815869.7 granted as European patent No. 1 595 251. The parent application originated from international application No. PCT/KR2003/002025 filed on 1 October 2003 and published as WO 2004/072963. Each of these applications claimed priority from the following Korean applications and respective filing dates
- KR 10-2003-0009895 of 17 February 2003, and
- KR 10-2003-0023876 of 16 April 2003.

T 0327/13 - Appeal with broader claims inadmissible

EPO T 327/13

For the decision, click here. [C]

Key points

• The OD found claim 1 of the patent as granted (Main Req.) to be not novel, and held claim 3 (Aux. Req. 1) to be allowable.
• In appeal, the patentee submits a main request, with two independent claims, corresponding to claims 2 and 3 of the patent as granted. 
• Hence, the patentee does not defend the Main Request as filed before the OD. 
• The Board decides that the appeal is inadmissible under Article 107 (not adversely affected) and Rule 99(2) (no substantiation).
• Compare T 1682/13 for a different result of the admissibility an appeal with broader claims in appeal.

Reasons for the Decision

1. The contested decision

1.1 The Opposition Division refused the proprietors' main request for lack of novelty of claim 1 in view of D1, and held that claim 1 of the proprietors' auxiliary request 1 was allowable.

1.2 The subject-matter of claim 1 of the main and auxiliary request 1 addressed in the decision corresponds essentially to that of granted claim 1 and granted dependent claim 3, respectively.

T 1354/11 - Announcing requests is not filing

EPO T 1354/11

For the decision, click here

Key points

• This case provides various interesting points.
• A one-page sheet with calculations submitted during oral proceedings was not admitted, in part because it referred to two publications which were not filed.
• Combining claims 1 and 2 of the patent as granted contravened Article 123(2) EPC, in view of the further dependent claims:
  " Claim 1 of auxiliary request 7 is based on a combination of granted claims 1 and 2. While granted claims 1 and 2 are not objected to under Article 123(2) EPC, there is no basis in the application as filed for all new combinations of features arising in the dependent claims, in view of the fact that the granted dependent claims were not dependent on granted claim 2."
• The auxiliary request wherein the dependent claims were deleted, was not admitted, because
  the Board had indicated the issue in the summons. The patentee had mentioned stated in its letter: " that it would be prepared "to file a replacement Auxiliary Request 7 from which the dependent claims (...) are removed", but it did not submit such amended request until the oral proceedings. Hence, in spite of being aware of the objections with respect to the dependent claims of auxiliary requests 7 and 8 more than half a year before the oral proceedings, the respondent chose not to file requests limited to the subject-matter of respective independent claims 1 in order to set out its case and determine the framework for discussion at the oral proceedings in good time."

Reasons for the Decision

1. The appeal is admissible.

2. Admissibility of documents D18 and D19

[...]

3. Admissibility of evidence filed at oral proceedings

3.1 At oral proceedings, the respondent submitted a one-page handout comprising a calculation of the resistance to flow through tissue.

T 2078/13 - Disclosure in drawings

EPO T 2078/13

For the decision, click here

Key points

• In this case, the Board accepts that a claimed feature was disclosed in the drawings.
• " The skilled person would therefore understand that the location of the ground line GND and the power supply line VDD in relation to the other components of the display device shown in Figure 2a is not fortuitous, but significant for achieving the object of the inven­tion. The skilled person would thus regard the location of the GND and VDD lines as belonging to the teaching of the invention"
• Hence, " not fortuitous"  and " significant for achieving the object of the invention" are the key criteria for using the drawings as basis under Article 123(2) EPC.

Reasons for the Decision

1. Amendments

1.1 In the decision under appeal the examining division held that the subject-matter of the claims according to the requests then on file extended beyond the content of the application as filed. In particular, it was held that various intermediate generalizations could be identified.

T 0169/12 - New attacks in appeal

EPO T 169/12

For the decision, click here.

Key points

• The opponent-appellant cited two new documents for the first time in appeal.
• The Board finds that this in principle could be allowed, if it was a normal reaction to a late turn of events in the opposition proceedings, or some other exceptions. None of the exceptions applies in the particular case. 
• " The objections are such as to confront the Board with further fresh cases, in particular in the present situation of the claims subject of the decision under appeal being the independent granted claims 1 and 34, i.e. without any amendments.
  The procedural behaviour of the appellant is comparable with the behaviour of a patent proprietor who has not submitted necessary (auxiliary) requests at the opposition stage which in effect prevented the Opposition Division from giving a reasoned decision on their critical issues. In the present case this would compel the Board either to give a first ruling on those issues or to remit the case to the Opposition Division. This is, however, not in line with the nature of the appeal proceedings, leading the Board to exercise its powers under Article 12(4) RPBA" (further referring to T 1067/08; T 936/10; T 1125/10; T 1500/10; T 911/11; T 1400/11).

Reasons for the Decision

1. Sufficiency of disclosure (Article 100(b) EPC)

The Board considers that the skilled person, when reading the entire disclosure of the patent as granted, would understand what is meant by the definition "configured to allow each shaving aid portion to deflect when pressure is applied to a surface of the shaving aid portion during shaving" as contained in claims 1 and 34 of the patent as granted and how a razor with the claimed shaving cartridge is to be used.

T 0274/12 - Tacit secrecy agreement

EPO T 274/12

For the decision, click here [C] / DE.

Key points

• The decision deals with prior use in the sphere of the opponents and an alleged tacit secrecy agreement. What is the required standard of proof.
• The present Board follows the decision of the BGH 9 december 2014 (X ZR 6/13 (BPatG); Presszange): in case of talks about a product which is to be developed, a tacit secrecy agreement is to be assumed. The opponent has the burden of proof to show that at least one talk was not subject to such tacit secrecy agreement.
• Failure to mark some drawings as confidential is not prejudicial to the secrecy.
• A series of talks was held with seemingly essentially all players in the industry. This was not prejudicial to secrecy.
• The opponents have not succeeded in their burden of proof of showing that the talks about the to be developed products were not secret.

Entscheidungsgründe

4.2 Im vorliegenden Fall haben sich die Beschwerdeführerinnen zum Nachweis einer offenkundigen Vorbenutzung auf die ihrer Auffassung nach durch die Dokumente F19, F20 und F30 belegten Kontakten zwischen der Firma Bear und den potentiellen Zulieferfirmen Varian Inc, BOC Edwards und später Pfeiffer Vacuum im Zusammenhang mit der Entwicklung eines neuen Produktes ("CUB 800 Mass spectrometer")berufen.

Umstritten ist, unter welchen Umständen die Gespräche stattgefunden haben und - insbesondere - ob die Beteiligten einer stillschweigend vereinbarten Geheimhaltungspflicht unterlagen.

T 0254/10 - About is vague

EPO T 0254/10

For the decision, click here

Key points

• For the Second Auxiliary Request, the board confirms that: " It is established jurisprudence of the boards of appeal that a very rigorous standard, namely that of beyond any reasonable doubt, is to be applied when examining the allowability of amendments under Article 123(2) and (3) EPC." 
• The Board further decides that a range defined as " about less than 1%" is not clear and contravenes Article 84, in particular because the features is intended to distinguish over the prior art.

Reasons for the Decision
[...]

5.5 The board concurs with the respondent that the opposition division applied the wrong standard when considering Article 123(3) EPC. It is established jurisprudence of the boards of appeal that a very rigorous standard, namely that of beyond any reasonable doubt, is to be applied when examining the allowability of amendments under Article 123(2) and (3) EPC. If there is the slightest doubt that the unamended patent could be construed more narrowly than the patent as amended, and apparently the opposition division had such doubts, the amendments should not be allowed (cf. T 113/86 of 28 October 1987, point 2.2 of the Reasons; T 307/05 of 27 February 2007, points 3.3.1 and 3.3.2 of the Reasons).

5.6 For the aforementioned reasons, the board concludes that the amendments in claim 8 of the second auxiliary request do not comply with Article 123(3) EPC.

[...]

Fourth auxiliary request

7. Article 84 EPC 1973

7.1 Claim 1 of auxiliary request 4 differs from claim 4 as granted in that features (a) to (c) have been replaced by the feature "and about less than 1% total of 8,10 octadecadienoic acid, 11,13 octadecadienoic and trans-trans octadecadienoic acid".

In these circumstances, the board has the power under Article 101(3) EPC to examine whether the amendment introduces any contravention of requirements of the EPC, including Article 84 EPC 1973 (cf. T 301/87, OJ EPO 1990, 335, point 3.8 of the Reasons, confirmed in G 3/14 of 25 March 2015, paragraph 87 of the Reasons).

7.2 Article 84 EPC 1973 in combination with Rule 29(1) EPC 1973 requires that the claims must be clear and define the matter for which protection is sought in terms of the technical features of the invention. These requirements serve the purpose of ensuring that the public is not left in any doubt as to which subject-matter is covered by a claim and which is not. A claim cannot be considered clear in the sense of Article 84 EPC if it does not unambiguously allow this distinction to be made (cf. G 2/88, OJ EPO 1990, 93, point 2.5 of the Reasons). A claim comprising an unclear technical feature therefore entails doubts as to the subject-matter that the claim covers. This applies all the more if the unclear feature is essential with respect to the invention in the sense that it is intended to delimit the claimed subject-matter from the prior art, thereby giving rise to uncertainty as to whether or not the claimed subject-matter is anticipated (cf. T 560/09 of 20 January 2010, point 2 of the Reasons).

7.3 In the present case, the level of undesired isomers is essential to the invention, which aims at providing a safe and defined product suitable for consumption by animals and humans. This level also distinguishes the claimed compositions from those of the prior art (see page 3, paragraph [0010], of the patent in suit). It is therefore essential that this level is clearly defined.

However, claim 1 of auxiliary request 4 lacks a clear boundary in this respect, due to the use of the vague expression "about less than 1%", with the consequence that the skilled person is not able to establish with certainty which subject-matter is covered by claim 1 and which is not. Merely to illustrate this point, the board notes that it is not at all clear whether a composition with, for example, 1.4% total of undesired isomers falls within the scope of claim 1 or not.

7.4 The appellant, who had been made aware of this objection in the board's communication accompanying the summons to oral proceedings, did not provide any arguments in this respect.

7.5 For the above reasons, the board concludes that claim 1 of auxiliary request 4 does not comply with Article 84 EPC 1973.

8. Remittal

Since the board has come to the conclusion that the patent as granted cannot be maintained pursuant to Article 100(c) EPC 1973 and that the first to fourth auxiliary requests are not allowable under Article 123(2) or (3) or Article 84 EPC, there is no room for a decision on remittal of the case to the department of first instance.

Order

For these reasons it is decided that:

The appeal is dismissed.

T 0454/12 - Unclear feature and novelty

EPO T0454/12

For the decision, click here.

Key points

• The patentee submitted the argument that feature (h) was so broad, that it had to be interpreted narrower in order to make technical sense. The Board does not accept this argument. 
• The Board:
  " Allein die Breite eines einzelnen beanspruchten Merkmals ist kein Anlass, nach einer engeren Auslegung dafür zu suchen, weil gemäß Artikel 84 EPÜ 1973 erster Satz, die Patentansprüche den Gegenstand angeben, für den Schutz begehrt wird. Sofern ein engerer Schutzbereich beabsichtig wird, muss sich dieser nach Artikel 84 EPÜ 1973 erster Satz im Anspruchswortlaut wiederfinden. "
  
  

Sachverhalt und Anträge
[...]

VI. Anspruch 1 in der erteilten Fassung (Hauptantrag) lautet wie folgt, wobei die Merkmalsgliederung a bis h von der Kammer hinzugefügt worden ist:

"Sicherheitselement (40) zur Absicherung von Wertgegenständen,

T 0805/13 - Unclear reference

EPO T 0805/13

For the decision, click here  (online on date: 07.07)

Key points

• In this opposition appeal, a clarity objection was raised against dependent claim 8. This claim specified further features of a certain element first introduced in claim 5. Claim 8 was also dependent on claim 4. However, this was not open to examination in opposition, since the same unclarity was present in the claims as granted (G 3/14).

4.2 Artikel 84 EPÜ 

Der Begriff "topfartig" wird als ausreichend klar angesehen. Töpfe sind dem Fachmann aus der allgemeinen Lebenserfahrung bekannt. Die Existenz eines in der Beschreibung genannten, radial äußeren, sich näherungsweise in Achsrichtung einer Drehachse erstreckenden Randbereichs und die Darstellung in den Zeichnungen ist in Einklang mit dem Begriff eines "topfartigen Gehäuseteils". Der Randbereich eines Topfes ist dabei typischerweise gefäßartig geschlossen. Auch die Beschwerdeführerin selbst hat bei Ihrem Angriff gegen den Hauptantrag unter Artikel 123(2) EPÜ den Begriff "topfartig" so ausgelegt, dass die topfartigen Gehäuseteile ein gekapseltes und damit geschlossenes Gehäuse ergeben würden, welches dann notwendigerweise mit Aussparungen in der Zwischenplatte versehen sein müsse.

Der Klarheitseinwand gegen den abhängigen Anspruch 8 beruht auf einem unklaren Rückbezug. Das dort erwähnte Nachstellelement werde erst in Anspruch 5 eingeführt, so dass der Rückbezug auf Anspruch 4 unter Verwendung des bestimmten Artikels für das Nachstellelement als unklar anzusehen wäre. 
Diese geltend gemachte Unklarheit findet sich jedoch so bereits im erteilten Anspruchssatz: Das in Anspruch 13 mit bestimmtem Artikel verwendete Nachstellelement ist nicht in Anspruch 9 (auf den Anspruch 13 ebenfalls rückbezogen ist) definiert, sondern wird erst in Anspruch 10 eingeführt. Da die beanstandete Verletzung des Artikels 84 EPÜ also nicht durch während des Einspruchs- bzw. Einspruchsbeschwerdeverfahrens eingefügte Änderungen eingeführt wurde, kann die Kammer diesen Einwand im Rahmen der Prüfung gemäß Artikel 101(3) in Verbindung mit Artikel 84 EPÜ nicht prüfen (G 3/14, Schlagwort).

T 1830/11 - Attacking new claims in appeal

EPO T 1830/11 [C]

For the decision, click here.

EPO Headnote

La CBE ne comprend pas de dispositions imposant à l'opposante de fournir des moyens de preuve à l'encontre de chacune des positions de repli possibles définie dans les revendications dépendantes. Aussi, lorsque des modifications dans le jeu de revendications sont faites à la procédure orale devant la division d'opposition, y compris lorsque la revendication 1 est modifiée de telle manière à inclure les caractéristiques d'une revendication dépendante du brevet tel que délivré, l'obligation de fournir des éléments de preuve "en temps utile" selon l'article 114(2) CBE peut, en fonction des circonstances, se présenter qu'au moment du dépôt du mémoire exposant les motifs du recours (point 1).

EPO Headnote (own translation)

The EPC does not contain provision which require the opponent to provide evidence against each of the possible fall-back position defined in the dependent claims. Moreover, when changes in the set of claims are made at the oral proceedings before the Opposition Division, including the case that claims 1 is amended so as to include the features of one of the dependent claims of the patent as granted, the obligation to provide evidence "in good time" under Article 114(2) EPC may, depending on the circumstances, appear at the time of filing the statement of grounds. 

Key points

• Before the OD, lack of inventive step had been argued based on D1+D3 or D4+D3. The opponent filed filed D8 with its statement of grounds. During OP before the OD, claims 1 and 10 were combined. 
• The Board decides to admit D8, for the reasons given in the headnote, because the combination of claims 1 and 10 still could surprise the opponent. 
• The Board decides to not remit the case, and maintains the patent in amended form based on an auxiliary request.

Motifs de la décision

1. Recevabilité du document D8

1.1 Le document D8 a été déposé pour la première fois avec le mémoire exposant les motifs du recours. Son admission dans la procédure est donc soumise au pouvoir discrétionnaire de la chambre tel que défini à l'article 12(4) RPCR.

T 0467/13 - Broader claims in appeal II

EPO T 0467/13

For the decision, click here (online on date 07.07)

Key points

• See also T 1682/13 , published online on the same date, of another Board.
• Before the OD, the main request was amended compared to the claims as granted. In appeal, the patentee request that the patent is maintained as granted. 
• The Board first notes that considers the assertion of the patentee, that the OD had refused to decide on the patent as granted, to be not proven, because such refusal was noted in the minutes. The patentee had not requested correction of the minutes.
• Admitting such request is at the discretion of the Board, according to established case law. 
• The Board does not admit the request, one of the reasons being that the patentee had not explained why the claims of the patent as granted were patentable. 

Sachverhalt und Anträge

I. Gegen den Widerruf des europäischen Patents Nr. 1 397 391, europäische Anmeldung Nr. 02735345.7 (basiert auf der internationalen Anmeldung PCT/EP02/05073, veröffentlicht als WO 02/90391) wurde Beschwerde eingelegt.

[...]

IV. Die angefochtene Entscheidung erfolgte somit auf Grundlage eines gegenüber dem erteilten Patent geänderten Hauptantrags sowie eines ebenfalls geänderten Hilfsantrags. Der Hauptantrag verstieß gegen die Erfordernisse von Art. 84 (insbesondere im Hinblick auf "pasteuse Masse") und Art. 123(2) EPÜ, der Hilfsantrag gegen Art. 123(2) EPÜ.

V. Gegen diese Entscheidung legte die Patentinhaberin Beschwerde ein. In der Beschwerdeschrift wurde beantragt, den Einspruch als unbegründet zurückzuweisen. Zusammen mit der Beschwerdebegründung wurden jedoch ein geänderter Anspruchssatz als Hauptantrag sowie zwei geänderte Anspruchssätze als 1. und 2. Hilfsantrag eingereicht. In dem Anspruch 1 des Haupt- sowie des ersten Hilfsantrags war der Ausdruck "pasteuse Masse" weiter anwesend.

T 0538/09 - The Examiner's own thesis

EPO T 0538/09

For the decision, click here.

Key points

• The Examiner cited his own master's thesis as closest prior art. Resulting in this somewhat curious appeal.
• The applicant alleges that the first examiner had been not impartial, and that the thesis was not publicly availble, without success. " As in T 151/99, the Board finds it highly plausible that an academic thesis is not confidential."
• The Board decides that the claims are not novel and inventive over D1. 
• The applicant had filed written statements by a technical expert. These do not convince the Board: " In the opinion of the Board, the statements do not provide sufficient evidence to counter the arguments given above; they simply repeat or complement the argumentation of the representative." 
• The Board discusses reimbursement of the appeal fee, and does not order so, because there had been no procedural violation. However, neither is the appeal allowed which seems the first requirement for reimbursement.

Reasons for the Decision

1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

Right to be heard

2. In the grounds of appeal the appellant alleged that the examination proceedings had not been conducted properly in the context of Article 113(1) EPC and the "partiality" of the first examiner. In oral proceedings before the Board the appellant did not withdraw these allegations.

T 2618/11 - Disclosed or undisclosed disclaimer

T 2618/11

For the decision, click here

Key points

• In the application as filed, the peroxide compound ACSP was discussed in the application as filed in respect of the prior art. The application as filed mentions that this peroxide is not effective.
• The claim at issue included the feature: "using one more organic peroxides not including acetyl-cyclohexyl-sulfonyl-peroxide (ACSP)".
• The Board decides that this is a disclaimer and that it is not allowable: the disclaimer is not a disclosed disclaimer (G2/10) since the disclaimed compounds are not disclosed as part of the subject-matter of the invention, neither is it  allowable as undisclosed disclaimer (G1/03) because an undisclosed disclaimer can not be used to exclude non-working embodiments.

Summary of Facts and Submissions

II. The patent was granted with a set of 7 claims, claim 1 reading as follows:

"Process to polymerize vinyl chloride monomer and optional further monomers using one or more organic peroxides, with at least part of the peroxide being dosed in the polymerization mixture at the reaction temperature, characterized in that essentially all of the organic peroxide used in the polymerization process has a half-life of from 0.05 hour to 1.0 hour at the polymerization temperature, the vinylchloride based (co)polymer having less than 50 parts by weight of residual peroxide based on one million parts by weight of the (co)polymer, when measured immediately after polymerization and drying of the (co)polymer for 1 hour at 60°C".

[...]

Claim 1 of the [third] auxiliary request corresponded to the main request, but introduced the following wording after the phrase "organic peroxides":

"not including acetyl-cyclohexyl-sulfonyl-peroxide (ACSP),".

Claim 1 of the [fourth] auxiliary request corresponded to the main request but introduced the following wording after the phrase "organic peroxides": "not including acetyl-cyclohexyl-sulfonyl-peroxide (ACSP) and peroxydicarbonates,".

X. The arguments of the appellant/patent proprietor can be summarised as follows: [...]

c) Third and fourth auxiliary requests

The compounds excluded by disclaimer were discussed in the application as not being suitable, which statement had resulted in an objection pursuant to Art. 83 EPC during the opposition procedure. Said statement provided a basis for the exclusion of said compounds by "disclosed disclaimer".

Reasons for the Decision

4. Third and fourth auxiliary requests

4.1 The objections raised in respect of the main request also apply to the third and fourth auxiliary requests, since the corresponding parts of the claims do not differ.

4.2 Regarding the "disclaimer" type formulations, the compounds specified are discussed in the application as filed in respect of the prior art and it is said that said peroxides are not effective. Consequently it is apparent that the purpose of the disclaimer is not to exclude novelty destroying subject-matter but to exclude subject-matter that seemingly would not solve the technical problem, i.e. to address a potential defect pursuant to Art. 56 EPC. As held in G 1/03, in such a case a disclaimer is not admissible.

Since the disclaimed compounds are not disclosed as part of the subject-matter of the invention, the findings of decision G2/10 on so-called "disclosed disclaimers" is also not applicable. For this reason, too, the claims 1 of the third and fourth auxiliary requests do not meet the requirements of Art. 123(2) EPC.

4.3 The third and fourth auxiliary requests are therefore refused.

T 1592/11 - Medical method

EPO T 1592/11

For the decision, click here. 

Key points

• The claim at issue was for "a method of dispensing a dose of medicament from [...] an injection device". The Board finds this to be an unallowable medical method (G 1/07), because it encompasses the step of administering insulin or an insulin-type medicament to a human body (as mentioned in the description). 
• The Board finds that in such case, there is no scope for arguing that the exception of T 245/87 applies that the method is without any functional link between the claimed method and the effects produced by the device on the body (G 1/07, Reasons 4.3.2)
• The proprietor tried adding as disclaimer "the medicament is not administered to a human or animal body". The Board finds this to contravene Art. 84 because "a medicament is a substance used in therapy a method of dispensing a dose of medicament primarily implies that the medicament is administered to a human or animal body. To define that it is not appears to be an oxymoron".

Summary of Facts and Submissions

Claim 3 of auxiliary request XIII reads as follows:

"3. A method of dispensing a dose of medicament from a medicament cartridge within an injection device according to any of claims 1 or 2 comprising the steps of causing the drive mechanism (42) to act on the bung (48) at a first speed; and causing the drive mechanism (42) to act on the bung (48) at a second speed thereafter, wherein the first speed is faster than the second speed."

T 1880/10 - Inventive advertisement delivery

EPO T 1880/10

For the decision, click here

Key points

• This case concerns an application titled "advertising delivery method", claiming a method for "delivering and reporting delivery of targeted assets to viewers of a broadcast network". The method comprises a step of determining "a female audience gender value" based on the viewed program. A table is used listing the "programs, categories and genres and, for each entry in the table, an audience composition value determined from ratings data of the gender composition of the viewers for a given program".
• The Board acknowledges inventive step because: "as convincingly argued by the appellant, these features contribute to the technical solution of the problem of how to provide more efficient delivery of targeted assets which can take account of a gender make-up of a current audience in real time without compromising the privacy of the audience." The assets are e.g. advertisements. 
• Hence, the problem of "how to provide more efficient delivery of targeted [advertisements]"  is considered to be technical. 
• It may be relevant that the claim recites a formula:
  "updating the female audience gender value and the male audience gender value according to the equations F' = (k*F) + (1-k)*C' [and] M' = (k*M) + (1-k)*(1-C'), where F' is an updated female audience gender value, F is a previous female audience gender value, M' is an updated male audience gender value, M is a previous male audience gender value, C' is an audience composition value, and k is a decay constant based on a sampling period".
  This post was edited for conciseness and accuracy.

Summary of Facts and Submissions

I. The appeal is against the decision of the examining division to refuse European patent application No. 01 305 034.9 under Article 97(2) of the European Patent Convention (EPC).

VIII. Claim 1 of the sole request reads as follows:

"A method of delivering and reporting delivery of targeted assets to viewers of a broadcast network, the method comprising the steps of operating a processor at a subscriber device (10):

T 0468/13 - Appeal against grant

EPO T 468/13

For the decision, click here

Key points

• In this case, the applicant noted after (publication of the mention of the) grant that some errors were not corrected in the description. He filed an appeal, submitting the corrected description. Interlocutory revision was granted. This is an (expensive and timewise limited) alternative to Rule 140, since use of Rule 140 in such cases was ruled out by G 1/10.
• Interestingly, interlocutory revision was granted despite the patent being granted in conformity with the Druckexemplar approved by the applicant. 
• The present decision of the Board concerns the request for reimbursement of the appeal fee, which was made on the ground that the changes in the description had already been filed before the R71(3) communication, but were erroneously not taken into account in the Druckexemplar. According to the Board, this does not amount to a substantial procedural violation, because the applicant had approved the Druckexemlar. 

Summary of Facts and Submissions

I. The present decision concerns the appellant's request for reimbursement of the appeal fee submitted in connection with the appeal filed against of the decision of the examining division dated 15 November 2012 granting a European patent in respect of application number EP 08706692.4.

II. The essential steps preceding the filing of the appeal were as follows:

The examining division issued a communication dated 18 July 2012 pursuant to Rule 71(3) EPC indicating the text in which it was proposed to grant a patent.

With a letter dated 6 November 2012, the applicant approved the text and completed the necessary formalities. The decision to grant was duly posted on 15 November 2012.

In a fax letter dated 24 January 2013, the applicant requested a correction under Rule 140 EPC to the effect that page 4 of the patent should be deleted, as had been requested in the applicant's earlier letter dated 2 February 2011.

In the minutes of a telephone conversation between the formalities officer and the applicant's representative dated 25 January 2013, the applicant was informed that correction under Rule 140 EPC was not possible and that the only possibility to set aside the decision was to file an appeal.

III. The applicant filed a notice of appeal on the same day. In the notice of appeal, the appellant requested that the "false decision" be set aside and a "corrected patent" be granted. It was stated that a written statement setting out the grounds of appeal had been filed with the letter dated 24 January 2013. The appellant requested reimbursement of the appeal fee.

IV. By means of a communication dated 27 February 2013, the examining division ordered rectification pursuant to Article 109 EPC and set aside the decision to grant. However, it was stated that the request for reimbursement of the appeal fee could not be allowed and that the request would be forwarded to the Board of Appeal for a decision (Rule 103(2) EPC).

V. Following commencement of proceedings before the board, the board issued a communication in which the appellant was informed of the reasons why the board considered that the appeal fee should not be reimbursed.

In a response to the board's communication dated 21 July 2015, the appellant requested that the board decide on the basis of the documents currently on file.

Oral proceedings have not been requested.

Reasons for the Decision

1. As the examining division granted interlocutory revision under Article 109 EPC, the only matter to be decided by the board is the request for reimbursement of the appeal fee.

2. In accordance with Rule 103(1)(a) EPC, "The appeal fee shall be reimbursed ... in the event of interlocutory revision ... if such reimbursement is equitable by reason of a substantial procedural violation". Other reasons for reimbursing the appeal fee are if the appeal is withdrawn before filing the statement of grounds of appeal (Article 103(1)(b) EPC), or if the appeal is deemed not filed, neither of which apply here.

3. The board notes that the appellant has not explicitly alleged that a substantial procedural violation was committed by the examining division. The board has however considered whether the failure to take into account the applicant's request to amend the description dated 2 February 2011 amounts to a substantial procedural violation which would render equitable the reimbursement of the appeal fee. It finds this not to be the case, for the reasons set out below.

4. With the communication under Rule 71(3) EPC dated 18 July 2012, the examining division informed the applicant of the text in which it intended to grant the patent. Thereby, the applicant was given the opportunity to check the text of the patent to be granted.

After receipt of the Rule 71(3) EPC communication the applicant did not request a correction of the description, but instead, with the letter dated 6 November 2012, expressly approved the text of the patent. German and French translations of the claims were duly filed. The fees for grant and printing were duly paid on 24 October 2012. Thus the text communicated with the Rule 71(3) EPC communication was also deemed approved under Rule 71(5) EPC. Therefore, the text in which the patent was granted corresponded to the text approved by the applicant. Consequently, no substantial procedural violation can be identified with respect to the procedure to grant.

With regard to the earlier request dated 2 February 2011 to amend the description mentioned in the statement of grounds, the Enlarged Board of Appeal has established that if, given the opportunity to check the patent text before approving it, an applicant does not draw any errors to the attention of the examining division and thus ensure his approval is limited to the correct text, then the responsibility for any errors remaining in that text after grant should be his alone (cf. G 1/10, Reasons for the Decision, point 11). In this light, the failure of the examining division to take account of the applicant's earlier request was not a substantial procedural violation which could have rendered reimbursement equitable (cf. Rule 103(1)(a) EPC).

5. The appellant has provided no counter-arguments.

6. It follows that the request for reimbursement of the appeal fee must be refused.

Order

For these reasons it is decided that:

The request for reimbursement of the appeal fee is refused.

T 1436/12 - Incorporation by reference

EPO T 1436/12

For the decision, click here [C].


Key points

• The applicant wishes to rely on feature mentioned in another patent application which is incorporated by reference in the description at issue. However, the reference was to "commonly assigned, U.S. Patent Application Serial No. [Attorney Docket No. 53807-00023USPT] filed concurrently herewith", this US patent application was not yet published, therefore does not meet the requirement that "a copy of the document was available to the EPO, or to the receiving Office if the application is a Euro-PCT application which was not filed at the EPO as the receiving Office, on or before the date of filing of the application".
• The applicant tries to change the reference into a reference to the PCT application which was concurrently filed with the EPO as receiving office, as amendment or as correction of error. The Board does not allow this, since it was not directly and unambiguously derivable (or immediately evident) that such PCT application was intended.
• This result can be compared with T 0737/90, about  the following reference:
  "In patent application Serial No. ........, filed concurrently herewith and assigned to the assignee of the present invention there is disclosed ...".
  That was found to be enabling, since the skilled person could retrieve that document. 

Summary of Facts and Submissions

III. Page 8 of the description as originally filed contained the follow­ing paragraph:

"Further specific features and details of the layered architecture, including the SwBP software structure that enables the internal communication between modules within the mobile platform assembly are described in commonly assigned, U.S. Patent Application Serial No. [Attorney Docket No. 53807-00023USPT] filed concurrently herewith, the disclosure of which is hereby incorporated by reference."

Page 8 as filed with letter dated 10 November 2011 was amended so that it now referred to a "[...] commonly assigned, PCT Patent Application [Attorney Docket No. 53807-00023USPT] filed concurrently herewith [...]".