T 2125/11 - Postponement oral proceedings

EPO T 2125/11 - link
Key pionts

• The patent proprietor was a Jewish natural person who was represented by a professional representative. The Board decides that these circumstances are insufficient to postpone oral proceedings scheduled to be held on the day of Yom Kippur.
• In particular, the serious reasons justifying a postponement need to apply to the professional representative, not to the patent proprietor. In addition, the request for postponement had not been filed as soon as possible. 

VIII. Die von der Beschwerdeführerin vorgebrachten entscheidungsrelevanten Argumente lassen sich wie folgt zusammenfassen:

Die für den 23. September 2015 anberaumte mündliche Verhandlung solle verschoben werden, da der Beschwerdeführer jüdischen Glaubens sei und an diesem Tag der wichtigste Feiertag des jüdischen Kalenders, Yom Kippur, liege.

Entscheidungsgründe

6. Prozedurale Aspekte - Antrag auf Terminverschiebung

6.1 Der Beschwerdeführer wurde durch einen zugelassenen Vertreter im Sinne von Artikel 133(3) und 134 EPU repräsentiert. In seinem obengenannten Schreiben vom 9. Juli 2015 hat er nicht dargelegt, warum dieser Vertreter an der Teilnahme an der mündlichen Verhandlung gehindert ist. Die in der "Mitteilung des Vizepräsidenten der Generaldirektion 3 des EPA vom 16. Juli 2007 über mündliche Verhandlungen vor den Beschwerdekammern des EPA" (AB1. EPA 3/2007, Seite 115) genannten schwerwiegenden Verhinderungsgründe beziehen sich in einer solchen Situation auf den Vertreter und nicht auf den Mandanten.

6.2 Gemäss Artikel 15(2) VOBK und Punkt 2 der obengenannten Mitteilung des Vizepräsidenten der Generaldirektion 3 muss ein Antrag auf Terminverschiebung sobald wie möglich gestellt werden. Im vorliegenden Fall erging die Ladung zur mündlichen Verhandlung bereits am 28. Mai 2015. Da die vom Beschwerdeführer für die Verschiebung vorgebrachten Gründe schon zu diesem Zeitpunkt bestanden haben, hätte die Verschiebung bereits in unmittelbarer Reaktion auf diese Ladung beantragt werden können und müssen, und nicht erst mehr als einen Monat später.

6.3 Selbstverständlich ist das Europäische Patentamt bemüht, religiöse Bedürfnisse und nationale Traditionen zu respektieren und so weit wie möglich zu berücksichtigen. Es ist aus praktischen Gründen jedoch nicht möglich, nationale und religiöse Feiertage in allen Ländern der Welt als schwerwiegenden Verhinderungsgrund für eine Teilnahme an einer mündlichen Verhandlung zu akzeptieren (J 5/98, Punkt 7 und T 664/00, Punkt 3). In diesem Zusammenhang sei angemerkt, dass das Europäische Patentamt selbst an nationalen Feiertagen von vielen seiner Mitgliedsstaaten geöffnet ist.

6.4 Aus diesen Gründen wurde dem Antrag nicht stattgegeben.

T 0112/13 - New arguments

T 0112/13 - link

Key points

• The Board expressly decides that a more detailed and expanded line of argument presented during the oral proceedings is admitted under Article 13(1) RPBA, because it is an objection of lack of inventive step based on the same documents as presented b the opponent in the statement of grounds. 
• This confirms that even new arguments can be held inadmissible. 

Reasons for the Decision

1. Admissibility of the line of argument starting from D4 and applying the teaching of D2 in respect of inventive step, as presented during the oral proceedings - Article 13(1) and (3) RPBA

1.1 In the sixth and seventh paragraphs of page 6 of its statement setting out the grounds of appeal the appellant, in support of its objection as to lack of inventive step, presented a (short) line of argument starting from D4 and applying the teaching of D2.

1.2 The respondent commented on this line of argument in its reply to the statement of grounds of appeal, see page 4, last paragraph, to page 5, second paragraph.

1.3 Furthermore, the board in point 4.2.4 of its communication pursuant to Article 15(1) RPBA gave a provisional opinion on the inventive step of claim 1, starting from D4 and applying the teaching of D2.

1.4 During the oral proceedings the appellant submitted a detailed and expanded line of argument starting from D4 and applying the teaching of D2.

1.5 Said submissions have been contested by the respondent as being inadmissible under Article 13(1) RPBA, since they were presented only during the oral proceedings.

1.6 In the view of the board these submissions do not alter the legal and factual framework of the proceedings, given that said detailed and expanded line of argument is essentially based on the combination of documents D4 and D2, as is the line of argument which was already presented in the statement setting out the grounds of appeal, see point 1.1 above, and does not include any freshly filed evidence. Thus, by submitting the detailed and expanded line of argument at the oral proceedings the appellant did not substantially amend its case as set out in its statement setting out the grounds of appeal.

1.7 For the above-mentioned reasons, the Board decided under its discretionary power (Article 13(1) RPBA) to admit into the proceedings the appellant's detailed and expanded line of argument presented during the oral proceedings. The board further saw no reason to apply Article 13(3) RPBA.

T 1693/10 - Switching sides

EPO T 1693/10 -  link - FR - [C]

Key points

• In this opposition case, a professional representative had changed firms, from the firm representing the patent proprietor to the firm working for the the opponent and was present during the oral proceedings at the side of the opponent. The patent proprietor was none too happy. However, the Board notes that the professional representative was present as accompanying person only and had not requested permission to speak (G 4/95). The EPC does not give the Board any power to forbid the presence of such permission. Moreover, any conflict of interest or violation of the Code of Conduct was only relevant for the relationship between the parties and possible disciplinary measures. 

Motifs de la décision

1. Le recours est recevable.

2. Objection selon la règle 106 CBE

2.1 Le représentant de l'intimée a contesté que la procédure orale puisse être poursuivie en présence de M. [C] aux côtés du mandataire de la requérante  [(opposante)]et il a soulevé une objection selon la règle 106 CBE.

Selon l'objection telle que formulée, il était avant tout demandé que le mandataire accompagnant ne participe pas à la procédure orale devant la chambre au motif qu'il était précédemment salarié du cabinet auquel appartenait le mandataire de l'intimée, au sein du département mécanique en charge de la présente affaire, de sorte qu'il se trouvait en situation de conflit d'intérêts. L'intimée a fait valoir que le mandataire accompagnant avait travaillé dans l'équipe du représentant de l'intimée jusqu'en 2014 et qu'il avait eu accès à tous les dossiers du cabinet. A son avis, la chambre devrait se prononcer sur la question de savoir si la présence du mandataire accompagnant était contraire au Code de conduite professionnelle. En plus, la présence du mandataire accompagnant constituerait une violation du droit à un procès équitable prévu à l'article 6 de la Convention européenne des droits de l'homme (CEDH). Elle a ainsi protesté contre la présence du mandataire accompagnant lors de l'audience, en particulier car le mandataire de la requérante n'avait informé au préalable ni la chambre ni l'intimée de la présence envisagée du mandataire accompagnant à la procédure orale. L'intimée a fait valoir que la seule présence du mandataire accompagnant aux côtés du mandataire de la requérante violait le droit à un procès équitable stipulé à l'article 6 CEDH ainsi que le droit d'être entendu prévu à l'article 113(1) CBE. Elle a ajouté qu'elle n'avait pas d'objection à la présence du mandataire accompagnant comme membre du public.

T 1254/11 - Reducing enlarged OD

T 1254/11 - link- [C]

EPO Headnote
1. An opposition division enlarged to four members pursuant to Article 19(2) EPC 1973 can in principle be reduced again to three members. It is for the four-person panel to decide on the reduction. In this respect the board concurs with T 990/06. In deciding on the reduction, the opposition division consisting of four members must properly exercise its discretion. (See point 1.4)

2. The board assumes arguendo that the fact that no decision to enlarge nor a decision to reduce the opposition division was added to the publicly available file and the fact that the appointment of the new chairman could only be traced from the internal register of the EPO both constitute fundamental deficiencies of the proceedings before the opposition division.

However, different from the situation in T 990/06, it is possible to determine from the file that the division was lawfully enlarged and, at a later stage, lawfully reduced again. (See points 1.6 and 1.7)

The board considers that these circumstances constitute special reasons for not remitting the case within the meaning of Article 11 RPBA. The aforementioned fundamental deficiencies assumed arguendo are of a formal nature. They would, in the board's view, not justify substantially delaying the proceedings. (See point 1.9)

Key points

• " In European patent procedure there is no such legal concept as "rügeloses Einlassen", a term known in German civil procedure and referring, in principle, to the loss of the right to a certain objection by participating in the debate, especially in a hearing, without raising that objection.
• The Board introduces EU case law: " The board also informed the parties about two decisions handed down by the General Court of the European Union in cases T-251/00 [and] T-488/09 [.] The board considers that the answer is plain and that therefore no opinion of the Enlarged Board is required []. The board holds that the principle enunciated by the General Court in case T-251/00, also applies in European patent law, i.e. an opposition division enlarged to four members pursuant to Article 19(2) EPC 1973 can be reduced again to three members and it is for the four-person panel to decide on the reduction. 
• 
  

The decision under appeal indicated on page 1, at point 8 of the part "Facts and Submissions" that "[t]he enlargement of the division by a legally qualified examiner has been set aside on 22.03.2011 since no witness need to be heard anymore".

Reasons for the Decision

1. Primary request: remittal under Article 11 RPBA

1.1 The request

In its reply of 12 August 2015 to the board's communication attached to the summons for oral proceedings (hereinafter referred to as "the reply"), the patentee for the first time in the present appeal proceedings asserted that the decision under appeal was tainted by a substantial breach of procedural provisions of the EPC. More specifically, the patentee was of the opinion that the lawful composition of the opposition division as required by Article 19(2) EPC was not ensured during the opposition proceedings which led to the decision under appeal. As a consequence, pursuant to Article 11 RPBA and following the findings in the decision in case T 990/06, in particular at points 2.4 and 3.2 of the Reasons, the case had to be remitted to the opposition division.

T 0355/13 - Partiality objection

EPO T 355/13 
Link

Key points

• The opponent was one of the inventors of the device disclosed in D4, which the prior art the opposition mainly relied on. The opponent appears to have acted pro se.
• The opponent raised a partiality objection against all members of the board. The board confirms that it can decide on admissibility of the objection without replacement of the objected members. The board rejects the objection as inadmissible.
• The opponent raised as objection that the rapporteur was not technically competent. However, the board notes that " there are no substantiated submissions on file explaining why the issue of "competence" of a member of the board is linked to the issue of "partiality", since lacking competence does not per se mean that the allegedly incompetent person is biased. "
• The opponent made various other unusual assertions about procedural violations.

Summary of Facts and Submissions

I. The opponent appealed against the decision of the opposition division to reject the opposition and to maintain European patent No. 1 127 497 unamended. The statement setting out the grounds of appeal was received on 20 March 2013.

VII. In a letter dated 16 January 2014, the appellant informed the board that he regarded the summons as void ("unwirksam") because it contravened his right to be heard (Article 113(1) EPC) and because the board disregarded Article 11 RPBA, and that he therefore suspected the rapporteur of partiality in the sense of Article 24(3) EPC.

He complained that
- no position was taken in the summons about the alleged procedural violation by the department of first instance,
- no reason was given as to why the case was not to be remitted to the department of first instance,
- the admissibility of documents D9 and D10 was questioned, and
- the rapporteur was lacking in fundamental technical knowledge.

XXVI. The written arguments of the appellant that are relevant for the present decision can be summarised as follows:

d) The opponent was one of the inventors of the device disclosed in D4 and had been in negotiations with Philips, the former owner of the contested patent, concerning the payment of a remuneration to the inventors. The negotiations failed and there was a noticeable coincidence between the deceptive behaviour of Philips and the extremely unusual and improper treatment of the case by the opposition division, which entirely neglected the right of the appellant to be heard.

Reasons for the Decision

1. The appeal is admissible.

2. Admissibility of the partiality objections against the members of the board (Article 24 EPC)(appellant's arguments f) to k) and m) to p))

2.1 Competence of the board in its original composition

The appellant submitted that, if an objection under Article 24(3) EPC is made by a party, then the procedure under Article 24(4) EPC automatically applies without it being necessary to consider whether this objection is admissible. Thus such objection should be examined by the board without the participation of the member objected to, who should be replaced by his alternate.

The present board cannot follow such reasoning:

Article 24(3) EPC, second and third sentences, provides that an "objection shall not be admissible if, while being aware of a reason for objection, the party has taken a procedural step" and an "objection may not be based upon the nationality of members". These provisions clearly require a preliminary examination for admissibility.

Generally speaking, in the EPC, the purpose of the preliminary examination for admissibility is to determine whether the objection may go forward for substantive examination and decision. If the objection is not admissible, the board of appeal may not examine whether it is allowable or well founded. Insofar as the objections under Article 24 EPC are concerned, the issue of admissibility is a prerequisite for substantive examination. But this prerequisite, if satisfied, only leads to the opening of the procedure defined in Article 24(4) EPC: the member objected to is then replaced by his alternate and the board in this new composition decide on the allowability of the objections under Article 24 EPC.

This interpretation of Article 24(3) EPC was also shared by the Enlarged Board of Appeal in its interlocutory decision R 12/09 of 3 December 2009 (c.f. reasons for the decision, point 2) pointing out that the board in its original composition must first decide on the admissibility of an objection under Article 24(3) EPC in respect of a board member. The board has found nothing in interlocutory decision R 19/12 that would speak against following that procedure.

Thus, the appellant's submissions that the board committed a (substantial) procedural violation by not replacing the objected members of the board when taking any decision on the partiality objections raised, even on the issue of admissibility of those objections, are based on an incorrect interpretation of Article 24(3) EPC.

2.3 Admissibility of the objections under Article 24(3) EPC against the first member of the board

The objections under Article 24(3) EPC against the first (technical) member of the board (rapporteur) were raised in reaction to the annex to the summons to oral proceedings dated 5 December 2013, which were signed by that member. In that regard it is to be taken into account that forming an opinion is one of the important tasks of the board. Issuing of a preliminary opinion cannot per se be regarded as sufficient ground for an objection of suspected partiality. According to the appellant's allegations the specific content of the aforementioned annex supported the suspicion of partiality raised against the first member of the board. However, considering its content, it is immediately apparent that in all its parts it is clearly written as a merely preliminary, non-binding opinion of the responsible member of the board, so that none of the appellant's allegations is supported by the communication annexed to the summons. [...]Thus, the board came to the conclusion that the partiality objections against the first member of the board are not admissible.

[...]

In view of the fact that the appellant's partiality objection is based on a legally untenable interpretation of the purpose and functioning of the appeal proceedings, the right to be heard and the principle of a fair trial, it is rejected as inadmissible.

2.4.3 For the sake of completeness only it is noted that the appellant's various objections concerning the "competence" of the first member of the board are obviously founded on the appellant's untenable interpretation of the purpose and functioning of the appeal proceedings and the right to be heard as shown above. Furthermore, there are no substantiated submissions on file explaining why the issue of "competence" of a member of the board is linked to the issue of "partiality", since lacking competence does not per se mean that the allegedly incompetent person is biased. Consequently, the objection cannot be considered as an admissible partiality objection.

T 0823/11 - Excessive length

EPO T 0823/11

Link [C]

Key points

• Excessive length of procedure
• This is decision in appeal, dated 21 December 2015  an appeal against a refusal of an application posted on 30 September 2010 of an application having filing date 15 May 1996 and that had entered the European phase on 15 December 1997.
• The Board: " It follows from the summary of the first-instance proceedings (see section II above) that their length was affected by unacceptable delays, [...] . In the opinion of the Board, the delays cannot be justified by the particular circumstances of the case. The duration of the first-instance proceedings of more than twelve years after entry into the European phase must be regarded as excessive." 
• Interestingly, the Board also refers to a decision of the ECHR:
  " The Board's considerations in the present case are also in line with a judgment in the case of Kristiansen and Tyvik AS v. Norway before the European Court of Human Rights (decision of 2 May 2013 in application No. 25498/08), in which the examination and (administrative) appeal proceedings of a patent application at the Norwegian Industrial Property Office took a total of eighteen years before the final decision was issued." The Board notes that the Court had reiterated therein that "in civil length cases examined under Article 6 § 1, the period to be taken into consideration does not necessarily start when the competent tribunal was seized but may also encompass the prior administrative phase".
• The Board does not comment on the length of the procedure in appeal (5 years). In the cited case Kristiansen and Tyvik AS v. Norway, the first instance examination had taken 11 years (similar to the present case); the ECHR decision seems to have considered the total length including the appeal stage. 
• Insufficient reasoningThe Board uses the opportunity to note that: "A further issue concerns the reasoning given in the examination proceedings. According to Rule 71(2) EPC any communication under Article 94(3) EPC must contain a reasoned statement covering, where appropriate, all the grounds against the grant of the European patent. These provisions, [...] have been interpreted by the established jurisprudence as implying that the applicants have to be informed, for each EPC requirement deemed not to be met, of the legal and factual reasons why it was considered not to be met" .
• The Board considers the decision to be insufficiently reasoned because it "does not discuss the individual features of the claim. It is not clear what the closest prior art is, whether it is the common knowledge of the skilled person or the disclosure of document D1, and what distinguishes the invention from the prior art. [] The minutes of oral proceedings provide a more complete argumentation on inventive step, explaining where each of four possible distinguishing features is disclosed in either document D2 or in a specific passage of document D1. However, this reasoning was not taken over in the decision." 
• Auxiliary request
• The ED had not admitted an auxiliary requests filed during oral proceedings. The Board overrules the ED.
  " The auxiliary request submitted at the oral proceedings [before the Examining Division] was a reaction to this new reasoning and, as stated in the minutes, was considered by the Examining Division to fulfil the requirements of Article 123(2) EPC. Furthermore, it represented a clear improvement over the main request with respect to clarity and restricted the subject-matter of the claim. In the opinion of the Board, given the circumstances of the case, the applicant had the right to have this request admitted, and the complete reasoning regarding inventive step presented, discussed and afterwards included in the written decision."

Summary of Facts and Submissions

I. The appeal lies from the decision of the Examining Division posted on 30 September 2010 to refuse European patent application No. 96915827.8, which was filed as international application PCT/US96/06944 published as WO 96/36923.

[...]

II. The present application, which concerns the configuration of a clinical device in a patient care management system, was filed on 15 May 1996 and entered the European phase on 15 December 1997. The supplementary European search report was completed on 18 February 1999.

T 1649/10 - Closest prior art and Rule 99(2) EPC

EPO T 1649/10
Link

Key points

• The OD had held the claims as granted to lack inventive step using D10 as closest prior art. The patentee argued its Statement of grounds essentially that instead D4 was the closest prior art and that, starting from D4, the claimed subject-matter was not obvious. 
• This  does not meet the requirement of Rule 99(2) EPC for an admissible appeal, according to the Board.
• Board: " The mere indication by appellant II [patentee] that the subject-matter of granted claim 1 would be inventive, starting from document D4 as closest prior art, whereas the impugned decision based its analysis on a combination of D10 as closest prior art and document D4, does not fulfill the requirements of Rule 99(2) EPC as to the necessity for the appellant to indicate the reasons for setting aside the decision. Independently of whether the assessment made by the appellant is convincing or not, the submission that a claimed invention is inventive when starting from a selected item of prior art when combined with a second item of prior art is without bearing on a finding which relies on a different document as closest prior art."
• The filing of auxiliary request without much explanation how they overcome the objections relied upon in the impugned decision did not render the appeal admissible.
• The patentee hence was an party as of right. Some of its late filed auxiliary requests were not admitted because of reformatio in peius.

Summary of Facts and Submissions

I. The appeals lie from the interlocutory decision of the opposition division to maintain European patent No. 1 378 265 in an amended form. The decision was dispatched on 16 June 2010.

The opposed patent was initially granted on the basis of application No. 03 022 260.8 which was a divisional application of earlier application No. EP-A-97 114 481.1. The patent No. 826 394, which had been granted for the earlier application had also been opposed by the present opponent. In decision T 470/07 of 15 September [2010] patent No. 826 394 had been revoked by Board 3.4.01 in a different composition.

T 0389/12 - Remittal of opposition in 19th year

EPO T 389/12
Link

Key points

• In this opposition-appeal case, the Board decides to remit the case to the Opposition Division for further prosecution. The appellant/patentee requested to avoid a remittal "in consideration of the fact that the proceedings, in particular the examination, had already been very long."
• The Board comments that "the appellant itself contributed to the long duration of the examination proceedings by requesting several time-extensions to reply to the communications of the examining division." 

Reasons for the Decision

Main Request (set of claims submitted on 30 April 2012 as auxiliary request 1)

2. Novelty

[...]

2.7 In view of the above, the Board considers that the hot-melt extrusion process used for preparing the controlled-release formulations of claim 1 render these formulations different from those disclosed in D1, which have been prepared by a process of compression molding.

The subject-matter of the main request therefore complies with the requirement of novelty.

Remittal

3. The essential function of an appeal is to consider whether the decision issued by the first-instance department is correct. Hence, a case is normally remitted to the first-instance department if essential questions regarding the patentability of the claimed subject-matter have not been examined and decided by that department.

T 0615/14 - Correction opponent

T 615/14

link 

EPO Headnote
A request to correct the designation of the opponent in the notice of opposition is allowable under Rule 139, first sentence, EPC provided that it complies with the principles endorsed in G 1/12, in particular that it reflects what was originally intended when filing the notice of opposition, that it does not give effect to a change of mind or development of plans and that it represents the opponent's actual rather than ostensible intention (reasons 1.2 to 1.5).

The original intention at the time of filing the opposition can also be established on the basis of evidence submitted after the expiry of the opposition period (reasons 1.7).

T 1886/12 - Broad does not equate insufficient disclosure

T 1886/12
link

Key points

• In this opposition-appeal case, the board observes that "a sufficiency objection requires that there are serious doubts, based on technical considerations and/or substantiated by verifiable facts. The mere fact that a claim is broad (as in the present case by virtue of terms such a "active particulate" and "comprising") is usually not in itself a ground for considering that there is insufficiency of disclosure." 

Summary of Facts and Submissions

I. The appeal by opponent 2 lies from the decision of the opposition division to reject the two oppositions filed against European patent No. 0 865 314, granted on European patent application 96 941 491.1.

II. In the present case, a first appeal (case T 1164/01) had been filed against the refusal of the application by the examining division. The board entrusted with that case decided that the (amended) claims according to the then pending sole request met the requirements of Articles 123(2) and 84 EPC, and that their subject-matter was novel and inventive with regard to the prior art cited by the examining division, in particular the following documents []

The case was thus remitted to the examining division with the order to grant a patent.

Reasons for the Decision

Sufficiency of disclosure

6. The appellant raised several objections concerning the alleged insufficiency of disclosure, but did not discharge the burden of proof resting on it in this respect. For the board, the arguments presented by the appellant (infra) do not justify shifting the burden of proof to the respondent.

6.1 For the board, the appellant's assertion that the claimed invention could not be carried out over the entire range claimed is, in essence, based on the argument that the claimed structure could not be obtained using undefined components, of any size and shape, in any relative amounts.

6.2 The board observes that a sufficiency objection requires that there are serious doubts, based on technical considerations and/or substantiated by verifiable facts. The mere fact that a claim is broad (as in the present case by virtue of terms such a "active particulate" and "comprising" [)] is usually not in itself a ground for considering that there is insufficiency of disclosure.

However, despite the positive finding of the opposition division regarding sufficiency, the appellant did not submit any concrete evidence convincingly showing that the skilled person was not in a position to provide structures as claimed across the full ambit of the claims.

6.3 More particularly, the appellant did not dispute that the concrete examples contained in the patent in suit can be reproduced by the skilled person. Instead, it argued, but without providing supporting evidence, that skilled person would not be able to implement further embodiments of the invention, differing from those exemplified in the patent.

6.4 As regard the terms "permeable" and "flexible", the appellant did not dispute that they have a certain general meaning in the technical field of composite structures. This meaning may be rather broad, and the board accepts there may be situations where, for a given composite material, it may not be easy to decide whether or not said material clearly qualifies as being both "permeable" and "flexible", even taking into account its intended field of application. However, for the board, the use of these relative terms may at most result in some ambiguity (lack of clarity) as regards the boundaries of the claimed subject-matter, but this ambiguity certainly does not permeate the whole claim. The board is thus convinced that the skilled person is able to prepare, based on the indications and examples given in the patent in suit and without undue burden, further composite structures as defined in claim 1 at issue (for given purposes) which doubtlessly meet the criteria of permeability and flexibility.

T 1964/12 - Broader in appeal

EPO T 1964/12
Link

Key points

• This decision provides examples of some aspects of current practice.
• Broader claims in appeal" In view of the objections of lack of novelty and/or lack of an inventive step raised by the opponents in their notices of opposition, the patent proprietor decided in the present case not to argue novelty and inventiveness of the process claims as granted, but intentionally limited their subject-matter. By doing so the patent proprietor deliberately chose not to obtain a decision from the opposition division on the process claims as granted. In the present case, allowing the patent proprietor to revert on appeal to the process claims as granted, as now proposed in the main request, would go against the need for procedural economy. Accordingly, the Board, having regard to the facts and arguments presented to it, decided to make use of its discretionary power under Article 12(4) RPBA not to admit the main request into the proceedings."
• Broader product claims, in response to Article 123(2) objections, were admitted.
• Shift of burden of proof of novelty of unusual parameters
  "Consequently, the meaning of the unusual parameters selected by the patent proprietor to define the copolymers of present claim 1, and the analysis of the experimental data of the patent proprietor [], establish a strong presumption that the values of these unusual parameters defined in operative claim 1 are inherently fulfilled by the copolymers described in examples 1-23 and 1-24 of D1. In these circumstances, the burden of establishing that the claimed copolymers lack novelty over D1, which primarily lay on the opponents, has been discharged." 
• Requirement for a pointer to combine features under Article 123(2)
• The application suggested that two parameters were linked, therefore basis for specifying ranges for both in the claim requires, according to the Board, a pointer linking the chosen limits of the ranges.

Reasons for the Decision

1. The appeals are admissible.

Admissibility of the main request and auxiliary requests 1 to 7

2. Article 12(4) RPBA requires the Board to take into account everything presented by the parties under Article 12(1) RPBA if and to the extent that it relates to the case under appeal and meets the requirements in Article 12(2) RPBA. Those requirements are undisputedly met by the present claim requests. The claim requests relate to the case under appeal and were submitted either with the statement of grounds of appeal of the patent proprietor or in reply to the opponents' statements of grounds of appeal within four months of their notifications. In addition, detailed reasons as to why the amended process claims contained in all requests are allowable under Article 123(2) EPC, i.e. as to why the decision of the opposition division should be amended, are given in the statement of grounds of appeal of the patent proprietor.

3. However, according to Article 12(4) RPBA, the Board has the discretion to hold inadmissible requests which could have been presented or were not admitted in the first-instance proceedings. In this context the question is not merely whether the present claim requests could have been presented before the first instance, but whether, taking into account all relevant circumstances of the case, the situation was such that these requests should have been filed already at that stage of the proceedings.

4. In view of the objections of lack of novelty and/or lack of an inventive step raised by the opponents in their notices of opposition, the patent proprietor decided in the present case not to argue novelty and inventiveness of the process claims as granted, but intentionally limited their subject-matter. By doing so the patent proprietor deliberately chose not to obtain a decision from the opposition division on the process claims as granted. In the present case, allowing the patent proprietor to revert on appeal to the process claims as granted, as now proposed in the main request, would go against the need for procedural economy. Accordingly, the Board, having regard to the facts and arguments presented to it, decided to make use of its discretionary power under Article 12(4) RPBA not to admit the main request into the proceedings.

T 1835/11 - Appeal with no name

EPO T 1835/11

For the decision, click here. [C] (online on 20.10.2015)

Key points

• Even if a Notice of appeal does not contain the name and the address of the appellant, the appeal can be admissible, if it is filed by the representative of an opponent (based on G 1/12). 

Reasons for the Decision

1. In their reply of 22 February 2012 to the grounds of appeal the respondent objected that the notice of appeal did not comply with the requirements of Article 108 EPC in combination with Rule 99(1)(a) EPC because it did not contain the name and address of the appellant. For the purpose of Rule 99(1)(a) EPC it is necessary that the identity of the true appellant, i.e. the person on whose behalf the appeal was actually filed, can be established on the basis of the information given in the notice of appeal (G 1/12, OJ EPO 2014, A114, Reasons for the Decision, Nos. 20 to 23). As the notice of appeal was filed by the representatives of opponent 2 in the first instance, and opponent 2 was a party adversely affected by the decision under appeal, it was possible to identify the appellant as opponent 2. The appeal is therefore admissible.

T 2191/13 - Cognitive feature does not distinguish

T 2191/13
link


EPO Headnote

Ein rein auf gedanklicher Ebene bestehender, nämlich sich ausschließlich auf das Vorhandensein einer Erkenntnis gründender Unterschied zum Stand der Technik kann, ohne dass dieser einen Niederschlag in den technischen Merkmalen des Anspruchsgegenstandes findet, die Neuheit nicht begründen (Punkte 12.3 und 12.4 der Entscheidungsgründe)

Key points

• The Board decides that a method step of selecting a suitable component does not distinguish over a method in a prior art document that is otherwise identical, even though from that document it does not appear that it was recognized that the selected component was suitable for a particular substrate. The Board follows established case law that novelty can be based on technical features only (G 2/88, T 959/98, T 553/02 and T 154/04).
• The Board makes an interesting remark that, if the knowledge requirement would limit the claim, proof of infringement would require proof of actual knowledge of the alleged infringer. 

T 0205/14 - Assignment priority right

EPO T 205/14
Link

Key points

• The priority application was a US provisional filed in the name of the inventors. There was no explicit assignment document signed before the filing of the PCT application. The applicant of the PCT filing was the company employing the inventors. The question is therefore whether the applicant nevertheless was the successor in title, as required for a valid priority claim? 
• However, the decision is especially interesting because it discusses thoroughly the preliminary questions of how this must be decided, in particular according to which law.
• After a detailed reasoning, the Board concludes, about the applicable law, that the validity of the transfer is a matter of national law (thereby not following T 62/05), and the applicable national law in this case is the law governing the legal relationship between the transferor and the transferee of the right of priority (rather than that state of filing of the first application).
• The Board starts the detailed reasoning by noting that "it is generally accepted that the right of priority is transferable independently of the corresponding first application which can remain with the original applicant. [...] It is thus an independent right up and until it is invoked for one or more later applications to which it becomes an accessory. The right of priority has thus to be distinguished from the right to the patent deriving either from substantive law or from the status of being the applicant of the first application." 
• " If entitlement to priority is challenged, a successor in title, who desires to take advantage of the priority of a first application and who asserts that priority is rightly claimed from the first application, has to prove its entitlement to that right, which includes a valid transfer of the right of priority " 
• " Decision T 62/05 considered that the transfer of right of priority had to be be proven in a formal way and that it was therefore appropriate to apply an equally high standard of proof as required by Article 72 EPC 1973. The present board cannot follow this reasoning (....)  
• In the board's judgment, the assessment of whether the applicant of a European patent application is "successor in title" within the meaning of Article 87(1) EPC 1973 of the right of priority deriving from an earlier application is the exclusive concern of national law.
• In the board's judgment, the following considerations militate in favour of the law applicable to the legal relationship between the transferor and the transferee of the right of priority, and against the law of the state of filing of the first application (...)
• For the above reasons, the board concludes that, in the present case, the law of the state of the employment relationship between the three original applicants and the respondent determines the transfer of the right of priority. " 

Reasons for the Decision

1. The appeals are admissible.

[...]

3. Entitlement to priority

3.1 The appellants contested the entitlement of the patent in suit to the priorities from US applications No. 60/604,026 of 23 August 2004 (P1) and 60/690,867 of 16 June 2005 (P2). They argued that the respondent had failed to prove to the required standard that, on the date of filing of the international application number PCT/US2005/030500, published as WO 2006/024024, the rights of priority derived from the US provisional applications (P1) and (P2), both filed in the name of the three inventors, had been validly transferred to the respondent. As a consequence, the date of filing of the international application WO 2006/024024 was the effective date for determination of the relevant state of the art, and document (33) had to be regarded as constituting state of the art within the meaning of Article 54(3) EPC and was thus novelty destroying.

T 0306/13 - Japanese parameter

T 0306/13
For the decision, click here.

Key points

• The claims refer to a water vapor transmission rate R as parameter. The application documents as originally filed do not disclose a particular method or particular conditions to be applied in determining R. The Board considers the claims therefore to be unclear.
  
• " 1.3 According to the appellant, in view of the Japanese origin of the present application, it was clear that the skilled person would draw on a Japanese industrial standard (D6) in order to determine the water vapour transmission rate of the film forming the heat-weld resin layer.
  1.4 The board is not convinced that the skilled person would necessarily consider D6 as the sole industrial standard to be applied in the present case. This question can however remain open because, even assuming that D6 was the sole standard that the skilled person would draw on, the question would still be open as to which of the two temperatures indicated in D6, [...] should be used."

Reasons for the Decision

Clarity of the claims - Article 84 EPC - all requests

1.1 The board observes that, according to established case law, the claims have to be clear for the sake of legal certainty, as their purpose is to enable the protection conferred by the patent to be determined (see for instance T 1156/01 cited by the appellant, reasons 2.2).

1.2 Claim 1 of all requests refers to "the assumption that... the quantity of water capable of penetrating a heat-weld resin layer... is R (g/m**(2)•day)...". The question that arises is whether it is clear for the skilled person how this property of the heat-weld resin layer, i.e. its water vapour transmission rate R, is to be determined.

EPO Case Law 2015 (Part II - Legal Board)

Decisions of the Legal Board

(other than re-establishment of rights cases)

J 0016/14 - Undoing registration of transferWhen 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. link

J 0002/15 - Retraction of withdrawalThe withdrawal of an application cannot be retracted once it has been published in the European Patent Register. link

J 0001/15 - Payment

The fourth renewal fee was considered to be not paid, a Rule 112(1) EPC communication was issued. The applicant filed an appeal. The appeal is rejected as inadmissible, because a Rule 112(1) Communication is not a decision of the Examining Division.
As a comment, the applicant had in parallel requested that the payment was considered to be made in time under Rule 7(3)(a) RFees, because it had duly given a payment order to its bank, but somehow the bank had failed to process that order. After the appeal decision, the Examining Division followed up on that request and noted that the renewal fee had still not been paid. The applicant paid the renewal fee, three years later, which was considered in time under Rule 7 Rfees.  link

J 0012/14 - Low quality drawings are not missing drawings
1. The filing of drawings where the re-production of the figures is of low visual quality cannot be remedied by Rule 56 EPC (adding missing drawings based on priority document).
2. It is within the responsibility of the applicant to determine the scope of the disclosure by selecting a readable version of the application documents including the figures reproduced in the drawings. However, the question of what technical features the figures in the drawings show with respect to the claimed invention is not part of the formal examination procedure before the Receiving Section. link

J 0023/13 - Divisional after refusal

After a refusal, a divisional application can be filed after filing the Notice of appeal (and paying the appeal fee) and before the expiry of the time limit for filing the statement of grounds, even no statement of grounds is filed. link

J 0022/13 - Divisional after refusal

However, a divisional application can not be filed after expiry of the time limit for filing the statement of grounds after refusal of the parent application and filing a notice of appeal against that refusal. link

J 0008/13 -  Substantial procedural violation
Considering the appellant's arguments the Board would like to emphasise that an incorrect interpretation of a provision of the EPC dealing with formal requirements of application documents, as alleged by the appellant, does not per se constitute a substantial procedural violation within the meaning of Rule 103 EPC. An error in the application of law cannot be equated with a procedural violation. link
J 0014/14 - Notification

" It is clear that the EPO has been unable to discharge the burden of proving that the appellant's representative received the communication of 5 December 2013. It is well established in the case law of the EPO Boards of Appeal that in such circumstances the appellant must be given the benefit of the doubt" link

J 0007/13 - Resumption

The board orders resumption of proceedings stayed under Rule 14. [The Legal Division has ordered a new stay on the date that the Board had decided that the proceedings were to be resumed] link

J 0007/13 - Search fee

For the purpose of the reference in Article 2(1), item 2, first indent RFees to applications filed before 2005, the relevant date is the date of filing of the divisional application and not the filing date. link

J 0007/13 - Search fee

EPO J 7/13

For the decision, click here.

Key points

• Article 2(1) item 2 Rfees distinguishes between applications filed before and after 1 July 2005. The search fee is higher for applications filed after that date (because a search opinion will accompany the search report). In this case, a divisional application was filed in 2011 based on a parent application having a filing date in 2003. The EPO required payment of the higher amount. The applicant (represented by  Mr. Griebling) requested a partial refund of the search fee. This request was refused by the Receiving Section. The applicant appealed.
• The Board decides that the date of filing (Einreichungstag) of the divisional, rather than the filing date (Anmeldetag) is decisive. 
• As a comment, this seems to be also the case for the designation fee (the flat designation fee applies for any divisional application filed on or after 1 April 2009, even if the parent was filed before, at least according to Visser). 

Summary of Facts and Submissions

I. European patent application No. 11 004 301.5 was received at the EPO on 25 May 2011. It was filed as a divisional of European patent application No. 03 746 402.1 (the earlier/parent application), which had been filed on 3 April 2003.

II. Together with the application documents, the EPO received Form 1010 listing the fees to be debited in respect of the divisional application from the account of the applicant's representative. The amount of the search fee was given as  E 800. An accompanying letter contained the explicit instruction that, if any of the amounts indicated in the form were wrong, the right amounts were to be debited from the account.

III. With a communication dated 20 July 2011 the applicant was informed that the correct amount of the search fee payable in the present case was E 1 105, so that an additional E 305 would be debited from the representative's account. It was further set a two-month time limit for filing reasoned objections to that finding.

IV. By fax dated 28 July 2011 the applicant did so, arguing that "since the filing date of the present application is 3 April 2003, the correct amount of the European search fee is 800 EURO" and requesting either a refund or an appealable decision.

T 2217/11 - No business method

T 2217/11
Link



Key points

• The application was refused because the Examining Division found that the claims related to "subject matter excluded from patentability under Art. 52(2) and (3) EPC",  likely because the claimed invention was considered to be a method of doing business and therefore excluded by Article 52(2)(c) EPC.
• However, the claimed method also recites technical features and therefore is not excluded from patentability, according to the Board. 

IV. Claim 1 reads as follows:

"A method for secure payment via a communication network, the method involving in a payment session three agents, [...]

Reasons for the Decision

3. Patentability

3.1 The Examining Division found that the claims related to "subject matter excluded from patentability under Art. 52(2) and (3) EPC." No subsection of Article 52(2) EPC was mentioned, but in the light of the comments in the final two paragraphs on page 4 of the Reasons, it would appear that the claimed invention was considered to be a method of doing business, and therefore excluded by Article 52(2)(c) EPC.

3.2 Although methods of doing business are excluded from patentability by Article 52(2)(c) EPC, this is only to the extent to which the application relates to methods of doing business "as such" (Article 52(3) EPC).

In the present case, claim 1 seeks protection for a method for secure payment via a communication network, and the subject-matter is chiefly defined in terms of a sequence of messages exchanged between three agents, the content of the messages and the extent and nature of the encryption used being set out in detail. The subject-matter of the claim does not, therefore, relate to a method of doing business "as such", but rather to the field of secure communication over a network using cryptography, and hence it has a technical character (see e.g. T 789/08, Reasons, point 3.2, first paragraph).

3.3 The Board accepts that claim 1 comprises certain individual features which might be seen as purely related to business, for example transferring by the broker a payment amount to an account of the vendor. This, however, is irrelevant. By virtue of the technical features referred to above, the claimed method is an invention within the meaning of Article 52(1) EPC and not excluded from patentability under Articles 52(2) and (3) EPC 1973 (see e.g. T 258/03, Points 4.1 to 4.7).

[...]

4.6 The subject-matter of claim 1 is therefore judged to involve an inventive step within the meaning of Article 52(1) EPC and Article 56 EPC 1973.

EPO Case Law 2015 (Part I)

Enlarged Board - G decisions

G 3/14 : Clarity in opposition
In considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC. link

G 2/12 and G 2/13: Plant products
The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material. link

TBA Decisions with publication code [B]

T 1363/12 : G 2/10 remains the gold standard

The fundamental test under Article 123(2) EPC remains the "gold" standard referred to in G 2/10, namely, what would a skilled person directly and unambiguously derive, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the original disclosure.
The decision in T 2619/11 did not lay down a different test, namely, of what was "really disclosed" to the skilled person.
Decisions on Article 123(2) EPC are very case-specific and care should be taken in applying statements of Boards of Appeal made in the context of particular factual situations to other factual situations. link

T 2130/11 : Disclaiming not more than necessary
[T]he condition that the disclaimer should not remove more than is necessary to restore novelty should be applied while taking into consideration its purpose, namely that the "necessity for a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily" []. In this respect situations can be foreseen, in which, while fulfilment of the condition taken in a strictly literal way would not be possible, a definition of the disclaimed subject-matter which satisfies the requirements of Article 84 EPC and fulfils the purpose of the condition (i.e. to avoid an arbitrary reshaping of the claims) may be achievable. In other words, a disclaimer removing more than strictly necessary to restore novelty would not be in contradiction with the spirit of G 1/03, if it were required to satisfy Article 84 EPC and it did not lead to an arbitrary reshaping of the claims (see point 2.10). link

T 2001/12 : Doubts about the technical effect: Article 83, 84 or 56 EPC ?An objection of insufficient disclosure under Article 83 EPC 1973 cannot legitimately be based on an argument that the application would not enable a skilled person to achieve a non-claimed technical effect (point 3.4).
A doubt that the invention as claimed is capable of solving the problem defined in the application may have the following consequences:
a) If the question arises because the claim fails to specify those features which are disclosed in the application as providing the solution to the problem, then the description and claims are inconsistent in relation to the definition of the invention, and an objection under Article 84 EPC 1973 may properly arise that the claims do not contain all the essential features necessary to specify the invention.
b) If this is not the case, but, having regard to the prior art, and irrespective of what may be asserted in the description, it does not appear credible that the invention as claimed would actually be capable of solving the problem, then an objection under Article 56 EPC 1973 may be raised (point 4.4). link

T 1410/14 : Public prior use and features visible for a short time

Merkmale eines nur für einen kurzen Zeitraum sichtbaren Gegenstands sind nur dann der Öffentlichkeit zugänglich geworden, wenn zweifelsfrei nachgewiesen ist, dass für den Fachmann in diesem kurzen Zeitraum die Merkmale eindeutig und unmittelbar zu erkennen waren. link

T 0081/14 : Claim for use of a product obtainable by a process

When considering the definition of a product in terms of its production process the principles developed in the jurisprudence for the "product-by-process claims" are in general to be applied, also in the case of a claim directed to the use of that product. link

T 1360/11 :  Restricting a claim for a composition comprising 

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

T 0236/12 : Back to the drawings as filed

The drawings of the patent as granted were replaced in opposition by the drawings of the application as filed (which showed less features).  link

T 0037/12 : Handwritten amendments are allowed during oral proceedings in appeal.
Amendments can be submitted in handwritten form during oral proceedings. link

T 2068/14 : Video conference before the Boards

" the board is prepared, in principle, to consider in exceptional circumstances the holding of ex parte oral proceedings by video conference".   link

New year, new blog name

As of today, this blog has moved to justpatentlaw.blogspot.com. In addition, the name was changed into the "Just Patent Law Blog".

For 2016, I intend to cover mainly the EPO case law.

Peter