T 1088/11 - Reducing enlarged division

EPO Headnote

In principle, an opposition division may set aside a decision to enlarge its composition pursuant to Article 19(2) EPC (Reasons, point 11.2).
Where an opposition division has been enlarged, but the case is nevertheless decided in a composition of three members, there should be clear evidence on the public file that a decision to set aside enlargement was taken by the opposition division in its four member composition prior to the final decision (Reasons, point 17.3).

Key points

• The lack of a clear decision of the four members of the extended division to reduce the division to again three members constitutes a substantial procedural violation and the decision under appeal is set aside.

EPO T 1088/11 - link

Reasons for the Decision

1. The appeal is admissible.

2. The procedural issues

A decision taken in a wrong composition of the opposition division is not legally valid (T 390/86, Reasons, points 7 and 8), and according to Article 11 RPBA, a board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise. It therefore falls to the board to determine whether the composition of the opposition division indicated in the contested decision was correct at the time the decision was taken.

T 0224/12 - Adversely affected

Key points

" It is the position of the opponent that, due to the absence of arguments in support of the main request at any stage, the patent proprietor was not adversely affected by the decision. The position of the appellant/opponent is not supported by the law. The patent proprietor's main request was refused by the meaning that the patent proprietor was adversely affected by the decision." 

EPO T 0224/12 - link

Reasons for the Decision

1. Admissibility of the appeal

1.1 The main request of the patent proprietor before the opposition division for rejection of the opposition was not allowed.

1.2 According to the minutes of the oral proceedings before the opposition division (section 5) when novelty of the main request was discussed the patentee did not provide any arguments. The decision records in section 4.2 that the patentee did not contradict the novelty objections of the opponent against the main request.

1.3 It is the position of the opponent that, due to the absence of arguments in support of the main request at any stage, the patent proprietor was not adversely affected by the decision.

1.4 The position of the appellant/opponent is not supported by the law.

The patent proprietor's main request was refused by the meaning that the patent proprietor was adversely affected by the decision.

Thus the requirements of Art. 107 EPC are satisfied.

T 2453/12 - Two opponents

Key points

• A case with two opponents. The OD held the opposition of O2 to be inadmissible. O1 gave a authorization to the representative of O2. The patent was maintained. O1 filed an appeal, by it's own employee (O1 is a company in an EPC state). This appeal is validly filed. The appointment of a professional representative does not prevent the party from acting through an authorized employee. 
• " Da sich eine Partei niemals durch die Erteilung von Vollmachten das Recht entziehen kann, sich selbst zu vertreten, kann schon deshalb kein Zweifel an der Berechtigung der firmeninternen Vertreter zur Einlegung der Beschwerde bestehen. "

EPO T 2453/12 - link

Sachverhalt und Anträge

I. Das europäische Patent Nr. 1 319 390 wurde mit sechs Patentansprüchen erteilt. []

II. Gegen die Erteilung des Patents wurden gestützt auf die unter Artikel 100 a) und c) EPÜ genannten Einspruchsgründe zwei Einsprüche eingelegt, [].

III. Der Einspruch der Einsprechenden 2 wurde unter dem Namen "ISP Investments LLC" mit der Adressangabe "818 Washington Street, Wilmington, DE 198901, U.S.A." eingelegt.

IV. Nachdem die Patentinhaberin darauf hingewiesen hatte, dass die Firma ISP Investments LLC nicht mehr existiere und die Frage der Rechtsnachfolge unklar sei, beantragte die Einsprechende 2 mit Schriftsatz vom 14. September 2012 eine Berichtigung unter Regel 139 EPÜ ihres Namens und ihrer Adresse im Einspruchsschriftsatz und legte in diesem Zusammenhang die folgenden Beweismittel vor:

T 0996/13 - Reverting in appeal

Key points

• The claims as filed with the Statement of grounds are not admitted in this examination appeal, because they correspond to claims which had been submitted and replaced by other claims before the Examining Division.

EPO T 0996/13  -  link

Reasons for the Decision

1. According to the case law of the Boards of Appeal, the function of an appeal is to give a judicial decision upon the correctness of a separate earlier decision taken by a department of first instance. It is not the purpose of appeal proceedings to give the appellant the opportunity to recast its claims as it sees fit and to have such claim requests admitted as of right into the appeal proceedings. Appeal proceedings are not a second chance to re-run the proceedings before the first instance. This principle is mirrored in Articles 12(4) and 13 RPBA (cf. "Case Law of the Boards of Appeal of the EPO", 7th edition 2013, IV.E.1 and IV.E.4, pages 934 and 984, respectively). In particular, Article 12(4) RPBA empowers the board not to admit requests that could have been presented in the first-instance proceedings.

T 1325/15 - Invoking an omission

Key pionts

• The Notice of appeal was filed after the expiration of the time limit. Apparently, the text of Articles 106-108 EPC was not attached (contrary to Rule 111(2) EPC) and the applicant tries to invoke this, despite established case law that this is not possible (T 42/84). The Board does not depart from this case law.
• In connection with the request for re-establishment, the professional representative had submitted that no time limit had been docketed because a clerk had not recognized the decision as a decision because of the lack of the attached texts of Articles 106-108 EPC. 
• The Board: " The Board considers that an assistant should receive instructions enabling him to recognise a communication from the EPO as a decision triggering time limits for filing an appeal even in the absence of EPO Form 2019. Indeed, it follows from Rule 111(2), second sentence, EPC that the presence of that form cannot be relied upon. Furthermore, an assistant should be instructed to consult his supervisor if any doubt arises about the meaning of a particular communication." 
• The request is refused and the appeal was hence filed late. The question of whether the appeal fee then is to be refunded had been referred to the Enlarged Board in G1/14 and G 2/14, neither referral resulting in a decision. The present Board follows established case law that the appeal is deemed to not have been filed and orders the refund of the appeal fee.

Summary of Facts and Submissions

I. The applicant (appellant) filed a notice of appeal against the decision of the Examining Division refusing European patent application No. 07864887.0.

II. The decision was taken in oral proceedings held on 21 October 2014 and issued in writing on 9 February 2015. An acknowledgement of receipt was faxed to the EPO on 19 March 2015, confirming receipt on 13 February 2015 of both the decision (on EPO Form 2007) and the reasons for the decision (on EPO Form 2916).

III. The notice of appeal was received on 19 June 2015 together with the statement of grounds of appeal and a letter labelled "Letter 1" comprising a main request and an auxiliary request, both requests dealing with the apparent late filing of the appeal.

With its main request, the appellant requested that the Examining Division reissue the decision. With its auxiliary request, it requested re-establishment of rights pursuant to Article 122 EPC in respect of the time limit for filing the notice of appeal.

[]

Reasons for the Decision

1. The appellant's letter dated 1 February 2016, filed after the closure of the debate, is disregarded because the Board sees no reason to reopen the debate (Article 15(5) RPBA).

2. Pursuant to Article 110 EPC, it is first to be examined whether an admissible appeal was validly filed.

T 0151/13 - Mere explanation

EPO Headnote
" Purpose of a particular reagent in a known chemical process is not a functional technical feature in the sense of G 2/88 and does not render said process novel"

Key points

" The Appellant argued, that claim 1 was, however, a "use" claim in the sense of decision G 2/88, such that the subject-matter thereof was novel over document (2) in view of the previously undisclosed technical effect of the use of superatmospheric partial pressure of hydrogen chloride [] in order to reduce the level of 1,2,3 trichloropropane, chlorinated ethers and oligomers in the product.

In the present case, the Board holds that the otherwise identical process disclosed in document (2) []must result in the same levels of 1,2,3 trichloropropane, chlorinated ethers and oligomers being produced as in the process defined in claim 1 of auxiliary request 2, i.e. there is no reduction in the level of these compounds vis-à-vis Example 1 of document (2)." 

T 0151/13 - link

Summary of Facts and Submissions

I. The Appellant (Proprietor of the Patent) lodged an appeal against the decision of the Opposition Division revoking European patent No. 1 771 403. []

Claim 1 of auxiliary request 2 reads as follows:

T 1130/11 - "Interner bericht" is public

Key points

• The present case concerns an examination appeal. The priority date is in 2004. D3 is " D3 Heiss, H-U.: "Processor Management in Two-Dimensional Grid-Architectures", Interner Bericht Nr. 20/92, University of Karlsruhe, 1992, pages 1-52; XP002416087."
• " Before the oral proceedings, the board performed a limited investigation in the Internet about D3 and presented its results to the appellant during the oral proceedings. The board found one United States patent (US 8,190,714 B2, page 3, right column) and three scientific papers citing D3. Furthermore, D3 is listed in the online catalogue of the Deutsche National­bibliothek and is available in its reading rooms in Frankfurt and Leipzig with a number (Signatur) from 1993 (see http://d-nb.info/931177162), i.e. well before the priority date of the application (2004). Thus, the board maintains its opinion that in the field of universities "Interner Bericht" does not mean confiden­tial, but something like "technical report", and that D3 was publicly available prior art at the priority date.

T 1130/11 - link

Reasons for the Decision

1. Overview of the invention

The application relates to scheduling a job request in a high-performance computing (HPC) system which consists of a cluster of computing nodes (e.g. blade servers or PCs; see original description page 7, para­graph 2). []

T 1402/13 - Pending and renewal fee

Decision of 31 May 2016

Key point

• Under the EPC 2000, an application is not pending during the period for paying the renewal fee with surcharge unless the renewal fee is paid during that period.
• Note: Rule 51(2) EPC is changed as of 1 January 2017 to stipulate that the deemed withdrawal takes effect at the expiration of the grace period (OJ 2016, A102)

EPO Headnote

1. Whereas under Article 86(3) EPC 1973 loss of rights did not occur before the additional period of six months had elapsed, under the present Article 86(1) EPC loss of rights ensues upon expiry of the normal due date unless use is made of the remedy available under Rule 51(2) EPC (Reasons 4 to 4.6).
2. Under Rule 103(1)(b) and (2) EPC the termination of appeal proceedings caused by a loss of rights due to the non-payment of renewal fees cannot be equated to a declaration of withdrawal of the appeal (Reasons 5 to 5.6).

3. In order to claim entitlement to reimbursement under Rule 103(2) EPC, the appellant is required, at a time when its application is still pending, to make a procedural declaration that leaves no doubt that withdrawal of the appeal is intended (Reasons 6).

EPO T 1402/13 - link

Hat tip: Laurent Teyssèdre

Summary of Facts and Submissions

I. The appeal lies from the decision of the examining division dated 17 December 2012 to refuse European patent application No. 04782625.0. The appeal was filed on 13 February 2013 and the statement of grounds was submitted on 24 April 2013.

II. The renewal fee for the 12th year fell due on 31 August 2015 and had not been paid by that date.

III. On 18 February 2016, the appellant submitted a declaration stating that it "hereby withdraws their Appeal against the decision of the Examining Division upon the condition that the withdrawal is received in time to qualify for at least a 50% refund of the appeal fee."

IV. On 25 February 2016, the board issued an interlocutory decision stating that as long as the renewal fee and the additional fee had not been paid the withdrawal of the appeal could not take effect, since the appeal procedure had already been terminated beforehand as a consequence of the loss of rights due to the failure to pay the renewal fee in due time.

V. With a letter of 8 March 2016, the appellant declared that it did not challenge the board's interlocutory decision regarding the conditional withdrawal of 18 February 2016 but, instead, requested a 50% refund of the appeal fee based on the deemed withdrawal effect of the application and hence of the appeal under Article 86(1) EPC due to failure to pay the renewal fee by the due date.

VI. By 31 August 2015 the board had neither issued a preliminary opinion nor set a date for oral proceedings.

Reasons for the Decision

The appellant's request is admissible but not allowable.

1. The appellant's request is admissible.

The subject-matter of this request has not become res judicata. The board's intermediate decision dated 25 February 2016 also deals with a request for a 50% refund of the appeal fee, but this request was based on a different factual situation. The appellant is not challenging the board's decision that the condition for the declaration of withdrawal was not fulfilled but, with reference to the board's reasoning, argues that the deemed withdrawal of the appeal that had occurred on 31 May 2016 alternatively justified a claim for refund. Thus, the present request does not concern the same subject-matter as the request underlying the board's intermediate decision.

2. The board is in a position to give a final judgment on the appellant's request.

Whereas when the intermediate decision was taken it was still possible that the legal fiction of the deemed withdrawal of the application would be reversed, it is now clear that the application is deemed to have been withdrawn since the end of August 2015 (see points 3 and 4 below).

T 0022/09 - After G 1/13 - Fairly based

Key points

• This decision concerns the further procedure after G 1/13 about admissibility.
• The Board confirms that a method claim as granted can be changed into a use claim under Article 123(3) EPC following established case law. 
• In connection with Article 123(2) EPC, the Board states that it "is satisfied that the claims at issue are fairly based on the application as filed". As a comment, this is quite liberal language compared to " directly and unambiguously" .
• Novelty and inventive step is based on the purpose of the use claim. 

T 0022/09 - link



Summary of Facts and Submissions

II. Claim 1 according to the Main Request was identical to Claim 1 as granted, and read as follows:

"1. A method of pre-treating a catalyst support to be used in a catalyst-forming process involving impregnation of the support in neutral or acidic aqueous conditions, characterized in that it comprises introducing onto and/or into an untreated particulate catalyst support [], a modifying component, [] and calcining the resultant modifying component containing modified catalyst support [], to obtain a protected modified catalyst support, which is less soluble or more inert in the aqueous acid solution and/or neutral aqueous solution than the untreated catalyst support []."

XI. In Decision G 1/13 (OJ EPO 2015, A42), on the questions referred to it by the Board, the Enlarged Board of Appeal indicated that the appeal must be treated as admissible (Point 2 of the order).

XV. The Main Request filed at the oral proceedings contains 6 claims, Claim 1 reading as follows:

"1. Use of a modifying component for suppressing the solubility of a catalyst support [] when present in and/or on the catalyst support, wherein the catalyst support is to be used in a catalyst-forming process involving impregnation of the support in neutral or acidic aqueous conditions [] and characterized in that the modifying component is introduced onto and/or into an untreated particulate catalyst support [], and afterwards the resultant modifying component-containing modified catalyst support is calcinated [], to obtain a protected modified catalyst support, [] ".

Reasons for the Decision

Admissibility of the new Main Request

1. The filing of the sole claim request maintained during the oral proceedings was in reaction to the debate between the parties.

In particular, it came as a reaction to the opinion of the Board that Claim 1 at issue did not comply with the requirements of Article 123(3) EPC, due to the deletion of the feature that the catalyst support was to be used in a catalyst-forming process involving impregnation in neutral or acidic aqueous conditions. The new claim request is late but addresses and overcomes the finding of the Board, without raising questions which could not have been dealt with during the oral proceedings. The Appellant did not raise any objections against its filing. The Board exercised its discretion (Articles 12(4) and 13(1)(3) RPBA) and decided to admit it into the proceedings, despite its late filing.

T 2273/11 - Tacit secrecy agreement

Key points

• In order to decide whether a tacit secrecy agreement existed, the Board assesses whether both parties to the joint development of the invention had an interest in keeping the invention secret. The patentee and opponent agree that a tacit secrecy agreement can be assumed for joint development of inventions if such agreement is in the interest of the parties involved with the joint development. 

EPO T 2273/11 - link

Entscheidungsgründe

1. Offenkundige Vorbenutzung

1.1 Die Beschwerdeführerin I hatte ursprünglich mehrere offenkundige Vorbenutzungen geltend gemacht, von denen für die vorliegende Entscheidung lediglich die auf die Dokumente D12, D15 und D20 gestützte Vorbenutzung rele­vant ist, die im Folgenden diskutiert wird.

1.2 Vor dem Prioritätsdatum des Streit­patents hat Benteler ein Verfahren zur Herstellung der B-Säule J 3200 der Fa. Opel, also eines metallischen Formteils, ent­wickelt. Dieses in D20 näher beschriebene Verfahren wurde am 19. Februar 2002 (siehe D15) von Opel ab­genommen und frei­gegeben. Dem vom 9. Februar 2000 datierten Angebot D12 (siehe insbesondere Seiten 5 und 9) ist zu entnehmen, dass durch das Verfahren allge­meine Toleranzen von ± 3 mm zu erzielen sind, bevor das Bauteil durch Laser­schneiden auf sein endgültiges Maß gebracht wird.

1.3 Es ist unstreitig, dass keine projektbezogene, expli­zite Geheimhaltungspflicht bezüglich der geltend gemachten offenkundigen Vor­benutzung vorliegt.

Die Beschwerdegegnerin vertritt jedoch die Meinung, dass man aus der allgemeinen Erfahrungspraxis aufgrund der gemeinsamen Entwicklung davon ausgehen müsse, dass zu­mindest eine stillschweigende Geheim­haltungs­pflicht anzunehmen sei. Dies sei umso mehr der Fall, da Opel ein Interesse daran habe, das preisgünstige Her­stellungs­verfahren anderen Auto­herstellern nicht zur Verfügung zu stellen.

1.4 Zwischen den Parteien ist unstreitig, dass von einer stillschweigenden Geheimhaltungspflicht dann aus­gegangen werden kann, wenn beide Vertrags­partner, bzw. der Informationsgeber und der Informations­empfänger ein Interesse an der Geheimhaltung der gemeinsamen Entwick­lung haben.

Im vorliegenden Fall hatte aber jedenfalls die Fa. Benteler kein Interesse daran, das von ihr vor­geschla­gene Verfahren geheim zu halten. Im Gegenteil sei es für sie von Vorteil, mit möglichst vielen Firmen ins Geschäft zu kommen, denn nur so könnten sich die Entwicklungs­kosten amortisieren.

Dieses Vorbringen der Beschwerdeführerin wurde auch vom Zeugen Geringhoff in seiner Aussage vor der Einspruchs­abteilung, ausdrücklich und mehrfach bestätigt. Der Zeuge hat zudem erklärt, dass das Her­stellungsverfahren auch BMW und Daimler vor­gestellt wurde. Somit ist das Verfahren zur Herstellung der B-Säule nicht als eine gemeinsame Projekt­entwicklung von Benteler und Opel zu betrachten, sondern lediglich als Ergebnis einer üblichen geschäftlichen Beziehung (siehe Angebot, D12). Eine etwaige andere allgemeine Erfahrungs­praxis, wie von der Beschwerdegegnerin rein pauschal behauptet, wäre allen­falls als eine widerlegbare Vermutung zu werten. An­gesichts der klaren, glaubhaften Aussagen des Zeugen, und der dargelegten Umstände eines normalen Geschäft­verhältnisses, ist diese Vermutung zur Überzeugung der Kammer jedenfalls widerlegt. Die anders­lautende Würdi­gung seitens der Einspruchs­abteilung in der angefochte­nen Entscheidung, der Zeuge habe lediglich "die Meinung" in "pauschaler Weise" geäußert, findet keine Grundlage in der Zeugenaussage und ist ihrerseits pauschal begründet. Damit ist die Beweis­würdigung der Einspruchsabteilung in sich nicht schlüssig, so dass die Beschwerdekammer ohne erneute Zeugenvernehmung eine tatsachengestützte Würdigung der Aussage des Zeugen vornehmen konnte.

1.5 Von einer "besonderen Beziehung" zwischen Informations­empfänger und Informationsgeber im Sinne der Ent­schei­dung T 1081/01 kann zwar bezüglich der spezi­fischen Form der für Opel hergestellten B-Säule aus­gegangen werden, was vom Zeugen auch nicht verneint wurde. Da das Streit­patent aber das Herstellungsverfahren eines Bau­teils und nicht das spezifische gefertigte Bauteil betrifft, ist eine diesbezügliche potentielle still­schweigende Geheim­haltungs­pflicht für die Beurteilung der Offen­kundigkeit des Verfahrens nicht relevant.

1.6 Folglich stellt die durch die Dokumente D12, D15 und D20 und die Zeugenaussage des Zeugen Gehringhoff nach­gewie­sene offenkundige Vorbenutzung Stand der Technik im Sinne des Artikels 54 (2) EPÜ dar.

T 2365/13 - Stem cells

Key points

• The Board follows the decision of the CJEU in judgement C-364/13 (International Stem Cell Corporation) and confirms EPO practice that 5 June 2003 is the critical date for applications involving human pluripotent stem cells.

T 2365/13 - link

Reasons for the Decision

1. In its communication (cf. point III supra), the board informed the appellant that it had become aware that the department of first instance, in view of the CJEU judgement C-364/13, has reconsidered its practice with regard to the patentability of inventions referring to human pluripotent stem cells ("progenitor cells" in the present case).

2. The board drew the appellant's attention to the communication of the examining division issued on 9 March 2016 concerning European patent application no. 13 186 524.8, related to human pluripotent stem cells. This communication refers to document WO 2003/046141, publication date 5 June 2003 (one and a half years before the priority date of the present application), as the earliest publication of an enabling disclosure of human parthenogenetically derived pluripotent stem cells, which according to CJEU judgement C-364/13 does not involve the use of human embryos.

3. In the light of these facts, the appellant was informed that the board intended to set aside the decision under appeal and to remit the case to the examining division for further prosecution on the basis of the Main Request.

4. The appellant withdrew its request for oral proceedings and agreed with the course of action proposed by the board (cf. point IV supra).

5. Therefore, according to Article 111(1) EPC, the case is remitted to the examining division for further prosecution on the basis of the Main Request.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division for further prosecution on the basis of the Main Request filed on 4 November 2013 with the statement setting out the Grounds of Appeal.

T 2365/11 - Change OD day before

Key points

• "  At the beginning of the oral proceedings the chairman of the Opposition Division informed the parties that its composition (chairperson) had changed the day before. [] In the present case, even though the chairman [of the OD] said he had been designated one day before the oral proceedings, neither the appellant (patent proprietor) nor the respondent (opponent) has presented evidence to show that the chairman did not have the requisite knowledge of the file. In the absence of any such evidence, it cannot be assumed that one day was not enough. Whether or not the necessary knowledge can be acquired in one day depends on the technical and legal complexity of the file. This question has to be assessed by the director, together with the member concerned. In the present case, in the absence of objective evidence to the contrary, it has to be assumed that the time available was sufficient.
• In addition, the straw man (apparently) disclosed the name of the real party of interest during the appeal. The patentee alleges that this would jeopardize admissibility of the appeal. The Board decides that it does not. 

T 2365/11 - link 

Reasons for the Decision

1. The appeal is admissible.

2. The invention

[]

3. Admissibility of the opposition

The notice of opposition was filed by a natural person (Dr D.E.). According to the appellant (patent proprietor), the difficulty with the admissibility of the opposition arose from the submission of 24 August 2011 (filed by the opponent's attorney to indicate the language which would be used during the oral proceedings before the Opposition Division) referring to Hisamitsu as the opponent.
It took the view that the law had been circumvented by abuse of due process, because the opponent mentioned was different from that which had filed the notice of opposition. This created ambiguity, in that the identity of the opponent was not clear. This was different from the situation in which the "true" opponent was not known at all, as in the case leading to G3/97 (OJ EPO 1998, 245). D8 showed that Hisamitsu was active in the same field of technology. Moreover, as the declared opponent was acting on behalf of Hisamitsu it did not have full legal capacity, because it could not for instance withdraw the opposition without asking the true opponent, Hisamitsu. Therefore the opposition was not admissible.

T 1613/13 - Reintroducing requests

Key points

• " The request of the appellant during the oral proceedings to reinstate one of the requests filed with the statement of grounds of appeal, after these had been replaced by the new requests [] amounts, in terms of procedure, to the very late filing of a new request. 

• "There is no legal basis which would justify the non-admissibility of a request merely because it has been replaced by another. The board has a discretion to assess whether or not the withdrawal should be considered definitive, and whether the attempt to reintroduce the withdrawn request was justified or a misuse of proceedings." 

T 1613/13 - link

Reasons for the Decision

1. Admissibility of the request

1.1 The request of the appellant during the oral proceedings to reinstate one of the requests filed with the statement of grounds of appeal, after these had been replaced by the new requests (filed with letter of 11 February 2016) amounts, in terms of procedure, to the very late filing of a new request. The respondent contended that the appeal proceedings should be closed immediately and that the appeal be dismissed, since the board had not admitted the requests replacing those filed with the statement of grounds. According to the respondent there were no more requests on file, and no possibility for the board to allow the appellant to revert to a withdrawn request.

T 0308/14 - Binding effect covers finding of fact

EPO Headnote

If, in appeal proceedings, a case is remitted to the opposition division after the board has taken a decision under Article 84 EPC on the clarity of a certain feature in a claim - in the present case the weight average molecular weight of polysaccharides - this decision is res judicata and thus binding on the opposition division in the subsequently resumed opposition proceedings. The binding effect does not only cover the decision on Article 84 EPC as such; it also extends to any finding of fact that led to this decision. Therefore, if in the resumed opposition proceedings an insufficiency objection is made under Article 83 EPC on the basis that this very feature is ambiguous (insufficiency arising out of ambiguity), the opposition division should not reopen the discussion of whether this feature is clear, and should accept any finding of fact the board made in arriving at its decision on Article 84 EPC (point 1 of the Reasons). (emphasis added)

T 0308/14 - [C] - link

Reasons for the Decision

Main request

1. Article 83 EPC

1.1 The present appeal is the second appeal in this case. In decision T 1115/10 (point 9.3) on the first appeal, the board held that the feature "polysaccharides having a weight average molecular weight of not more than 10000" in claim 1 of the then second auxiliary request complied with Article 84 EPC. The board in particular reasoned as follows:

"... no proof has been provided that the alleged dependence exists also for these low weight average molecular weights. In the absence of any such proof, it can be assumed in the appellant's favour that the weight average molecular weight of not more than 10 000 in claim 1 does not depend on the measurement method. The inclusion of this weight average molecular weight in claim 1 therefore does not infringe the requirements of Article 84 EPC."

Hence, decision T 1115/10 contained the finding of fact that the weight average molecular weight of not more than 10 000 in claim 1 was clear in terms of Article 84 EPC since, taking into account the evidence on file, it did not depend on the measurement method applied.

1.2 After the board had remitted the case to the opposition division, various documents including D13a and D19 (D13a was denoted "D13" and D19 was denoted "Annex A - declaration" in these proceedings) were filed. The respondent argued on the basis of these documents that, in as far as the polysaccharides with a weight average molecular weight of not more than 10 000 were concerned, the invention lacked sufficiency of disclosure. In its decision, the opposition division agreed and reasoned that in view of D13a and D19 there were multiple measurement methods for the determination of the weight average molecular weight, and that the values so obtained depended on the type of method applied. The opposition division therefore decided that the main request (identical to the second auxiliary request in T 1115/10) did not comply with Article 83 EPC. The opposition division's decision was thus a decision on insufficiency arising out of ambiguity, namely the ambiguity of the weight average molecular weight in claim 1.

1.3 As set out above, it had already been finally decided in T 1115/10 that the requirements of Article 84 EPC were met. This decision constituted res judicata and thus was binding on the opposition division in the subsequently resumed opposition proceedings (Article 111(2) EPC). It was a matter of dispute between the parties whether the opposition division's decision on sufficiency contravened this binding effect of T 1115/10. The respondent argued that decision T 1115/10 only concerned Article 84 EPC and therefore did not bind the opposition division in its decision on Article 83 EPC.

The board does not agree. The binding effect of decision T 1115/10 does not only concern the decision on Article 84 EPC as such but extends to any finding of fact that led to this decision (T 843/91, headnote and point 3.4.2 and T 153/93, points 2 and 3), i.e. in the present case the finding that the weight average molecular weight in claim 1 did not depend on the measurement method. Therefore, the opposition division should not have reopened the discussion on this finding of fact when deciding whether any alleged ambiguity of the weight average molecular weight in claim 1 led to insufficiency, but should have accepted this finding as it stood. By not doing so, the opposition division violated the principle of res judicata and jeopardised the general interest of the public in the settlement of legal disputes.

1.4 This is not changed by the statement in the opposition division's decision (point 19.3) that "In T 1115/10 the board already expressed their concern about a possibly inconsistent measurement situation regarding Mw below 10 000 (p. 21-22, bridging paragraph)." This statement misinterprets decision T 1115/10, since a concern was expressed, if at all, only for high molecular weights namely 500 000 or above (first sentence of the last paragraph on page 21 of the decision).

1.5 The respondent argued that it had had very little time during the first appeal proceedings to make a proper insufficiency attack against the weight average molecular weight, and that it had completed this attack as early as possible once the opposition proceedings were resumed. The opposition division was thus correct in taking this attack into account and in denying sufficiency of disclosure.

The board does not agree with this argument. Firstly, the respondent did not dispute that it had not raised any objection during the first appeal proceedings that it had not had sufficient time to make its attack on sufficiency of disclosure. In fact, no such objection appears in T 1115/10. Secondly, the assertion that the attack was completed as early as possible has no bearing on the fact that T 1115/10 was binding on the opposition division.

1.6 In view of the above, the weight average molecular weight in claim 1 must still be considered not to depend on the measurement method applied. Consequently, the respondent's insufficiency attack, which starts from the opposite assumption, cannot succeed.

1.7 The appellant had requested that the decision of the opposition division to admit D19 (and reference documents D16 to D18) into the proceedings be set aside. The board agrees that the opposition division should indeed not have admitted these documents, since they were filed in order to reopen the question whether the weight average molecular weight in claim 1 depended on the measurement method. However, since, the respondent's insufficiency attack cannot succeed anyway, the board did not need to decide on the appellant's request.

T 1363/14 - Admissibility of witnesses

EPO Catchword

Verbot der vorweggenommenen Beweiswürdigung

Key points

• An OD commits a substantial procedural violation if it refuses to hear witnesses about public prior use on the ground that the presence of certain feature in the alleged prior art device can not be proven by witness' testimony.
• The Board notes that the EPC does not require that proof of the alleged public prior use is submitted during the opposition period, rather the facts must be stated. If a complete and not inconsistent statement of facts is given with the opposition, the evidence proffered as proof is to be admitted into the proceedings. Only thereafter can the evidence be evaluated. In this case, the OD had in effect arbitrarily precluded the opponent from proving his allegations with witnesses. Such an anticipatory evaluation of the evidence is not justified. 

T 1363/14 - [C] - link 

Entscheidungsgründe

1. Die Beschwerde ist zulässig.

2. Wesentlicher Verfahrensmangel

2.1 Zu ihrer Ablehnung der Anhörung der Zeugen [R] und [F] in Bezug auf die geltend gemachte offenkundige Vorbenutzung V hat die Einspruchsabteilung in ihrer Entscheidung vorgetragen, dass nicht belegt worden sei, dass die Befestigungsvorrichtung gemäß D11 an dem Triebfahrzeug F angebracht wurde. Sie sehe nicht ein, wie die Zeugen diese fehlenden Tatsachen lückenlos hätten beweisen können. Die Vorbenutzung sei deshalb unzureichend substanziiert, weshalb die Zeugen nicht geladen worden seien (vgl. den Punkt 13 der Entscheidungsgründe).

T 1036/11 - Opposition continued of own motion

Key points

• An opposition case involving a third-generation divisional and the OD continuing the opposition of its own motion, revoking the patent. The appeal is dismissed. 
• As in T 1972/10, the Board decides that the claims lack basis in the root application, because the root application (D1, with filing date in 1994) disclosed the use of the Botulinum toxin, not of the neurotoxic component of the toxin as now claimed.

Summary of Facts and Submissions

I. The appeal of the patent proprietors ("appellants") lies against the decision of the opposition division to revoke European patent No. EP 1 488 803, entitled "Neurotoxic component of botulinum toxins for treating cervical dystonia".

II. The following documents are referred to in the decision:

D1 WO95/17904

D2 EP 1 005 867 A2

D3 EP 1 366 770 A2

[]

III. The present patent is based upon European patent application No. 04019048.0, which is a divisional application of European patent application No. 03015589.9 (parent application, document D3), which is itself a divisional of European patent application No. 99203920.6 (grand parent application, document D2), which is itself a divisional of European patent application No. 95906674.7 (root application, document D1). [which is the European phae of PCT/US94/14717, filing date 19 December 1994).

IV. An opposition had been filed on the ground inter alia of Article 100(c) EPC in conjunction with Article 76(1) EPC. After the opponent had withdrawn its opposition on 17 November 2010, the opposition division continued the proceedings of its own motion. In the decision under appeal the opposition division dealt with a single request, all auxiliary requests having been withdrawn. It decided that there was no basis in any of the preceding applications for claiming the second medical use of the neurotoxic component of Botulinum toxin, and that therefore the requirements of Article 76(1) EPC were not met.

V. With their statement of grounds of appeal the appellants - who are the sole party to the appeal proceedings - filed a main request and auxiliary requests I to V. These were said to be the same requests as those filed in the first instance proceedings.

VI. The board issued a communication giving its preliminary opinion on the requests on file. The board also remarked on some discrepancies it had noted between the main requests as submitted with the statement of grounds of appeal and as filed in the first instance proceedings.

During oral proceedings held before the board on 2 February 2016 the appellants confirmed that the main request was identical to the main request before the opposition division. They withdrew auxiliary requests I to V.

Claim 1 of the main request reads:

"1. Use of the neurotoxic component of Botulinum toxin for the manufacture of a medicament for treatment of cervical dystonia, with the proviso that the treatment does not comprise

(i) administering to the patient a therapeutically effective amount of botulinum toxin of a selected serotype until the patient experiences loss of clinical response to the administered botulinum toxin and thereafter administering to the patient another botulinum toxin of a different serotype being administered in therapeutically effective amounts, wherein at least one of the above botulinum toxins is in the form of the neurotoxic component; or

(ii) administering to the patient a therapeutically effective amount of a combination of at least two neurotoxins selected from a group consisting of botulinum toxin types A, B, C, D, E, F and G, an amount of each selected neurotoxin being further selected to control a duration of therapeutic activity of the administered combination, wherein at least one of the above botulinum toxins is in the form of the neurotoxic component."

At the end of the oral proceedings the chairwoman announced the board's decision.

VIII. The arguments of the appellants can be summarised as follows:

Main (sole) request

Articles 100(c) and 76(1) EPC: claim 1

The critical issue was whether document D1 disclosed the medical use of the neurotoxic component - which was the active part of the neurotoxin complex without the accompanying non-active proteins - on its own.

[]

IX. The appellants requested that the decision under appeal be set aside and that the patent be maintained on the basis of the main request.

Reasons for the Decision

Main (sole) request

Articles 100(c) and 76(1) EPC: claim 1

1. Article 76(1), second sentence, EPC provides that a European divisional application may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed.

2. It is established case law of the Boards of Appeal that, in order to determine whether or not a divisional application extends beyond the content of the earlier application as filed, the same principles are to be applied as when determining whether or not an amendment offends against Article 123(2) EPC. Thus, the subject-matter of the divisional application must be directly and unambiguously derivable from the earlier application as filed (see Case Law of the Boards of Appeal of the EPO, 7th edition, 2013, section II.F.1.1). In the case of a sequence of applications consisting of a root (originating) application followed by divisional applications, each divided from its predecessor, for a divisional application of that sequence to comply with

Article 76(1), second sentence, EPC it is a necessary and sufficient condition that anything disclosed in it must be directly and unambiguously derivable from what is disclosed in each of the preceding applications as filed (see G 1/06, OJ 2008, 307, headnote).

3. Claim 1 relates to the use of the neurotoxic component of Botulinum toxin for the manufacture of a medicament for the treatment of cervical dystonia. It was uncontested that the neurotoxic component referred to in claim 1 is understood to be the active part of the neurotoxin complex without the accompanying non-active proteins.

4. The issue to be decided in the present case is whether or not the claimed use of the neurotoxic component of Botulinum toxin is disclosed in each of the preceding applications as filed, i.e. documents D1, D2 and D3 (see G 1/06, supra). Thus, if it is not disclosed in one of them, e.g. in the root application (document D1), there is no need to consider the disclosures of the other preceding applications.

5. Document D1 discloses "methods for treating various disorders and conditions, with Botulinum toxins" (see page 1, lines 7 to 9). According to page 2, lines 24 to 33 of document D1 "The term Botulinum toxin is a generic term embracing the family of toxins produced by the anaerobic bacterium Clostridium botulinum and, to date, seven immunologically distinct neurotoxins have been identified. These have been given the designations A, B, C, D, E, F and G. For further information concerning the properties of the various Botulinum toxins, reference is made to the article by Jankovic and Brin, The New England Journal of Medicine, No. 17, 1990, pp. 1186-1194 ..." [note by the board: this is document D6 in the present proceedings].

6. In the following two paragraphs on page 3, lines 5 to 24, document D1 provides a description of the structure of the neurotoxic component of Botulinum toxin. This passage is set out below in full:

"The neurotoxic component of Botulinum toxin has a molecular weight of about 150 kilodaltons and is thought to comprise a short polypeptide chain of about 50 kD which is considered to be responsible for the toxic properties of the toxin, i.e., by interfering with the exocytosis of acetylcholine, by decreasing the frequency of acetylcholine release, and a larger polypeptide chain of about 100 kD which is believed to be necessary to enable the toxin to bind to the presynaptic membrane.

The "short" and "long" chains are linked together by means of a simple disulfide bridge. (It is noted that certain serotypes of Botulinum toxin, e.g., type E, may exist in the form of a single chain un-nicked protein, as opposed to a dichain. The single chain form is less active but may be converted to the corresponding dichain by nicking with a protease, e.g., trypsin. Both the single and the dichain are useful in the method of the present invention.)"

7. The board is not persuaded that it is clear from the final sentence of the second complete paragraph on page 3 that the neurotoxic component of Botulinum toxin - without the accompanying non-active proteins - can be used in the invention. The sentence at issue needs to be considered in its context. It forms part of a bracketed passage consisting of three sentences (see point 6 above). This passage explains that certain serotypes of Botulinum toxin may exist in the form of a single chain as opposed to a dichain, that the single chain may be converted to the corresponding dichain, and that both the single and the dichain are useful in the method of the invention. The disclosure of the use of single and the dichain forms is thus made in the context of the Botulinum toxin, not in that of the neurotoxic component of Botulinum toxin. The use of the neurotoxic component of Botulinum toxin is thus not directly and unambiguously derivable from the passage on page 3 of document D1 (see also decision T 1972/10, reasons, point 21).

8. Therefore the appellants' argument that where document D1 refers to "Botulinum toxins" or "toxins" in general the skilled reader understands this to mean the different toxin forms, including complex, single chain neurotoxic component and dichain neurotoxic component, fails because it is based on the submission that document D1 discloses on page 3 that the use of the neurotoxic component is part of the invention.

9. The appellants further submitted that before the priority date of the patent the term "Botulinum toxin" did not refer exclusively to the complex but was also used in the art to refer to the neurotoxic component only, and that a skilled reader of document D1 would be aware of this. The board is not persuaded by this line of argument either.

10. Document D1 explains that "Botulinum toxin" is a generic term and refers the reader to document D6 for further information concerning the properties of the various Botulinum toxins (see point 5 above). Document D6 (see page 1186, left hand column, second paragraph) discloses that "the neurotoxic component of botulinum toxin (...) forms a complex with nontoxic proteins and hemagglutinin."

11. Document D5, also relied on by the appellants in this context, discloses (see page 72, first paragraph) that "Formation of an association complex with the nontoxin proteins appears to stabilize the activity of BTXs [Botulinum toxins], perhaps by helping to maintain a necessary secondary or tertiary structure (...). It is presumably for this reason that the only currently commercially available BTX for clinical use, type A, is formulated in the form of a toxin-hemagglutinin-containing nontoxin protein complex, rather than as a formulation of the pure toxin". Thus, also according to document D5, "Botulinum toxin" refers to the complex of neurotoxic component, non-toxic proteins and hemagglutinin while "pure toxin" is used for the neurotoxic component.

12. The board concludes that before the priority date of the patent the term "Botulinum toxin" had a defined meaning for the person skilled in the art and denoted the complex of neurotoxic component, non-toxic proteins and hemagglutinin. There is also no indication in document D1 that this term had a meaning different from that prevailing in the art before the priority date (see also point 5 above). Accordingly, the board sees no reason why the skilled person reading document D1 should understand "Botulinum toxin" to mean anything but the complex.

13. The appellants' final argument, which is based on the submission that, contrary to the prevailing view at the time, the inventors had determined that the neurotoxic component could be formulated as a stable preparation in both single and dichain form, is not found persuasive either.

14. As set out above (see point 11), at the priority date of the patent the only commercially available Botulinum toxin for clinical use, type A, was formulated in the form of a complex. The notion that the neurotoxic component could be formulated as a stable preparation on its own is not disclosed in document D1 which is completely silent as regards the separation of the neurotoxic component from the accompanying non-active proteins present in the complex. The skilled person thus has no reason to understand a reference to "toxin" in document D1 to mean the neurotoxic component.

15. The board concludes from the above that the claimed use of the neurotoxic component of Botulinum toxin is not disclosed in document D1. Therefore the main request does not meet the requirements of Article 76(1), second sentence, EPC.

Order

For these reasons it is decided that:

The appeal is dismissed.

T 2462/10 - Priority and the BVI

Key points

• In connection with the validity of the priority of a Euro-PCT application E1 as Article 54(3) EPC prior right  the patentee noted that the applicant  for E1 was a company having a place of business in the British Virgin Islands, with the US inventor as applicant for the US only. He raised the question whether "Art. 4 of the Paris Convention grant[s] the right to priority to nationals of non-member states?" The Board does not needs to answer these questions, because the claims were found to lack inventive step over E2. 
• It was not disputed that the BVI were not a member of the Paris Convention, PCT or WTO. The patentee argues that " any person" in Art. 4 A (1) PC must be read as " any national of a PC state, and non-nationals qualifying under Art. 3 PC" . This is supported by the WIPO handbook, " 5.22 The beneficiary of the right of priority is any person entitled to benefit from the national treatment rule who has duly filed ..." Bodenhausen and Wieczorek give the same explanation, and for the Madrid system of priority for trademarks it was said to be the same.
• Agreeing that the BVI applicant can not invoke priority based on the PC and PCT, the question is whether the validity of priority for purpose of Article 54(3) EPC is to be assessed under Article 87 EPC or the basis of Art. 8 PCT in connection with Art. 4 PC. Moreover, it can be questioned whether the applicant for the later application is relevant, or the fact that the applicant for the priority founding patent application (with the German patent office) was only the BVI company. 
• The attorney raising the issue was Dr. rer. nat. Dr. jur. Philipp Harlfinger. 

T 2462/10 -  link 

Summary of Facts and Submissions

I. This is an appeal by the patent proprietor against the decision of the opposition division revoking European patent No. 1 359 757.

II. Opposition had been filed against the patent as a whole, based on Article 100(a) EPC (novelty and inventive step).

During the proceedings before the opposition division the opponent had relied inter alia on the following documents:

E1: WO 97/22207 A1,
E2: DE 44 27 046 A1 and

E6: S. Breide, "Interaktives Fernsehen - Service on Demand (SoD)", FERNSEH- UND KINO-TECHNIK, 49. Jahrgang, Nr. 3/1995, pages 93 to 103.

III. In the decision under appeal, the opposition division held that:

- the priority of document E1 was validly claimed and thus document E1 was prior art under Article 54(3) EPC;

- the subject-matter of independent claims 1 and 7 of the patent as granted was not novel in view of each of prior-art documents E1 and E2; and

- the subject-matter of independent claims 1 and 7 of auxiliary requests 1 and 2 lacked novelty in view of prior-art document E1.

IV. With the statement of grounds of appeal the appellant (patent proprietor) filed amended claims according to auxiliary requests 1 to 3, which replaced the claims of auxiliary requests 1 and 2 underlying the decision under appeal, and requested that the decision under appeal be set aside and the patent be maintained as granted or in amended form on the basis of the auxiliary requests. The appellant also requested that, if the board considered the priority of document E1 to be valid, the matter be referred to the Enlarged Board of Appeal under Article 112(1)(a) EPC. Oral proceedings were requested as a precaution.

V. The respondent (opponent) requested that the appeal be dismissed. Oral proceedings were also requested as a precaution.

VI. The board summoned the parties to oral proceedings and in a communication under Article 15(1) RPBA (Rules of Procedure of the Boards of Appeal of the EPO, OJ EPO 2007, 536) informed them that they should be prepared to discuss at the oral proceedings inter alia novelty of the claimed subject-matter in view of document E2 and inventive step in view of documents E2 to E6.

VII. [] The appellant also requested that the following questions, filed with letter dated 4 March 2016, be referred to the Enlarged Board of Appeal according to Article 112(1)(a) EPC:

"1. Does the validity of a priority claim of a Euro-PCT-application for the purpose of citing said application as state of the art according to Art. 54 (3) EPC have to be assessed on the basis of Art. 8 PCT in connection with Art. 4 of the Paris convention?

2. If question 1 is answered yes, does Art. 4 of the Paris Convention grant the right to priority to nationals of non-member states?

3. Depending on question 1, may the validity of priority claim of a Euro-PCT-application may be assessed on a different set of rules (especially either PCT or EPC rules) in proceedings directly pertaining to the Euro-PCT-application (e.g. examination and/or opposition proceedings for the Euro-PCT-application)?".

The respondent's final request at the end of the oral proceedings was that the appeal be dismissed.

Before closing the oral proceedings the chairwoman announced the board's decision.

Reasons for the Decision

Request for referral to the Enlarged Board of Appeal

18. The appellant requested that several questions be referred to the Enlarged Board of Appeal (see point VII above). These questions relate exclusively to the validity of the priority claimed for document E1 which was considered as novelty-destroying prior art under Article 54(3) EPC in the decision under appeal.

Under Article 112(1)(a) EPC 1973, a board of appeal, either of its own motion or upon request from a party, refers any questions of law to the Enlarged Board of Appeal in order to ensure uniform application of the law, or if an important point of law arises, if it considers that a decision is required for the above purposes.

As is clear from the foregoing reasoning (points 2 to 17 above), document E1 is not taken into account for assessing the patentability of the subject-matter of claim 1 of the appellant's main request and first and second auxiliary requests. Hence, the validity of the priority claimed for document E1 is not relevant for the board's decision.

Consequently, the board does not see any necessity to refer the appellants' questions to the Enlarged Board of Appeal and the appellant's request must therefore be refused.

Order

For these reasons it is decided that:

1. The request for a referral to the Enlarged Board of Appeal is refused.

2. The appeal is dismissed.