T 0764/14 - Sufficiency of parameter

Key points

• " Any "errors" possibly associated to the procedures implied or described in the patent in suit for measuring the surface Na baseline and the % of surface Na removed, do not prevent the skilled person from carrying out all those embodiments of the claimed process wherein the measured amount of Na in the pretreatment solutions is well above 25% of the measured Na baseline, [which] certainly comply with requirement (A)." 
• The Board thus holds that the ambiguity deriving from such possibly unavoidable but limited "errors" does not "permeate the whole claim" and hence does not "deprive the skilled person of the promise of the invention" in the sense of e.g. decision T 0608/07 [].

EPO T 0764/14 - link

Reasons for the Decision

Main Request - Sufficiency

[...] 3.3.3 Hence, for the Board, at least in all those embodiments of the claimed process in which the (overall) amount of Na ions found in the pretreatment solutions is well above 25% of the measured surface Na baseline (possibly slightly higher than the actual amount of surface Na in the untreated carrier), the fraction of this amount that actually derives from surface Na must also inevitably be above the 25% of the actual amount of surface Na present in the untreated carrier. In other words, any "errors" possibly associated to the procedures implied or described in the patent in suit for measuring the surface Na baseline and the % of surface Na removed, do not prevent the skilled person from carrying out all those embodiments of the claimed process wherein the measured amount of Na in the pretreatment solutions is well above 25% of the measured Na baseline, certainly comply with requirement (A).

The Board thus holds that the ambiguity deriving from such possibly unavoidable but limited "errors" does not "permeate the whole claim" and hence does not "deprive the skilled person of the promise of the invention" in the sense of e.g. decision T 0608/07 of 27 April 2009, Reasons, 2.5.2).

T 2171/14 - Added subject matter is substantive

Key points

• " The opposition division drew a distinction between what it termed "formal arguments" [added subject-matter and insufficient disclosure] which it did "not want to get tied down in", and "the fundamental question" concerning "whether the actual subject-matter described in fact warrants the patent". " The ground for opposition under Article 100(c) EPC and the corresponding requirement of Article 123(2) EPC in regard to any amendment carried out on the patent in the course of the opposition and opposition appeal proceedings are of equal fundamental importance compared to other requirements, such as e.g. novelty, inventive step or sufficiency of disclosure, when it comes to deciding whether a patent can be maintained. Also, extension of subject-matter in the terms of Article 123(2) EPC is not a question of "form" of the patent, which might fall under the heading of a "formal requirement", but a substantive one. The standard used by the opposition division, concerning whether the invention "warrants the patent" is not a legal standard recognised by the EPC, not least since such a standard introduces undefined subjective criteria." 
• The lack of reasoning of the OD for rejecting the objections under Article 100(c) forms a substantial procedural violation. However, the case is not remitted, because the point was decided in favour of the appellant-proprietor, who requested the remittal. Together with the requested acceleration of the opposition procedure, these are "special reasons"  as required under Article 11 RPBA. The decision was given publication code [C] because of this decision not to remit.
• The patent is revoked. 

EPO T 2171/14 - link

Reasons for the Decision

Remittal

1. According to Article 111(1) EPC, second sentence, the Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.

2. An absolute right for the parties to have each objection decided upon by two instances does not follow from this provision of the EPC. Rather it confers discretionary power to the Boards of Appeal, under due consideration of all circumstances of the case, whether or not to remit the case to the department of first instance.

3. Nevertheless, according to Article 11 of the Rules of Procedure of the Boards of Appeal (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.

4. Fundamental deficiencies which may justify the immediate remittal include for example the lack of a reasoned decision (Rule 111(2) EPC).

The impugned decision presents a fundamental deficiency in that there is no reasoned decision in regard to the specific objections under Article 100(c) EPC made against Auxiliary Request V, which objections had been made originally against the main request and, as specifically stated in the minutes of the oral proceedings (see point VII above), had been maintained against the subject-matter of claim 1 of Auxiliary Request V found allowable by the opposition division.

5.1 As is apparent from point VIII above, the reasons given under the heading "Auxiliary Request V - disclosure" in points 36 to 40 of the decision address merely the amendments introduced during the opposition proceedings in claim 1 of auxiliary request V. Although points 39 and 40 comprise some allusions to the issues arising in respect of the various objections raised under Article 100(c) EPC, these cannot be considered to constitute a reasoned decision. There is no discussion of the arguments provided by the opponents in support of their objections and the cited passages of the description refer to the patent and not to the application as filed. Basis for the division's statement that the description "makes it clear that the baseplate should contain those components considered necessary" is not given; at least the cited paragraphs 19 and 43 of the patent do not contain such a disclosure. The final statement in point 40 of the decision, according to which there would be "no necessity apparent that all components must always be present", ignores the very principle to be applied when examining objections raised under Article 100(c) and 123(2) EPC, which is not about "necessity". Rather, the principle of direct and unambiguous disclosure of the subject-matter resulting from an amendment, as confirmed by the Enlarged Board of Appeal in its decision G 2/10 (OJ EPO 2012, 376, point 4.3), must be considered (see also below).

J 0011/12 - Claims fees upon entry

EPO Headnote
Wurden die Anspruchsgebühren gemäß Regel 162(1) EPÜ innerhalb der Frist nach Regel 159(1) EPÜ entrichtet und ist keine Mitteilung über eine Fristversäumung nach Regel 162(2) Satz 1 EPÜ ergangen, sind für zusätzliche Ansprüche, die unter Regel 161(1) EPÜ eingereicht wurden, unter Regel 162 EPÜ keine zusätzlichen Anspruchsgebühren zu entrichten.

Note: Rule 162(2) EPC is amended as of 1 January 2017 to stipulate that the claims fees are calculated on the basis of amended claims filed in response to the Rule 161 invitation (see OJ EPO 2016, A102)

Key points

• If the number of claims is increased to more than 15 with the response under Rule 161 EPC, no claims fees are due (if the number of claims upon entry was 15 or less).
• On the other hand, the refund of claims fees paid upon entry if the number of claims is reduced with the response under Rule 161 EPC is not affected.

EPO J 0011/12 ( EPO J 11/12) - link

Entscheidungsgründe

1. Zulässigkeit der Beschwerde

1.1 Die Beschwerde ist zulässig (vgl. Sachverhalt und Anträge, Punkt II).

2. Entstehungsgeschichte der Regeln 161 und 162 EPÜ

2.1 Die Regelung der Pflicht zur Zahlung von Anspruchsgebühren beim Eintritt von Euro-PCT-Anmeldungen in die europäische Phase geht auf die Regel 104b EPÜ 1973 zurück, welche anlässlich der konstituierenden Sitzung des Verwaltungsrats der Europäischen Patentorganisation in die Ausführungsordnung eingefügt wurde und am 1. Februar 1978 in Kraft trat (ABl. EPA 1978, 12). In dieser Bestimmung wurde bezüglich der Anspruchsgebühren lediglich auf Regel 31 EPÜ 1973 verwiesen, welche (entsprechend Regel 45 EPÜ) die Anspruchsgebühren für (direkte) europäische Patentanmeldungen regelte.

2.2 Die Änderung der Regel 104b EPÜ 1973 per 1. Juni 1991 (ABl. EPA 1991, 4) bewirkte im Hinblick auf die Anspruchsgebühren lediglich ein paar Klarstellungen, hauptsächlich bezüglich der Fristen (vgl. Dokument CA/52/90 Rev. 1, S. 51ff.). Gleichzeitig wurde in der neuen Regel 104c(3) EPÜ 1973 (analog zur Regel 31(2) EPÜ 1973) festgelegt, dass die nicht rechtzeitige Entrichtung einer Anspruchsgebühr als Verzicht auf den entsprechenden Patentanspruch gelte. Hinsichtlich der fälligen Anspruchsgebühren sollte für eine internationale Anmeldung vom Zeitpunkt ihrer Übermittlung an das EPA an dasselbe gelten wie für eine europäische Patentanmeldung (J 9/84, ABl. EPA 1985, 233, Punkt 5).

2.3 Die Nachfrist nach Regel 31(1) EPÜ 1973 für die Zahlung nicht entrichteter Anspruchsgebühren galt - durch den Verweis in Regel 104b EPÜ 1973 - auch für internationale Anmeldungen. Eine Reduktion der Anzahl der Ansprüche innerhalb der Nachfrist für die Zahlung der Anspruchsgebühren unter Regel 31(1) EPÜ 1973 führte nicht zu einer Reduktion der Anspruchsgebühren (J 6/96).

2.4 Die am 1. März 2000 in Kraft getretene neue Regel 110 EPÜ 1973 (ABl. EPA 1999, 690) schuf eine neue Rechtsgrundlage für die Erhebung von Anspruchsgebühren in der europäischen Phase und legte fest, auf welcher Grundlage sie zu berechnen sind. Die neue Struktur (Berechnungsgrundlage und Zahlungsfrist) beruhte auf der Anzahl der beim Eintritt in die europäische Phase vorhandenen Ansprüche, trug aber - "zugunsten des Anmelders" - auch dem Umstand Rechnung, dass sich die Anzahl der Ansprüche durch eine Änderung der internationalen Anmeldung verringern kann; in diesem Fall sollten zuviel entrichtete Anspruchsgebühren zurückerstattet werden (Mitteilung vom 13. Oktober 1999 betreffend die Änderung der Ausführungsordnung zum EPÜ, ABl. 1999, 696, Punkt 10). Die Berechnung der Anspruchsgebühren und die Rückzahlung allenfalls zu viel bezahlter Gebühren wurde in den Regeln 110(2) und 110(3) EPÜ 1973 in gleicher Weise geregelt wie in den im vorliegenden Fall anzuwendenden Regeln 162(2) und 162(3) EPÜ.

T 2248/12 - Unity

Key points

• The Board notes, following established case law that " The assessment of unity of invention requires as a precondition the analysis of the technical problem or problems underlying the respective groups of inventions, because only then is it possible to decide whether or not the same or corresponding special technical features exist for the different embodiments under consideration" 
• In this examination appeal, the Board finds that: " The "special technical features" [] common to the three variants S96C, R170C and K179C are that (i) the residues present at the three positions in the native protein are substituted by a cysteine, (ii) the three positions lie outside of the receptor contact region [] and (iii) these positions display a high solvent accessibility. The technical effects resulting from these features are that the three variants are readily PEGylated, and yet substantially retain their biological activity []. Consequently, the board considers that the technical problem underlying the three variants (see point 4 above) is the provision of Apo2L variants which are readily PEGylated and biologically active.
• As a note, this decision shows that, a rejection for lack of unity of invention requires an in-depth analysis of the patent application, not an analysis of the claims only.

EPO T 2248/12 -  link

Reasons for the Decision

Unity of invention (Article 82 EPC)

1. In the European grant procedure, the ultimate responsibility for establishing whether an application complies with the requirements of Article 82 EPC rests with the examining division, which has the duty to review the unity assessment made by the search division. The fact that the appellant has not paid further search fees does not prohibit this review (see e.g. decision T 631/97, headnote and points 3.6 to 3.8 and 3.9.2 of the Reasons).

T 0454/13 - Remote field

Key points

• The opponent alleges lack of inventive step based on D6 -D8.
• The Board is not persuaded. "D6 to D8 are however from a field remote from the field of biological testing [of claim 1], i.e. these documents all concern the manufacturing of semiconductor devices [] and therefore cannot give any hint of how to solve the problem of improving temperature uniformity between a plurality of samples of biological material located on a microcard." 

EPO T 0454/13 - link


Summary of Facts and Submissions

The sole independent claim of the patent as granted reads as follows:

"1. A sample block apparatus (30) for a thermal cycler configured for use with a microcard (12) containing a plurality of samples of biological material, comprising:
- a sample block (34) comprising an upper surface (52) configured for resting a microcard (12) thereon, the upper surface (52) including surface irregularities for defining spaces (54, 56) between the surface irregularities and a microcard (12) that may be positioned thereon;
 - a vacuum source in fluid communication with the space (54,56) []; and
 - a temperature control system []."

Reasons for the Decision

2. Inventive step

2.1 The invention

The invention concerns a sample block apparatus and a method for maintaining a microcard on a sample block.

2.2 Closest prior art

2.2.1 Appellant 2 proposed any of documents D1 to D4 as representing the closest prior art.

T 0266/15 - Clarity in opposition

Key point

• "The appellant argued that the patent in suit did not disclose, in a manner sufficiently clear and complete, how to obtain the claimed antimicrobial composite, in which the antimicrobial metal in elemental form was present in an amount of from 10 mg/m² to 600 mg/m² of composite. It further argued that this feature was not clear.
• Claim 11 as granted already required a (different) specific amount of antimicrobial metal in elemental form per surface of composite. Thus, any lack of clarity which could derive from that relative amount was already present in the claims as granted, and cannot be examined in these opposition appeal proceedings (G 3/14). Article 100(b) EPC was not invoked by the appellant in its notice of opposition. Such a fresh ground could only be examined during these appeal proceedings with the consent of the respondent (G 10/91), which had not been given." 
• As a note, the holding of G 10/91 regarding fresh grounds does not apply to any issues caused by the amendments made during opposition (T 0739/08). Although the Board may have considered that the attack could equally have been raised against claim 11 as granted, and is therefore not admissible, they don't say this.

T 0266/15 - link


Reasons for the Decision
First auxiliary request


4. Amendments


The appellant has not raised any objections under Article 123(2) EPC further to those already examined with respect to the main request, which the board considered not convincing for the reasons already explained (see point 2.2. above).


Clarity and sufficiency of disclosure


The appellant argued that the patent in suit did not disclose, in a manner sufficiently clear and complete, how to obtain the claimed antimicrobial composite, in which the antimicrobial metal in elemental form was present in an amount of from 10 mg/m**(2) to 600 mg/m**(2) of composite. It further argued that this feature was not clear.


Claim 11 as granted already required a (different) specific amount of antimicrobial metal in elemental form per surface of composite. Thus, any lack of clarity which could derive from that relative amount was already present in the claims as granted, and cannot be examined in these opposition appeal proceedings (G 3/14).


Article 100(b) EPC was not invoked by the appellant in its notice of opposition. Such a fresh ground could only be examined during these appeal proceedings with the consent of the respondent (G 10/91), which had not been given.


For those reasons, these objections are not admissible.

T 0089/13 - Sufficiency of parameter

Key points

• A straightforward case wherein the Board set aside a decision revoking the patent because a parameter if the claim was not precisely defined, because the argument "boils down to the argument that the boundaries of the claims [] are not clearly defined". This is a matter of clarity only.
• " The argument that the choice of the exact methodologies used for determining the content of ethylene content [...] and therefore its absence [...]  have an influence on the measurement of the content of ethylene [...] , meaning that a specific methodology applied on a specific sample might show t[...]  a content of ethylene within the claimed range, while a different methodology applied on the same sample might not, boils down to the argument that the boundaries of the claims defining the propylene/ethylene copolymers and the process for their preparation are not clearly defined. This, however, is a matter of clarity of the claimed subject-matter, not sufficiency of disclosure, as it was not shown, let alone argued, that knowledge of the exact methods to determine [...]  the content of ethylene in the range of 4.5 to 7% wt would be essential to meet the additional requirements defined in the claims. Such an objection under Article 84 EPC cannot be successful in the present case as it would not arise out of any amendment made in opposition or appeal proceedings."

T 0089/13 - link


Summary of Facts and Submissions

I. The appeal by the patent proprietor (appellant) lies from the decision of the Opposition Division posted on 14 November 2012 according to which European patent No. 1 879 931 was revoked.

II. The European patent was granted on the basis of 10 claims, independent claims 1 and 9 of which read as follows:

"1. Propylene/ethylene copolymers characterized by

- Ethylene content in the range of 4.5-7%wt;

- Mw/Mn (via GPC) in the range 3.5-5.5;

- Mz/Mw (via GPC) lower than 4;

- absence of 2-1 regioinversion, and

- Melting Temperature (Tm) (non-nucleated grade) lower than 143°C.

T 2316/12 - Grammatically problematic English

Key points

• The application was filed in English, being a translation from Chinese. The Board notes that, regarding the basis of certain features in some passages of the application as filed, that "these passages are written in such grammatically problematic English that a direct and unambiguous basis for the added feature cannot be found" .

T 2316/12 - link




Reasons for the Decision

5. Auxiliary request 3

5.1 Article 123(2) EPC

The subject-matter of claim 1 fails to meet the requirement of Article 123(2) EPC.

No direct and unambiguous disclosure is to be found in the application as filed of the feature added to claim 1 that the offset device and the drive motor are in a fixed eccentric position relative to the hub. As regards the basis for the amendment suggested by the appellant as being from page 5, line 31 to page 6, line 1 and on page 14, lines 11 to 15, both of these passages are written in such grammatically problematic English that a direct and unambiguous basis for the added feature cannot be found. In this respect the appellant argues that despite the lack of a literal textual basis a direct and unambiguous basis is nonetheless present in the figures. However, the figures each disclose a specific arrangement in which the feature taken up into claim 1 is disclosed in combination with further features. The omission at least of these further features from claim 1 thus results in the requirement of Article 123(2) EPC not being met.

5.3 It thus follows that the subject-matter of claim 1 extends beyond the content of the application as filed, contrary to the requirement of Article 123(2) EPC. Auxiliary request 3 is thus not allowable.

T 0369/12 - Closest prior art

Key points

• A straightforward case of the Board explaining the problem-solution approach, and finding the claims inventive, in an examination appeal.
• " The problem formulated by the Examining Division in point 17 of the impugned decision, directly concerning the stimulation of an involuntary cough, cannot be accepted, as it already contains an element of the proposed solution: the presence of the composition of L-tartrate implies the stimulation of involuntary coughs." 

EPO T 0369/12 -link

Reasons for the Decision

It is the established jurisprudence of the boards of appeal that the assessment of inventive step is performed by applying the problem-solution approach, according to which the closest prior art has to be identified first. If it is concluded that, starting from the closest prior art, the claimed subject-matter is inventive, then it will be inventive with any other piece of prior art as starting point.

T 0108/14 - Basis for "consisting essentially of"

Key point

• During prosecution, " containing"  was restricted to "consisting essentially of". The application does not provide literal basis. Is the amendment allowable under Article 123(2) EPC?
• The patentee argued that, according to decision T 1170/07, the substitution of the expression "consisting essentially of" for the term "comprising" was allowable.
• The board notes that, according to T 1170/07, the expression "consisting essentially of" excluded the presence in the claim of further active agents useful in the treatment of a specific disease but allowed the presence of additional compounds which were not active agents according to this definition, for instance the carrier for said active agent.
• "For the board, this decision does not apply to the case at issue because it is not directly and unambiguously derivable from the application as filed, which "active agents" are useful or not for the primary phase and for the secondary bond phase, respectively." 

T 0108/14 - link 

Consisting essentially of

Summary of Facts and Submissions

I. The present appeal lies from the decision of the opposition division to revoke European patent No. 1 666 433, with claim 1 as granted reading as follows:

"1. A silicon nitride-bonded SiC refractory which contains SiC as a main phase and a secondary bond phase essentially consisting of Si3N4 and Si2N2O along with at least one element selected from Al, Ca, Fe, Ti, Zr and Mg in terms of oxide, and which has a bending strength of 150 to 300 MPa and a bulk density of 2.6 to 2.9, and which contains the at least one element selected from the group consisting of Al, Ca, Fe, Ti, Zr and Mg in an amount of 0.1 to 3% by mass in terms of oxide."

Reasons for the Decision

1. Main request - Article 123(2) EPC

1.1 It is undisputed that claim 1 as granted has no literal basis in the application as filed. The question thus arises whether the subject-matter of this claim is, as required by the jurisprudence, directly and unambiguously derivable from the application documents as originally filed.

1.2 In the application as filed, the invention was defined as follows in claim 1:

"1. A silicon nitride-bonded SiC refractory which contains SiC as a main phase and Si3N4 and/or Si2N2O as a secondary phase and which has a bending strength of 150 to 300 MPa and a bulk density of 2.6 to 2.9."

In the particular embodiment according to claim 5, the invention was further specified as follows:

"5. The silicon nitride-bonded SiC refractory according to any of claims 1 to 4, which contains at least one member selected from the group consisting of Al, Ca, Fe, Ti, Zr and Mg, in an amount of 0.1 to 3% by mass in terms of oxide."

1.3 In the patent as granted, the invention was defined differently (see point I above), in particular as regards the secondary phase, which is now defined as being a "secondary bond phase essentially consisting of Si3N4 and Si2N2O along with at least one element selected from Al, Ca, Fe, Ti, Zr and Mg in terms of oxide", and the question thus arises as to whether there is a direct and unambiguous disclosure in the application as filed for this amended definition of the secondary phase, in particular as regards the features emphasised in bold.

1.4 The board did not find any basis in the original application documents for a secondary phase essentially consisting of Si3N4, Si2N2O and one or more oxides of Al, Ca, Fe, Ti, Zr and Mg. Moreover, the sole compositional analysis of a refractory according the invention (example 2) reveals the presence of at least a further component, namely SiO2 in an amount of 1.75 mass % (see table 3, page 16 as filed).

1.5 The appellant argued that the SiO2 in the refractory of example 2 was exclusively located, as explained at page 12, lines 15 to 25, on its surface in the form of a strong oxide film, as a result of a heat treatment in air at 1300 to 1500°C of the final refractory.

The passage at page 8, lines 4 to 10 furthermore made clear that, apart from those compounds defined in claim 1 at issue, no further compounds, in particular those in form of a glassy phase or cristobalite, were present in the refractory according to the invention.

1.6 These arguments do not convince the board because, as explained by the respondent, a substantial part of the SiO2 identified in the refractory of example 2 is necessarily located between the SiC grains of the main phase, i.e. in the secondary phase as a result of:
- the mandatory presence of 0.01 to 2.00% of oxygen in the nitrogen atmosphere used for firing the raw materials (see page 12, lines 3 to 5);
- the presence of oxygen in a bound form in Al2O3 and Fe2O3 (see Table 1);
- the post-treatment in air mentioned at page 12, lines 15 to 25.As all these oxygen atoms inevitably react at high temperature with the Si powder present in the starting raw materials (page 13, lines 15 to 18 and Table 1), the presence of SiO2 in the secondary bond phase, in addition to the Si2N2O already defined in claim 1, is evident to the skilled person.

1.7 The board also cannot accept the argument that a glass phase and cristobalite were explicitly excluded from the secondary phase, since the passage at page 8, lines 4 to 10, merely discloses that the "refractory of the present invention is preferred to contain at least one member selected from the group consisting of Al, Ca, Fe, Ti, Zr and Mg, in an amount of 0.1 to 3% by mass in terms of oxide, from the standpoint of [...], control of the amount of cristobalite to be formed, and control of the amount of glass phase to be formed", and so this passage merely means that the cristobalite and the glass phase are "controlled", not that these phases are excluded.

The appellant further argued that, according to decision T 1170/07, the substitution of the expression "consisting essentially of" for the term "comprising" was allowable.

The board notes that, according to T 1170/07, the expression "consisting essentially of" excluded the presence in the claim of further active agents useful in the treatment of a specific disease but allowed the presence of additional compounds which were not active agents according to this definition, for instance the carrier for said active agent.

For the board, this decision does not apply to the case at issue because it is not directly and unambiguously derivable from the application as filed, which "active agents" are useful or not for the primary phase and for the secondary bond phase, respectively.

1.9 The board is further aware of certain jurisprudence (e.g. T 1095/09, reasons 6; T 0759/91, reasons 2.2; T 0522/91, reasons 2.2; T 0472/88, reasons 3) according to which the expression "consisting essentially of" was found to be clear and to allow the presence of other components in addition to the components mandatory in the claimed composition, provided that the essential characteristics of the claimed composition were not materially affected by their presence.

In the present case, however, the application as filed is silent as regards the components which, in addition to those defined in claim 1 at issue, could be allowed in the claimed refractory without affecting its essential characteristics. The board furthermore notes that the application as filed also does not disclose whether SiO2, which is explicitly disclosed as being present in the refractory according to example 2 of the patent, affects the essential characteristics of the claimed refractory composition or not.

It follows that in the present case, the expression "essentially consisting of" is not unambiguous, since the meaning of essential is not evident from the application.

1.10 As a consequence of the above considerations, the limitation of the secondary bond phase to "essentially consisting of Si3N4 and Si2N2O along with at least one element selected from Al, Ca, Fe, Ti, Zr and Mg in terms of oxide" is not directly and unambiguously derivable from the application as filed, so this amendment does not meet the requirements of Article 123(2) EPC.

1.11 Since the main request does not meet the requirements of the EPC, it cannot be allowed.

T 0568/11 - Comparative examples

Key points

• A useful reminder of how to do comparative experiments before the EPO: what if not only the distinguishing feature is modified, but also some other features.
• " According to the established jurisprudence of the boards of appeal, each of the parties to the proceedings carries the burden of proof for the facts it alleges. As there is no apparent and compelling technical reason why the above mentioned additional differences between the compositions to be compared according to the respondent's tests would have no influence on the properties of the composition, let alone any supporting evidence in this respect, the respondent's argument concerning the significance of the comparisons offered is merely speculative and cannot be retained. Accordingly, the experimental tests relied on by the respondent cannot demonstrate a causal link between the [the distinguishing feature], and the purported improved chemical resistance and improved printability. Therefore, the present decision does not deviate from the findings in decision T 197/86, relied upon by the respondent, according to which the nature of the comparison with the closest state of the art in comparative tests submitted to demonstrate an inventive step on the basis of an improved effect must be such that the effect is convincingly shown to have its origin in the distinguishing feature of the invention."  

 EPO T 0568/11 -  link

Reasons for the Decision

3.2 Problem and solution

3.2.1 Having regard to the disclosure of either D1 or D3, the respondent submitted that the technical problem solved by the subject-matter of claim 1 of the patent in suit was the provision of aqueous compositions which lead to coatings having improved chemical resistance and inks having improved printability. That problem is meant to be solved by the use of a bulk polymerization for preparing the vinyl oligomer A instead of an emulsion polymerization.

T 2154/12 - Party disposition

Key points

• The opposition concerned only granted claims 1-12. The patent as granted also included independent claim 13, with further dependent claims. Nevertheless, the patent was revoked by the OD.
• The Board: " The principle of party disposition only allows the opposition division to decide upon requests as filed by the parties. Since the appellant only had a single request during the opposition procedure, and the opposition division decided that this request contained a claim 1 which did not meet the requirements of the EPC, the opposition division had no choice but to refuse this request as a whole, which, in the absence of any other requests, resulted in the revocation of the patent."

EPO T 2154/12  - link


Reasons for the Decision

5. Request for reimbursement of the appeal fee

5.1 It was advanced on behalf of the appellant that there was no opportunity to file auxiliary requests during the opposition proceedings and the opponent had the last word in the first instance proceedings.

The board notes that with the letter dated 20 January 2010 the appellant filed an amended set of claims 1 to 14 as main request during the opposition proceedings.

With the letter dated 30 July 2010 the opponent responded to this amended set of claims 1 to 14.

The decision of the opposition division was issued on 6 September 2012.

Since the decision was issued more than two years after the last reply of the opponent, the board considers that the appellant had had enough time to file further requests, including a request for oral proceedings. Since the appellant had not done so, it was not up to the opposition division to elicit additional requests from a party in an inter-partes procedure.

5.2 It was further advanced on behalf of the appellant that the opposition division acted incorrectly in revoking the patent as granted as a whole, given that the opposition only concerned granted claims 1 to 12.

The principle of party disposition only allows the opposition division to decide upon requests as filed by the parties. Since the appellant only had a single request during the opposition procedure, and the opposition division decided that this request contained a claim 1 which did not meet the requirements of the EPC, the opposition division had no choice but to refuse this request as a whole, which, in the absence of any other requests, resulted in the revocation of the patent.

It is only in the present appeal proceedings, that the appellant filed auxiliary requests, including one (auxiliary request 6) limiting the subject-matter to the non-opposed parts of the patent in suit.

5.3 It follows that the opposition division did not commit a substantial procedural violation. In consequence, none of the arguments advanced on behalf of the appellant justify the request for reimbursement of the appeal fee (Rule 67 EPC 1973 applicable here).

T 2044/11 - Industrially applicable

Key points

• The Board "Accordingly, there is no difficulty in carrying out the invention, which, as a consequence, is also industrially applicable." 
• I seriously doubt if the requirement of sufficient disclosure under Article 83 EPC is or should be the same as the requirement of industrial application under Article 57 EPC.

T 2044/11 - link

Summary of Facts and Submissions

I. By its decision posted on 7 July 2011 the opposition division revoked European patent No. 9 282 34.

The opposition division found that the claimed invention was sufficiently disclosed and industrially applicable but that the subject-matter of claim 1 lacked an inventive step in view of the combination of E1 and E3.

II. The appellant (patent proprietor) lodged an appeal against that decision in the prescribed form and within the prescribed time limit. [...]

T 2593/11 - Stent with clamp

Key points

• The Board "would emphasise that the requirements of Article 123(2) EPC differ from those of Article 83 EPC. Article 123(2) EPC aims more particularly to prevent inventors from obtaining protection for inventions they had not thought of at the date of filing, respectively not put into their application as filed. Article 83 EPC aims more particularly to prevent them from obtaining protection for "theoretical" inventions which could not be carried out at the date of filing. While in some specific instances there might be a link between the two, in the present case, as explained above, the manufacturing of the medical device from a planar braided metal fabric is clearly disclosed." 
• Filing date 1 september 1998, first text intended for grant 4 May 2007, further text intended for grant 7 May 2010, decision to refuse 4 August 2011. Let's see if the application can be granted within the 20 year patent term.

EPO T 2593/11 - link

Reasons for the Decision

3. Added subject-matter

3.3 However, this does not mean that devices made from a planar braided metal fabric were not disclosed. Indeed, the more general part of the description (page 6, line 14 to page 13, line 23) mentions several times that tubular or planar braided metal fabrics can be used, without indicating any specific advantage of the one option over the other (page 6, line 17; page 6, line 19; page 7, line 13; page 8, line 9; page 8, line 12; page 10, line 4; page 11, line 17).

More specifically, for instance, the second paragraph of page 8 describes how the device is manufactured (the issue queried by the Examining Division):

T 1941/11 - A central difficulty with the application

Key points

• The present decision does not contain a particular point of case law. Rather, the decision is interesting in that in this Examination appeal, the Board seems to feel the pain of the applicant (or professional representative) for the poor drafting of the application.
• " A central difficulty with the application has been the lack of basis for a formulation of thread scheduling in relation to pipeline structure."
• The Board also states that " Computer processors are complicated things, as the appellant argued during oral proceedings" (at [11]). Accordingly, the detailed discussion of inventive step is omitted in this blog posts.

T 1941/11 - link

Reasons for the Decision

[] The Invention

2. The application is one of several that concern the "Sandbridge Sandblaster" processor. Two others, at least, have been the subject of appeal proceedings (T 2241/10 Pipelined multioperand adder/QUALCOMM and T 1963/11 Multithreaded processor/QUALCOMM). D1 and D4 also address aspects of this processor. The processor in question is designed for use in mobile devices, especially in view of specific requirements for digital signal processing (see, for example, D1, section 6.1). The application does not identify this context, let alone explain it. As a consequence, it has been difficult for the appellant to formulate requests that reflect the true technical background.

3. The processor, shown in Figure 4 of the application, has three processing sections. One deals with branch instructions, one with integer and load/store operations, and one with vector operations. The appellant has now restricted claim 1 to a particular situation which arises in the vector processor. It concerns the interactions between a vector processing pipeline and a plurality of threads, when a particular instruction is issued twice in succession to the vector processor (this is described in more detail, below).

4. The application sets out a problem with pipelined processors generally: when two instructions are simultaneously in the pipeline and the second requires some data generated by the first, the second will have to wait (otherwise, the second instruction will read the wrong data). This is shown in Figure 2 of the application. The pipeline is idle for one or more clock cycles, which means the processor cannot be fully utilised. The application calls such idle cycles "bubbles" and seeks to avoid them.

5. It was known completely to eliminate bubbles by processing a number of different threads. Instructions from different threads are assumed to be independent, so by interposing enough instructions from other threads, it can be assumed that a first instruction has completely finished its execution before a second instruction from the same thread enters the pipeline. If the pipeline has N stages, and there are at least N threads, then each instruction of each thread will have finished execution, before the next instruction of the same thread. This, however, assumes that each thread takes a turn at most once every N threads. As explained in D5 (page 35, right-hand column), but, unfortunately, not in the application, this has a drawback: each thread gets one N-th of the processor time, and there is no flexibility for threads that need to issue instructions more frequently or which can get by with less. D5 mentions two ways of ameliorating this. Firstly, the compiler may indicate dependencies between instructions, so that the instructions from one thread can safely be fed in to a pipeline more frequently (a sort of dependency checking). Secondly, the caching technique set out in D7 may be used. The application seeks another way of allowing instructions from a single thread safely to overlap in the pipeline.

6. As the application describes it, the invention consists in allowing one thread out of several to have two or more instructions in the pipeline at one one time, and this is achieved by having a number of threads which is smaller than the number of the pipeline stages.

7. In its full generality, the invention does not use round-robin scheduling of threads but "token triggered threading", which (again unfortunately) is not described in the application (see page 9, lines 12 - 18 of the published application), but in another application (US6842848). Although this technique is described as one possible embodiment, it is in fact the most general form of thread scheduling envisaged in terms of the order in which different threads issue instructions to the pipeline. In particular, it can implement round-robin scheduling. A central difficulty with the application has been the lack of basis for a formulation of thread scheduling in relation to pipeline structure.

8. Claim 1 according to the sole request is restricted to the situation in which one thread issues consecutive V_Mul_REDUCE instructions. There are various versions of this instruction, as the application attempts to explain (page 11, lines 14 - 23), but they all use the pipeline structure shown in the bottom row of Figure 6. Although claim 1 does not define this pipeline structure, it is the only example given and the claim must be read so as to include at least this structure. The pipeline consists of thirteen stages. When implemented in the processor of D1 (the "Sandbridge Sandblaster", also set out in US2003/0120901, to which the application refers at lines 19 - 23 on page 6) so that there are eight threads, each of which issues an instruction every eight clock cycles, the second V_Mul_REDUCE instruction enters the pipeline before the first has finished. Nevertheless, there are no bubbles. This is because the accumulator read stage (the sixth stage of the pipeline) necessarily occurs after the previous instruction has written to the accumulator. That, in turn, is because there are sufficient intervening threads.

T 0803/12 - Rule 106 only in appeal

Key points

• The patentee insists that he was not given the opportunity to present oral arguments regarding Auxiliary Requests 1 to 7 before the Opposition Division. According to the OD, the same issue of insufficient disclosure affected the main request and all auxiliary requests in the same way.
• The patentee submitted an objection under Rule 106 EPC because his right to be heard had been violated before the opposition division. The Board confirms that Rule 106 EPC does not apply to substantial procedural violations during first instance proceedings. "[A]ccording to the case law of the Enlarged Board of Appeal, decisions of departments of first instance cannot be reviewed under Article 112a EPC, even where the fundamental right to be heard has been infringed during the proceedings before the first instance".
• The patentee insisted on a remittal. The Board "considers that Article 32 TRIPs does not limit the board's discretion concerning remittal" 
• " The board is not aware of any legal basis which would empower it to instruct the opposition division to correct the minutes. [] The minutes fall under the exclusive remit of the department before which the oral proceedings took place". 

Reasons for the Decision

2. Remittal (Article 111(1) EPC)

2.1 The appellant requested that, if the main request were held not allowable, the case be remitted to the opposition division for further examination of the first to seventh auxiliary requests as regards the ground for opposition according to Article 100(b) EPC. The appellant argued that the case had to be remitted, since a substantial procedural violation had occurred before the opposition division because this ground for opposition was, according to the appellant and contrary to the statement in point 3 of the minutes of the oral proceedings before the opposition division ("The chairman stated that the parties should present their arguments in detail and thoroughly since this objection applied equally to all pending requests"), only discussed in relation to the main request (see also the appellant's request for correction of the minutes dated 6 March 2012). The appellant argued that its right to be heard in respect of this ground in relation to the auxiliary requests had thereby been violated.

OJ 2016, A48 - Examination division proper

Amendment Article 11 Rfees

Article 11 of the Rules relating to Fees (RFees) has been amended to read as follows:

"The examination fee provided for in Article 94, paragraph 1, of the Convention shall be refunded:
(a) in full if the European patent application is withdrawn, refused or deemed to be withdrawn before substantive examination has begun;
(b) at a rate of 50% if the European patent application is withdrawn after substantive examination has begun and

• before expiry of the time limit for replying to the first invitation under Article 94, paragraph 3, of the Convention issued by the Examining Division proper or,
• if no such invitation has been issued by the Examining Division, before the date of the communication under Rule 71, paragraph 3, of the Convention."

Comments

• This new rules introduces the concept of the "Examination division  proper". This is intended to distinguish from communications under Article 94(3) EPC issued by formalities officers. However, " normal"  communications under Article 94(3) EPC are also signed by the examiner on behalf of the Examining Division.  It would have been more precise to require that the communication under Article 94(3) EPC is signed by a technically qualified examiner (as mentioned in Article 18(2) EPC.
• It is not entirely clear why no 50% refund is available for withdrawal after a Rule 71(3) Communication in those cases that no Article 94(3) Communication is issued.

Posted on 9 July 2016.

T 1020/11 - By the same token Art 84

Key points

• In this examination appeal, the Board finds that Article 83 EPC is complied with, " in the absence of such verifiable facts relevant to the specific case, the board cannot find the objection of lack of sufficient disclosure persuasive." 
• "It follows that the board concludes that claims 1 to 24 of the main request meet the requirements of Article 83 EPC and by the same token, the requirements of Article 84 EPC for support in the description." 
• Therefore, the requirement of support under Article 84 EPC does not provide an way for examiner to raise sufficiency of disclosure objections not substantiated by verifiable facts. 

Reasons for the Decision

Article 83 EPC - Disclosure of the invention

Article 84 EPC - Support in the description

5. In its decision, the examining division held that claims 1 to 9 of both the main and auxiliary request related to an invention which the patent application did not disclose sufficiently clearly or completely for it to be carried out by a person skilled in the art. The reason given for this finding was the absence of information about "how and how much [of the PRRS antigen] to give so that it works". This information was "crucial because success in vaccine development is unpredictable [...] the co-administration of two or more antigens is not always successful, even when it is known that the two antigens by themselves are efficient ("interference"). The phenomenon of interference has been recognized for decades and belongs to the common general knowledge of the skilled artisan, and the technical field is riddled with suitable examples of interference". In the section "Further Remarks", this reasoning was held to apply mutatis mutandis as an objection of lack of support in the description (Article 84 EPC).

6. The established case law of the boards of appeal is that a finding of lack of sufficient disclosure should be based on serious doubts, substantiated by verifiable facts (Case Law of the Boards of Appeal of the European Patent Office, 7th edition 2013, II.C. 4.3, 6.1.4 and 8.). The facts put forward by the examining division to justify a finding of lack of sufficient disclosure are based on the potential problem of immune interference between the PCV2 ORF2 protein and the PRRS antigen. As noted by the examining division, interference does not occur in every case and it is not predictable between which antigens it will occur. There is no evidence on file that interference occurs in the present case. Thus, the objection is based on a potential problem which might occur between different antigens in combination. There are however no verifiable facts on file that demonstrate that interference is a problem in the present, specific case. In the absence of such verifiable facts relevant to the specific case, the board cannot find the objection of lack of sufficient disclosure persuasive.

7. It follows that the board concludes that claims 1 to 24 of the main request meet the requirements of Article 83 EPC and by the same token, the requirements of Article 84 EPC for support in the description.

Article 84 EPC - Clarity

8. As an obiter dictum, the examining division remarked that the phrase "for lessening the severity of clinical symptoms associated with PCV2 infection" was unclear as it covered both prevention and treatment of an existing infection.

9. The board notes that, although the objection was raised under the heading lack of clarity, the reasoning provided (see Section III.II. ) shows that the examining division did not in fact question the skilled person's ability to understand the claim.

9.1 The board is of the view that, as submitted by the appellant (see Section X.X. ), the skilled person would realise that pigs may be held together in very large units and therefore the time of PCV2 infection will not be controlled. Thus, in veterinary practice, prevention and treatment cannot be readily distinguished and are not mutually exclusive. As a consequence, the board considers that, in the context of infection of pigs with PCV2, the skilled person would consider the expression "(i) lessening the severity of clinical symptoms associated with PCV2 infection, and/or (ii) preventing PCV2 infection, in piglets" to be clear.

9.2 The clarity of claims 2 to 24 was not questioned in the decision under appeal. The board see no reason to raise such objections of its own motion.

9.3 Accordingly, claims 1 to 24 of the main request are considered to meet the requirements of Article 84 EPC for clarity.

10. In summary, the board finds that the claims of the main request meet the requirements of Article 123(2) EPC, Article 83 and Article 84 EPC.

Article 111(1) EPC - Remittal

11. In view of the appellant's request (see Section XI) and also considering that, beyond a brief negative comment as obiter dictum, the question of inventive step was not addressed in the contested decision, the board considers it appropriate to make use of its discretion under Article 111(1) EPC and remits the case 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.

T 0473/13 - Up to the hilt

Key points

• The board considers moreover that the much-cited "up to the hilt" criterion does not apply in the present circumstances, since that case law was developed for the situation in which a prior use was by the opponent, which is not the case here.

EPO T 0473/13 - link

Reasons for the Decision

11. Alleged public prior use - Public availability

11.1 The board is of the opinion that in the circumstances described in the documents D24 to D28, it is highly likely that, as part of the cooperation between ABB and the utility VB-Elnät described there, employees of VB-Elnät would have gained knowledge of the technical nature of the ABB equipment, specifically as a prerequisite for giving permission for this equipment to be connected to their network. The board therefore agrees with the intervener that the issue which needs to be decided in order determine whether information concerning the prior use was made available to the public is that of whether those employees were bound by a confidentiality agreement. Contrary to what was argued by the respondent, the board considers it unlikely that the utility would have agreed to the ABB equipment being connected to the network without knowing its nature, at least to the degree of detail defined in granted claim 1 of the patent in suit.

11.2 The board also agrees with the intervener that in these circumstances the burden of proof initially lies with the respondent to establish the existence of a confidentiality agreement. Concerning this issue, the respondent has presented arguments that in the context of a cooperation project between two companies in this technical field, as described for instance in D26, section 3.1, the normal practice would have been for there to have been at least an implicit duty of confidentiality on both companies involved. The respondent has moreover presented supporting evidence for this in the form of the affidavit by Lars Weimers, the project manager of the Hellsjön Project (and inventor of the patent in suit). Contrary to the argument of the intervener, the board considers these arguments and the supporting evidence to be sufficient to discharge the initial burden of proof on the respondent in this respect. The board considers moreover that the much-cited "up to the hilt" criterion does not apply in the present circumstances, since that case law was developed for the situation in which a prior use was by the opponent, which is not the case here.

11.3 Thus, in the view of the board, the burden of proof has shifted to the intervener to establish that there was no confidentiality agreement. The intervener has however presented no arguments or evidence which objectively might cast doubt on the existence of a confidentiality agreement, but has merely presented speculation in this respect. The respondent has argued that he was not able to do more than this, because all of the evidence relating to the prior use was in the hands of the respondent. The board considers that this is not the case, because at the very least the intervener had the possibility to contact VB-Elnät to enquire of them whether they considered a confidentiality agreement to have been in place. Moreover, the question of whether such confidentiality agreements represented normal practice could have been addressed by making enquiries of other organisations active in the technical field. The intervener seems not to have followed either of these possible courses of action, or provided any other relevant arguments or evidence, and has therefore not discharged the burden of proof in this respect.

11.4 The board therefore concludes that the public nature of the prior use has not been proven, so that it does not form part of the prior art. The substance of the objections of lack of novelty and lack of inventive step based on the prior use does not therefore need to be addressed.

12. In the light of the above, the board concludes that none of the grounds for opposition raised by the appellant and the intervener prejudices the maintenance of the patent as granted. The main request of the respondent to dismiss the appeal and to reject the opposition of the intervener has therefore to be granted. It was therefore not necessary to discuss the respondent's auxiliary request.

T 0435/11 - A difficult position

Key points

• In this examination appeal, the applicant submitted a main request with the statement of ground that reverted to broader claims that had been submitted during examination but were then narrowed. The ED had refused the narrower claims for lacking basis in the application as filed.
• The Board, reluctantly, admits the main request: "The appellant further submitted that, in the first-instance proceedings, it had focused on more specific requests for efficiency and business reasons. [] Also these arguments do not speak in favour of admission of the main request. Appeal proceedings are not intended to accommodate for a change of mind based on business considerations, []
• The Board states that the applicant had maneuvered itself in "a difficult position" with the narrower claims. " If the appellant in these appeal proceedings is to be afforded a way out at all, it has to be allowed to revert to a claim with the offending features removed, i.e. to claim 1 of the previous main request. The Board therefore decides to exercise its discretion in the appellant's favour and to admit the main request into the proceedings." 

Summary of Facts and Submissions

I. The applicant (appellant) appealed against the decision of the Examining Division refusing European patent application No. 04733534.4, filed as international application PCT/EP2004/005358 and published as WO 2004/102420.

T 0864/12 - Res judicata

Key points

• In this decision, it is res judicata that claim 1 is novel over D1 (from an earlier appeal decision). The opponent submits evidence showing that example 16 of D1 upon reworking anticipates claim 1. The Board decides that therefore claim 1 lacks inventive step, in analogy to G 7/95. 

EPO T 0864/12  - link

Reasons for the Decision

1. Inventive step

1.1 The novelty of claim 1 of the present request over the same disclosure of example 16 of D1 has been addressed and has been decided upon by the board in decision T 859/06. It appears to the board in its present composition that the facts of the case have not changed since that decision. The decision provided in T 859/06 on novelty is res judicata and the present board consequently has no power to reconsider whether the requirements of Article 54 EPC have been met.

[...]

1.4 According to the decision G 7/95 of the Enlarged Board of Appeal, an allegation that the claims lack novelty in view of the closest prior art document may be considered in the context of deciding upon the ground of inventive step (G 7/95, Order, second paragraph). Therefore, a finding of lack of novelty in these circumstances may inevitably result in such subject-matter being unallowable on the ground of lack of inventive step. Although the circumstances of the present case differ from those of G 7/95 and the associated decision G 1/95, in that the reasons for the lack of availability of the ground pursuant to Article 54 EPC are not the same, the Board is of the opinion that the conclusion drawn up by the Enlarged Board of Appeal may be applied here. Following the decision G 7/95, should Example 16 of D1 be found to disclose a composition according to claim 1 of the patent in suit, that claim may be found to lack an inventive step.

[] 1.8 [] As a result, it was convincingly shown by the repetition of D1, example 16 submitted in D27 that the polypropylene composition disclosed in example 16 of D1 was according to claim 1 of the operative request.

1.9 In G 7/95, it was decided that if the closest prior art document destroys the novelty of the claimed subject matter, such subject-matter obviously cannot involve an inventive step. A finding of lack of novelty in such circumstances was then considered to result in such subject-matter being inevitably unallowable on the ground of lack of inventive step.

As shown above, the subject matter of claim 1 cannot be distinguished from example 16 of D1 which represents the closest prior art. The subject matter of claim 1, following the considerations of G 7/95 therefore lacks an inventive step.

The operative request does not fulfil the requirements of Article 56 EPC.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.