31 Aug 2016

T 1872/14 - Allowable disclaimer for A54(2)

Key points

  • Opposition was filed against a patent with an undisclosed disclaimer in the claims as granted. The Board finds that the disclaimer is allowable. 
  • Moreover, the document D1 of which the example was disclaimed, was an application of the same applicant, and would therefore be a first filing for the now claimed subject matter without the disclaimer. The disclaimer therefore also restores validity of the claimed priority (and renders D1 a prior right and not Article 54(2)  EPC prior art). The Board deems this allowable. The remark in G 1/03, that introducing a valid disclaimer, does not affect priority, can not be understood the other way around.
  • " Therefore, on a objective reading, said passage [ in G 1/03] cannot be said to advocate that the entitlement to priority is to be evaluated based on the subject-matter claimed prior to the introduction of the disclaimer; rather, the subject-matter actually claimed is to be taken as the starting point and compared with the content of the priority document, in order to establish whether the introduction of the disclaimer changes the identity of what is claimed, in analogy to the criteria set out in decision G 2/10"
  • The Board hence does not follow T 1222/11, wherein the Board expressly rejected the use of a disclaimer, because the earlier filing in that case was Article 54(2) EPC prior art for the claim without disclaimer. 
  • The Board further explains that " contrary to the submission of the appellant opponents, the problem-solution approach was not merely developed as an exercise in time saving, but rather in order to ensure an objective assessment of inventive step and avoid ex post facto analysis of the prior art" 

EPO T 1872/14 - link (online 27.07.2016)

Summary of Facts and Submissions
I. European patent No. 1 920 764 was filed as patent application No. 08 100 474.9 (document (34)). It is a divisional application of the parent application No. 04 077 870.6, which in turn is a divisional application of the root application No. 94 305 752.1 (document (35)), filed on 3 August 1994 and claiming priority of 3 August 1993 from the US patent application No. 08/101,598 (document (36)).
II. Independent claim 1 of the patent in suit as granted reads as follows (emphasis added):
"1. A topical ophthalmic composition for use in the treatment of glaucoma and ocular hypertension comprising a therapeutically effective amount of fluprostenol isopropyl ester,
with the proviso that the composition does not include the following composition: compound (F) 0.0001 wt%, fluprostenol isopropyl ester 0.001 wt%, benzalkonium chloride 0.01 wt%, dextran 70 0.1 wt%, disodium edetate 0.05 wt%, potassium chloride 0.12 wt%, sodium chloride 0.77 wt%, hydroxypropyl methyl cellulose 0.3 wt%, HCl and/or NaOH to adjust pH, and purified water q.s. to 100%, wherein compound (F) has the following formula: FORMULA/TABLE/GRAPHIC"

30 Aug 2016

T1663/13 - Costs awarded and fixed

Key points

  • The Board awards a cost apportionment against the opponent, and fixes the amount at about E 9000 (mostly, four days attorney time preparing for the cancelled oral proceedings).
  • The opponent was a one-man patent attorney firm (as straw man), so hopefully for the professional representative involved, the client will pay. 

EPO T1663/13 -  link

Summary of Facts and Submissions
I. This decision concerns the apportionment of costs relating to the appeal filed by the opponent against the decision of the opposition division to reject the opposition against European patent No. 1 886 585. [...]
IV. In its decision, which was issued in writing on 15 May 2013, the opposition division rejected the opposition and, in view of the fact that the opponent had informed the EPO only at a very late stage that it would not be attending the oral proceedings, decided that the proprietor's request for apportionment of costs was justified and ordered that its travel and accommodation costs be borne in full by the opponent.
V. On 25 July 2013, the opponent filed an appeal. With the statement of grounds of appeal, submitted on 16 September 2013, the opponent requested that the decision under appeal be set aside and that the patent be revoked, and that otherwise oral proceedings be appointed. The opponent did not appeal the opposition division's decision on the apportionment of costs.

29 Aug 2016

T 2067/12 - Result to be achieved

Key points

  • The Board decides on clarity of a functional feature " defin[ing] the device by a technical result to be achieved". The Board states that in accordance with established case law  such features are permissible in a claim " if (i) from an objective viewpoint they could not otherwise be defined more precisely without restricting the scope of the invention, and (ii) if they provide instructions that are sufficiently clear for a skilled person to be able to reduce them to practice without undue burden, if necessary with reasonable experiments [] In other words, the functional feature must not only be such that the skilled person can understand it, but he must also be able to implement it in accordance with the requirements of Article 84 EPC."  (As a comment, I am not sure whether this introduces an element of sufficiency of disclosure)
  • The Board finds that in this case, the functional feature defines an advantage of the device in its functioning state. Thus, the functional feature amounts to a mere desideratum. " It is not apparent how such a broadly defined desideratum could provide the skilled person with instructions which are sufficiently clear to enable him to reduce them to practice" . Therefore, the requirement (ii) is not complied with. 

EPO T 2067/12 - link

Reasons for the Decision
1. Amendments
1.1 Claim 1 of the sole request differs from claim 1 as granted in that the device is further defined by indicating at the end of the claim that
"and only the needles that have been inserted into the product deliver liquid".
This feature is based on page 2, lines 5 to 6 of the application as filed (see also paragraph [0006] of the patent specification).
The amendment was made during the opposition proceedings in order to establish novelty over a public prior use involving device MBI-135-C No. 420 (D6). The opposition division had denied novelty of granted claim 1 because this known device disclosed both the features of the preamble of claim 1 and the characterising part, namely that locking means were provided for locking the needles in their position projecting relatively less far out of the holder.
1.3 The amendment amounts to the introduction of a functional feature into the claim, in the sense that it now defines the device by a technical result to be achieved, that is to say the locking means (15) of the device are to be constructed in such a way that they ensure that "only the needles that have been inserted into the product deliver liquid" (and, by implication, that those not inserted do not deliver liquid).
1.4 As the claim has been amended by introducing a feature taken from the description, it is first necessary to examine whether it fulfils the clarity requirements of Article 84 EPC.
1.4.1 In accordance with established case law of the boards of appeal, functional features defining a technical result are permissible in a claim if (i) from an objective viewpoint they could not otherwise be defined more precisely without restricting the scope of the invention, and (ii) if they provide instructions that are sufficiently clear for a skilled person to be able to reduce them to practice without undue burden, if necessary with reasonable experiments (see decision T 68/85, OJ 1987, 228, headnote). In other words, the functional feature must not only be such that the skilled person can understand it, but he must also be able to implement it in accordance with the requirements of Article 84 EPC.
Concerning the first criterion it is noted that the patent specification in paragraphs [0007] to [0009] describes technical features of a locking system that ensure that only the needles that have been inserted into the product deliver liquid and that they do this both when they are being pushed into the product and when they are being extracted from it.
1.4.3 Whether or not the introduction of these specific technical features would unduly restrict the scope of the invention can be left unanswered because the functional feature does not in any case fulfil the second criterion, namely it does not provide clear instructions of how to put it into practice. This is the case for the following reasons:
- Firstly, the functional feature defines an advantage of the device in its functioning state, as can be seen from paragraph [0006] of the patent specification. Thus, the functional feature amounts to a mere desideratum. It is not apparent how such a broadly defined desideratum could provide the skilled person with instructions which are sufficiently clear to enable him to reduce them to practice (see in this context point 8.4.3 of T 68/85). It is, for example, not clear whether and how the added functional feature is interrelated with the locking means (15), whether the control of the delivery of liquid occurs automatically or via the locking means (15), or which other means are envisaged.
Moreover, this lack of clarity is aggravated by the fact that the use of the device includes a first descending step of inserting the needles into the product and a second ascending step of extracting them. Although it is mentioned in paragraph [0006] of the patent specification that the needles deliver liquid both when they are being pushed into the product and when they are being extracted from it, this is not clear from the wording of the claim itself, which is open on this issue.
1.5 In summary, the functional definition present in claim 1 cannot be accepted and the claim does not fulfil the requirements of Article 84 EPC.
2. Consequently, the respondent's request is not allowable.
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The patent is revoked.

26 Aug 2016

T 0779/11 - Refusal without search

Key points

  • An examination appeal against refusal for a patent application for, essentially, a case law database. No search was carried by the EPO as ISA and no further search was carried out during the European phase. Does the lack of search constitutes a substantial procedural violation? The Board decides it is not. The decision of the EPO as ISA to issue a declaration of non-search is not open to review, because it has no legal consequences for examination.  
  • The Board notes that Rule 137(5)  states that amended claims "may [not] relate to subject-matter not searched in accordance with Rule 62a or Rule 63". The EPC contains no provision providing for a similar legal effect of a declaration under Article 17(2)(a) PCT (that no international search report is established).
EPO T 0779/11  - link

Reasons for the Decision
3. Lack of a prior-art search
The appellant contested the correctness of the declaration issued under Article 17(2)(a) PCT and argued that the Examining Division had committed a substantial procedural violation by not carrying out a prior-art search. Article 92 EPC required the EPO to perform a search on the basis of the claims, including the dependent claims, with due regard to the description and any drawings. As confirmed by the Guidelines for Examination, the description was to be consulted with a view to establishing the technical problem and the existence of fallback positions. The Examining Division had focused only on claim 1, which had made it difficult for the appellant to know how to proceed. In addition, applicants paid money for having a search performed.
3.2 In the statement of grounds of appeal, the appellant stated that the Examining Division's decision not to perform a prior-art search on the basis of Rule 45 EPC 1973 at all was against the established case law of the Boards of Appeal. This statement is somewhat inaccurate in that it is not the Examining Division that issues the declaration under Rule 63 EPC (previously Rule 45 EPC 1973) that it is impossible to carry out a meaningful search, but the Search Division. And in the present case, it was the EPO acting in its capacity of International Searching Authority that issued the declaration under Article 17(2)(a) PCT taking the place of the European search report (Article 153(6) EPC).
This appeal lies from the decision of the Examining Division to refuse the application and not from the declaration under Article 17(2)(a) PCT. The Board is competent to review the correctness of the decision under appeal. In the context of that review, it may review the correctness of other decisions at most indirectly and only in so far as they form part of the legal foundation of the decision under appeal. In the present case, the decision of the EPO acting as International Searching Authority to issue a declaration under Article 17(2)(a) PCT did not have direct legal consequences for the examination proceedings and the decision to which those proceedings led. Its correctness is therefore not a subject of this appeal.
In this context it may be noted that Rule 137(5), second sentence, EPC as amended by decision CA/D 3/09 (OJ EPO 2009, 299) states that amended claims "may [not] relate to subject-matter not searched in accordance with Rule 62a or Rule 63". The EPC contains no provision providing for a similar legal effect of a declaration under Article 17(2)(a) PCT.
3.4 Rather than having legal consequences, the issuing of the declaration under Article 17(2)(a) PCT had the practical effect that no results of a prior-art search were available when the examination proceedings commenced. The Board may examine whether the Examining Division correctly handled this situation and in particular whether it should have carried out an "additional search" (i.e. a search carried out at the examination stage as provided for in the Guidelines for Examination, C-IV, 7.2) to make up for the lack of a search report.

25 Aug 2016

T 1832/14 - Documents filed with appeal

Key points

  • The Board requires a justification as to why certain documents are submitted for the first time with the Statement of grounds in appeal. The Board decides that stating that the documents were found in "an additional search conducted as a reaction to certain statements and presumptions made by the Opposition Division in the impugned decision", is not enough. 

EPO T 1832/14 - link

Reasons for the Decision
1. Late-filed documents
1.1 Only part of document A6 was submitted during the opposition proceedings, while the rest was submitted for the first time with the statement of grounds of appeal. A7 had been submitted during the opposition proceedings and not admitted into the proceedings. Documents A8 to A13 were submitted with the statement of grounds. It thus needs to be decided whether these late-filed documents are to be admitted into the proceedings or may be disregarded (Article 114(2) EPC).
1.3 In respect of the delay in the submission of A8 to A13, the appellant merely submitted (letter of 6 November 2014, page 2) that they were found in "an additional search conducted as a reaction to certain statements and presumptions made by the Opposition Division in the impugned decision". This submission fails, however, to provide a concrete explanation as to which statements and presumptions of the appealed decision are to be considered and why they allegedly justify an additional search. Hence, no good reason can be seen for the delay in filing A8 to A13.

24 Aug 2016

T 1773/10 - Amendments in grounds

Key points

  • The Boards decide on sets of claims as requests only, also in examination appeals. Indicating possible amendments in (the text of) the Statement of ground does not work. The Board states that it "must disregard substantive requests that do not clearly define the text which should form the basis for the grant of a patent (Article 113(2) EPC)"
T 1773/10 - link

Summary of Facts and Submissions

I. The applicant (appellant) appealed against the decision of the Examining Division to refuse the European patent application no. 03738745.3 which was originally filed as international application PCT/KR2003/001317 and published as WO 2004/006252.

V. As indicated in the statement of grounds of appeal (see in particular section 6), the appellant requested that the decision under appeal be set aside and a patent be granted on the basis of the main request, and if necessary, with one or more of the "alternative amendments indicated in section 5 of the statement of grounds of appeal".

23 Aug 2016

T 0854/12 - Non-existing and insolvent patentee

Key points

  • The opponent appeals against the rejection of the opposition. During the first instance opposition proceedings, the patent was assigned to a woman who was the subject of (German) insolvency proceedings and had an insolvency administrator appointed. The Board finds that the Administrator had become the party to the opposition proceedings. The Board decides that no interruption of proceedings (Rule 142 EPC) had occurred in this case, despite the new patentee not being able to act herself in the proceedings (the condition laid down in Rule 142(1)(b) EPC). The reason is that the administrator had consented to the assignment and needs no time to familiarize himself with the situation, unlike the case envisaged in Rule 142 wherein a party (to EPO proceedings) becomes insolvent.
  • Moreover, the (Technical) Board of Appeal can decide whether an interruption had occurred, there is no need for a decision by the Legal Division. The Board does not agree with the comments submitted by the EPO President that the Legal Division would have exclusive competence. 
  • A further issue was that during the PCT phase, an earlier transfer of the application had been registered by WIPO, but the name registered as patentee, " [S] & Company Unternehmensberatung" was not the name of legal or natural person. Rather it was a (non-registered) tradename of the enterprise of the same woman. The procedure before the OD had been carried out with that tradename as patentee and party. This constitutes a substantial procedural violation because the enterprise is not a legal person and can not be party to proceedings before the EPO. 
  • The Board remits the case back to the OD. That the substantive arguments (novelty etc. ) will likely be the same after the remittal, is not unusual in cases wherein a substantial procedural violation occurs and can not be a special ground for not remitting the case. 
  • The Board awards costs against the patentee because the incorrect registration of the enterprise as patentee contributed to the substantial procedural violation. Incidentally, the original applicant was a man with the same family name as the woman. In view of various circumstances and statements made by the woman, the Board certainly does not exclude that the intention of originally registering a tradename as applicant, was to be able to keep open and only later fill in the identity of the applicant. However, abuse is suggested, but not proven, according to the Board. 

EPO T 0854/12 - link

EPO Headnote - informal translation
1. Interruptions of proceedings pursuant to Rule 142 EPC are at any time to be taken into account by the Office of its own motion. Their registration in the Register is not constitutive for the interrupting effect, but is only declaratory.
2. An interruption pursuant to Rule 142(1)(b) EPC [insolvency] takes effect, when a patentee, who was initially not limited in his control of the proceedings, is "prevented from continuing the proceedings" by the opening of insolvency proceedings. The proceedings are not interrupted when a patent is transferred, with consent of the insolvency administrator, to a patentee who already is limited in his capacity to act, who thus does not become a party to the proceedings, but acts from the outset for the insolvency administrator, who is not limited in his capacity to act.
3. The Board deciding on the case must decide itself, whether on the basis of the facts submitted, and if applicable, facts additionally provided by the Office, the conditions for an interruption are met, in as far as this poses a preliminary question for the decision to be taken.
4. No binding effect of the state of the Register exists, and neither, if applicable, of relevant adopted appeal decisions. The consistency of appeal decisions of the Office follows from the substantive discussion in view of already adopted parallel decisions and, if applicable, the hearing of the Legal Division about pending parallel proceedings.
5. The requirement of party status is at any time to be considered ex officio. An enterprise is, differently from the person or legal entity behind it (Article 58 EPC), not a party in proceedings before the EPO. If the person or legal entity can not be determined beyond reasonable doubt, the proceedings suffers from a substantial procedural violation.
6. A different cost apportionment pursuant to Article 104 EPC and Rule 88 EPC is justified, when the uncertainty about which legal person is behind the enterprise putatively acting as party was deliberately exploited or the continued existence thereof was consciously accepted and parts of the proceedings must therefore unnecessarily be repeated.
7. Because of the healing effect of the non-appealable decision to grant (notwithstanding the possibility of opposition, which is restricted to limited grounds of opposition), any defect in the grant or international phase play no role in later procedural stages. A possible setback in the grant or PCT phase is therefore not an option.

EPO Headnote - original
1. Unterbrechungen des Verfahrens gemäß Regel 142 EPÜ sind jederzeit von Amts wegen zu berücksichtigen. Ihre Eintragung in das Register ist für die Unterbrechungswirkung nicht konstitutiv, sondern wirkt nur deklaratorisch. (Gründe 1.1.1)
2. Eine Unterbrechung nach Regel 142 (1) b) EPÜ tritt ein, wenn ein Patentinhaber, der in der Verfahrensführung zunächst nicht beschränkt war, nun infolge Eröffnung des Insolvenzverfahrens "verhindert ist, das Verfahren fortzuführen".
Eine Unterbrechung tritt nicht ein, wenn ein Patent mit Zustimmung des Insolvenzverwalters auf einen schon verfügungsbeschränkten Patentinhaber übertragen wird, der damit nicht selbst Partei des Verfahrens wird, sondern für den von Anfang an der in seiner Verfügungsgewalt nicht beschränkte Insolvenzverwalter handelt. (Gründe 1.1.2)
3. Eine mit der Entscheidung befasste Beschwerdekammer muss selbst entscheiden, ob aufgrund der vorgetragenen und ggfs. von Amts wegen ergänzend zu ermittelnden Fakten die Voraussetzungen einer Unterbrechung vorliegen, sofern dies eine Vorfrage für die zu treffende Entscheidung darstellt.
(Gründe 1.2.1 - 1.2.9)
4. Eine Bindung an den Stand des Registers und an ggfs. diesbezüglich ergangene Beschwerdeentscheidungen besteht nicht. Eine Vereinheitlichung der Rechtsprechung des Amtes erfolgt durch inhaltliche Auseinandersetzung mit bereits ergangenen Parallelentscheidungen und ggfs. die Anhörung der Rechtsabteilung zu anhängigen Parallelverfahren.
(Gründe 1.2.5, 1.2.6 und 2.4)
5. Das Erfordernis der Parteifähigkeit ist jederzeit von Amts wegen zu berücksichtigen. Ein Unternehmen ist, anders als die hinter ihm stehende Person oder Gesellschaft (Artikel 58 EPÜ), im Verfahren vor dem Europäischen Patentamt nicht parteifähig. Lässt sich diese Person oder Gesellschaft nicht zweifelsfrei ermitteln, so leidet das Verfahren an einem wesentlichen Verfahrensfehler. (Gründe 3.2 und 3.3)
6. Eine abweichende Kostenverteilung nach Artikel 104 und Regel 88 EPÜ ist gerechtfertigt, wenn die Unklarheit über den Rechtsträger des als vermeintliche Partei auftretenden Unternehmens im Verfahren gezielt ausgenutzt oder ihr Fortbestand jedenfalls bewusst in Kauf genommen wurde und Teile des Verfahrens daher unnötigerweise wiederholt werden müssen. (Gründe 5.3 und 6.2)
7. In Folge der Heilungswirkung des mit Rechtsbehelfen (unbeschadet der auf wenige Einspruchsgründe beschränkten Einspruchsmöglichkeit) nicht angreifbaren Erteilungsbeschlusses nach Artikel 97, 98 EPÜ spielen etwaige Mängel des Erteilungs- oder internationalen Verfahrens in späteren Verfahrensstadien keine Rolle mehr. Eine etwaige Zurückversetzung in die Erteilungs- oder PCT-Phase kommt daher nicht in Betracht. (Gründe 7)

22 Aug 2016

J 0011/15 - Refusal by Receiving Section

Key points

  • The application was refused by the Receiving Section under Article 90(5) and Rule 58. The applicant requested extension of the time limit for the Rule 58 invitation. This was denied since the time limit is fixed in the EPC. The application was refused, although the corrected application documents had in the meantime been filed. The applicant appealed and requested refund of the appeal fee. Interlocutory revision was granted but the refund was refused. The Legal Board of Appeal has to decide on the refund. 
  • The Legal Board refuses the refund because no substantial procedural violation had been substantiated with the Statement of grounds, or was apparent.

Sachverhalt und Anträge
1. Die Beschwerdeführerin als Anmelderin, stellte am 13. November 2014 einen Antrag auf Erteilung eines europäischen Patents bezüglich der Patentanmeldung Nr. 14192950.5. Mit Mitteilung vom 07. Januar 2015 informierte die Eingangsstelle die Beschwerdeführerin nach Regel 58 EPÜ bezüglich Mängel in den Anmeldungsunterlagen und forderte sie auf, diese Mängel innerhalb von zwei Monaten nach Zustellung zu beseitigen.
2. Am 16. März 2015 beantragte die Beschwerdeführerin "eine Verlängerung der Frist um zwei Wochen, ..... bis zum 31. März 2015". Die korrigierten Anmeldungsunterlagen wurden von der Beschwerdeführerin, nach Ablauf der Frist am 17. März 2015, am 20. März 2015 eingereicht.
3. Ihr Antrag auf Fristverlängerung gemäß Regel 132 EPÜ wurde mit Mitteilung vom 24. März 2015 mit der Begründung abgelehnt, dass es sich bei der betreffenden Frist um keine vom EPA festgesetzte Frist handele. Die Beschwerdeführerin legte dagegen kein Rechtsmittel ein.

19 Aug 2016

T 2027/13 - "Consisting essentially of" unclear

Key points

  • A claim for a pharmaceutical composition comprising an active ingredient and a release controlling agent "consisting essentially of" ethyl cellulose and optionally pharmaceutically acceptable excipients, was held to be unclear by the  board. The objection was resolved by replacement of the wording "consisting essentially of" with "being".

EPO T 2027/13 - link

Reasons for the Decision
Main request - clarity
1. Claim 1 of the main request concerns a controlled release pharmaceutical composition "comprising" a specific active ingredient (pregabalin or salts thereof), a hydrophobic release controlling agent "consisting essentially of" ethyl cellulose and optionally pharmaceutically acceptable excipients.
1.1 The appellant has argued that the expression "consisting essentially of" was considered as clear in the case law and in the present case necessarily meant that the composition did not contain any additional hydrophobic release controlling agent, but could contain other excipients or impurities which did not alter the controlled release properties of the composition.
In T 1170/07 (supra), where claim 1 of the main request included a dosage form which consisted essentially of an active ingredient, the board concluded that under the specific circumstances of the case "consisting essentially of" excluded further active agents useful in the treatment of the specific disease mentioned in the claim, but allowed the presence of additional compounds forming the carrier of the agent (see point 3.1 in the reasons). By virtue of that interpretation no problem of clarity arose.
1.3 In T 1730/09 (supra), where claim 1 of auxiliary request 8 concerned a viscoelastic fluid consisting essentially of three ingredients, reference was made to previous decisions, wherein it was decided that the term "consisting essentially of" was clear and allowed the presence of other components in a claimed composition in addition to the components mandatory in the claim, provided that the essential characteristics of the claimed composition were not materially affected by their presence (point 1.2.3 in the reasons, first paragraph). The board agreed with these previous decisions and concluded that in the present case the wording used allowed that the composition consisted of the mandatory components listed in the claim and could contain additionally only other components which did not materially affect the essential characteristics of the composition (in the specific case the viscoelastic characteristics), e.g. minor amounts of impurities (point 1.2.3 in the reasons, second paragraph).
1.4 In all cited cases the expression "consisting essentially of" refers to the whole composition present in the claim. This is the case also in T 1170/07, where, even if the unit dosage includes a single ingredient, it is the whole dosage form which consists essentially of that ingredient (and not the ingredient which consists essentially of one component).
1.5 Contrary to that, in the present case the composition is defined by an open formulation (in view of the word "comprising"), which already implies the presence not only of the optional excipients, but also of any additional pharmaceutically acceptable component (including impurities) and even on further release controlling agents, and the expression "consisting essentially of" refers to a single ingredient of the composition.

18 Aug 2016

T 0735/12 - No Rule 137(5) in opposition

Key points

  • The Board holds that Rule 137(5) EPC (unsearched subject-matter) is not applicable for amendments made to the patent in opposition.
T 0735/12 -  link


[] 3.4 Nicht recherchierte Gegenstände
Der von der Einsprechenden 2 unter Verweis auf Regel 137(5) EPÜ erhobene Einwand, dass der Anspruch 1 Merkmale enthalte, die lediglich der Beschreibung entnommen und daher nicht recherchiert worden seien, kann schon deshalb nicht greifen, da sich Regel 137 EPÜ lediglich auf "Änderungen der europäischen Patentanmeldung" [Hervorhebung hinzugefügt] bezieht und somit für das Einspruchs(beschwerde)verfahren nicht massgeblich ist, wie auch unter Punkt 3.4 der angegriffenen Entscheidung korrekt dargelegt.
Der unter Regel 137(5) EPÜ erhobene Einwand ist daher als unzulässig zu verwerfen.

17 Aug 2016

T 0799/12 - Clarity in oppostion-appeal

Key points

  • The Board admits a clarity objection submitted in appeal against amendments made before the opposition division.
  • The Board: " Whilst it is true that in principle the appellant could have raised the clarity objection during the opposition proceedings, he did so for the first time in the statement of grounds of appeal, whereby the respondent and the Board had ample time to consider it. "

EPO T 0799/12 - link

Reasons for the Decision

[] 3. Article 84 EPC
3.1 Admissibility
3.1.1 The respondent considered that the objection under Article 84 EPC was inadmissible. It argued that although the objection concerned a feature which had already been added to claim 1 during opposition proceedings, the objection had not been raised before the Opposition Division. Accordingly, no first-instance decision had been given on this matter.
The respondent is right in observing that the primary purpose of an appeal is to provide the adversely affected party with the opportunity to challenge the decision on its merits and to obtain a judicial ruling as to whether the first-instance decision was correct (G 9/91; OJ 1993, 408). However, according to established jurisprudence (G 9/91, point 19 of the Reasons), if amendments are made to the claims in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC. Whilst it is true that in principle the appellant could have raised the clarity objection during the opposition proceedings, he did so for the first time in the statement of grounds of appeal, whereby the respondent and the Board had ample time to consider it. The Board is therefore of the view that the lack of a first-instance ruling on the clarity objection is not sufficient reason to disregard the objection in the appeal proceedings.
3.1.3 The objection under Article 84 EPC is hence admissible.

16 Aug 2016

T 0738/13 - Review of refusal to enlarge ED

Key points

  • The applicant had requested that the ED were enlarged with a legal member. This was refused. The applicant alleges that this forms a substantial procedural violation. The Board reviews the procedural decision of the ED for incorrect exercise of the discretion to enlarge. 

T 0738/13 -  link

1. Artikel 11 der Verfahrensordnung der Beschwerdekammern (VOBK) bestimmt, dass die Kammer die Angelegenheit an die erste Instanz zurückverweist, wenn das Verfahren vor der ersten Instanz wesentliche Mängel aufweist, es sei denn, dass besondere Gründe gegen die Zurückverweisung sprechen.
2. Die Beschwerdeführerin hat unter anderem bemängelt, dass die Prüfungsabteilung ihre Ermessensentscheidung, die Abteilung nicht um einen rechtskundigen Prüfer zu ergänzen, nicht begründet hat.

15 Aug 2016

T 1717/13 - Not admitting further requests

Key points

  • In this case, the OD had announced during oral proceedings that because the proprietor had already been given several opportunities to overcome the problems under Article 123(2) EPC, " at this late state of the proceedings further requests were not accepted" .
  • The proprietor considers this to be a substantial procedural violation and requests refund of the appeal fee. 
  • The Board: " In view of the above, the opposition division possibly exceeded its scope of discretion by categorically stating that it would not accept further auxiliary requests without duly taking notice of their content. However, even in case this statement ultimately proves to be arbitrary and thus inappropriate, such erroneous application of the law does, under the present circumstances, not amount to a substantial procedural violation" (i.e. a procedural violation, but not substantial" .
T 1717/13 - link

Reasons for the Decision
1. Alleged procedural violation
1.1 From a general point of view, it is first noted that following European patent practice, the opposition division issues the summons together with an annex drawing attention to the points to be discussed (Rule 116(1) EPC) and normally containing the division's provisional opinion, as well as a final date for making written submissions. If it becomes apparent in the oral proceedings that the timely submitted amended claims in reaction to the division's preliminary opinion are not allowable under the EPC, the admission of further requests is at the discretion of the opposition division, which will take into account, inter alia, procedural expediency but also whether the new requests are reasonable in number, whether their subject-matter is based on dependent claims as granted or based on subject-matter not previously covered by the claims and whether they are prima facie appropriate for overcoming outstanding objections (cf. Guidelines for Examination in the European Patent Office, November 2015, part E-V, 2.2).

12 Aug 2016

T 1888/15 - Examination appeal in 1 year

Key points

  • Board 3.2.08 (Acton, Alvazzi Delfrate and Keeling) decides an examination appeal in favour of the applicant within a year (Statement of grounds filed on 9 July 2015, so forwarding to the Board by 2 October, decision dated 14 July 2016, notified by letter of 1 August).
  • The added term "consisting of"  resolves a clarity issue: "although an alloy does not normally consist of oxide particles, the definition of master alloy in claim 1 ("master alloy consisting of titanium dioxide particles") leaves no ambiguity as to the nature of the "master alloy" used in the claimed method. "

T 1888/15 - link

Reasons for the Decision
1. Main request - Articles 123(2) and 76 EPC
1.1 Claim 1 as amended in appeal is based on originally filed claim 1, clauses 14, 16, 25, 29, 31 and 37 of paragraph [0025] and paragraphs [0021] and [0023] or examples 1 and 2. In particular, paragraphs [0021] and [0023] and examples 1 and 2 disclose a master alloy consisting of titanium dioxide particles. Therefore, the requirements of Article 123(2) EPC are satisfied.
1.2 Since a basis for claim 1 is also to be found in the corresponding passages in the parent application, the requirements of Article 76(1) EPC are likewise satisfied.
2. Main request - Clarity
2.1 Although an alloy does not normally consist of oxide particles, the definition of master alloy in claim 1 ("master alloy consisting of titanium dioxide particles") leaves no ambiguity as to the nature of the "master alloy" used in the claimed method. Therefore, claim 1 complies also with the requirements of Article 84 EPC.

11 Aug 2016

T 1742/12 - What is the closest prior art

Key points

  • The Board reviews the purpose and criteria for selecting the closest prior art under the problem-solution approach.
  • As to closest prior art having a different purpose than the claim, the Board notes that there is no prohibition to consider "an inventive step assessment starting from a piece of prior art with a different purpose. To the extent that the difference in the intended purpose of the claimed invention imposes on it, the problem-solution approach requires it be determined whether it would be obvious to the skilled person to modify the prior art so as to provide these limitations. And it may be found that it would not."

T 1742/12 - link

Reasons for the Decision
The problem-solution approach and the closest prior art
5. Article 52(1) EPC provides that European patents shall be granted for any inventions that involve inter alia an inventive step, and Article 56 EPC (1973) stipulates that an invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.
6. The problem-solution approach is a well-established and successful tool for the assessment of the inventive step requirement as defined in Article 56 EPC (1973).
6.1 The problem-solution approach requires, in its first step, that prior art is identified and that then, in further steps, it is determined whether it would be obvious for the skilled person to modify or adapt the teaching of the selected prior art so as to arrive at the claimed invention. The selected piece of prior art is typically referred to as the "closest prior art".
6.2 The "closest prior art" is often characterised as being the "most promising springboard to the invention" (see in particular T 254/86, OJ EPO 1989, 115, Reasons 15; and T 656/90, Reasons 1.1).
6.3 If a piece of prior art can be identified as the "closest" prior art or the "most promising springboard" and it can be shown that, starting from this prior art, the claimed invention is non-obvious, then the claimed invention can only be even less obvious starting from any other piece of prior art, and therefore a detailed inventive step assessment starting from the other prior art can be dispensed with.
6.4 In the jurisprudence of the boards of appeal, criteria have been developed as to how, in the first step, the "closest prior art" can be selected from the available prior art. In particular, the "closest prior art" is normally that concerned with a similar use which requires the minimum of structural and functional modifications (see T 606/89, reasons 2).
6.5 It has, however, been acknowledged that the choice of the closest prior art may not always be unambiguous and that, in such a case, the problem-solution approach may have to be repeated starting from other pieces of prior art (see T 710/97, Reasons 3.2.1). It has also been observed that a piece of prior art on the basis of which the claimed invention is considered non-obvious cannot be "closer" than a document on the basis of which the claimed invention appears obvious, because it is evident in this situation that the former does not represent the most promising springboard from which to arrive at the invention (see T 824/05, Reasons 6.2).
6.6 In T 967/97 (Catchword I) and T 21/08 (Reasons 1.2.3) it was found that if the skilled person had a choice of several workable routes, i.e. routes starting from different documents, which might lead to the invention, the rationale of the problem-solution approach required that the invention be assessed relative to all these possible routes, before an inventive step could be acknowledged. Conversely, if the invention was obvious to the skilled person in respect of at least one of these routes, then an inventive step was lacking. In T 967/97 (catchword II) it was further stated that, if inventive step was to be denied, the choice of starting point needed no specific justification.
Choosing the starting point for the present invention
7. The appellant's position can be summarised as follows:
a) The correct application of the problem-solution approach obliges the board to choose the "closest prior art" as opposed to merely "a suitable starting point" (see letter of 18 May 2016, page 3, paragraph 4, and page 4, paragraph 1).
b) The closest prior art must be suitable for the intended purpose of the claimed invention, which D1 was not, because it did not relate to high performance computing HPC.
c) D6 did relate to HPC and was therefore closer than D1, so that "given the existence of D6, [...] D1 cannot be closest prior art" (page 5, paragraphs 1 and 2).
8. As regards point (a), the board disagrees with the appellant, and rather endorses the cited findings of T 967/97 and T 21/08. The board notes that these decisions are not isolated ones as the appellant seems to suggest but have been followed in several further board decisions (see e.g. the Case Law of the Boards of Appeal, I.D.2).
9. As regards point (b), the board agrees with the appellant that the intended purpose of the claimed invention is relevant in the inventive step assessment and that it may be simpler and more convincing to start this assessment from prior art sharing the intended purpose with the claimed invention. It may also happen that a piece of prior art is so "remote" from the claimed invention, in terms of intended purpose or otherwise, that it can be argued that the skilled person could not conceivably have modified it so as to arrive at the claimed invention. Such prior art might be referred to as "unsuitable". However, in the board's judgment, this does not prohibit the consideration of an inventive step assessment starting from a piece of prior art with a different purpose. To the extent that the difference in the intended purpose of the claimed invention imposes on it, the problem-solution approach requires it be determined whether it would be obvious to the skilled person to modify the prior art so as to provide these limitations. And it may be found that it would not.
10. As regards point (c), the board points out that the appellant's argument amounts to saying that knowing more can make an invention less obvious to the skilled person.
10.1 During oral proceedings, the appellant agreed to this counter-intuitive consequence of his position but argued that it had to be accepted if the problem-solution approach required it.
10.2 The board firstly disagrees that the problem-solution approach has this consequence and finds itself in agreement with the jurisprudence of the boards of appeal (see the above discussion).
10.3 Secondly, however, the board considers that this consequence is fundamentally unacceptable. If an argument showing that the claimed invention was obvious over some prior art, this argument cannot be refuted merely by the introduction of another piece of prior art. In the board's view, this would be an absurd situation in conflict with Article 56 EPC, and therefore be untenable.

10 Aug 2016

T 1670/07 - Comvik fallacies

Key points

  • This is the decision, already published in 2013, which introduced a number of fallacies under the Comvik approach: the "technical leakage fallacy" , the "broken technical chain fallacy" , and the "non-technical prejudice fallacy" . These are often tried, but invalid arguments, that a feautre would be technical in the sense of the Comvik approach to inventive step.

Reasons for the Decision
[...] 9. In the present case, the appellant argues that the alleged non-technical feature of the information regarding the group of vendors "interacts with technical elements, in the form of the server 18, to produce a technical effect in the selection of vendors and the transmission of processed information regarding that selection to the mobile wireless communications device". However, in the Board's view, this is an instance of the well known argument that could be termed the "technical leakage fallacy", in which the intrinsic technical nature of the implementation leaks back into the intrinsically non-technical nature of the problem. In this case, the "selection of vendors" is not a technical effect and the mere "interaction" with technical elements is not enough to make the whole process technical as required by the jurisprudence. Similarly, the transmission of the selection is no more than the dissemination of information, which is in itself also not technical. These effects are more like those in T 158/88 and T 603/89 than in T 26/86 (supra). Technical considerations only come into play once the relevant features are implemented.
10. The appellant also argued that the difference of identifying a group of vendors rather than a single vendor as in D1 implied a problem of logistics, which was not a business method. However, the Board considers that a logistic or navigation system that actually involves navigation to a particular place might have some technical element, but the present invention does not as it does not involve any physical elements, but simply indicates possible choices. Moreover, in the Board's view, producing an itinerary is not technical as it involves only standard human behavioural concepts such as going to the bank and then going to the supermarket. The appellant replied that the physical act of going to the locations conferred technical character on these thoughts.
11. Here again, the Board sees something of a well known argument that could be termed the "broken technical chain fallacy" after decision T 1741/08 - GUI layout/SAP. This decision dealt with the fairly common situation that arises in connection with graphic user interfaces (GUIs) where a technical effect might result from the user's reaction to information. The decision essentially concluded (see point 2.1.6) that a chain of effects from providing information to its use in a technical process is broken by the intervention of a user. In other words, the possible final technical effect brought about by the action of a user cannot be used to establish an overall technical effect because it is conditional on the mental activities of the user. This applies to the present case because any possible technical effect depends on the user's reaction to the itinerary.
12. The appellant also argued that according to T 362/90 - Schaltanzeige für eine Gangschaltung/WABCO, providing a status indication about the state of a system was a technical effect. It is true that T 115/85 - Computer—related invention/IBM OJ EPO 1990,030 states that giving visual indications automatically about conditions prevailing in an apparatus or system is basically a technical problem. In that case the system was the input/output device of a text processor. T 362/90 cites this decision in support of the technical character of a simultaneous optical display of a current and ideal gear selection based on conditions in a gearbox. In the Board's view, the display of an optimal shopping itinerary is different because there is no comparable technical system since shopping is intrinsically non-technical. The availability of goods in a shop and information on shopping lists are not comparable with the status of a technical system. Furthermore, although the system of the invention has a server and a mobile device that are undoubtably technical, the invention is not displaying information about the status of these devices themselves, but only non-technical information that they process.
13. In summary, therefore, the Board is of the opinion that a technical effect may arise from either the provision of data about a technical process, regardless of the presence of a user or its subsequent use, or from the provision of data (including data that on its own is excluded, e.g. produced by means of an algorithm) that is applied directly in a technical process. In the Board's view, neither applies to the present case.
14. Thus, in the Board's view, the appellant's formulation of the problem as "the provision of a technique which has greater flexibility and can provide results tailored to a user's preferences" is not a technical problem and is also far too general because it does not correctly take into account non-technical aspects. In the Board's view, the problem is the much more specific one of how to modify the prior art to implement the non-technical aspects, in this case how to plan a shopping trip (itinerary) that includes orders from different vendors.
15. Concerning the implementation, the Board first notes that it is essentially only claimed in functional terms and that there are no details of how it is actually done. The only technical features of the solution are the hardware elements themselves and the specification of which elements perform the various steps. The elements of a mobile wireless communications device and a server are conventional and moreover known from D1. The only assignment of function that is specified is that the server determines the vendors as function of the orders and the location. Since D1 determines the vendor for a single order at the server, it would be obvious to consider determining multiple vendors in the case of multiple orders.
16. At the oral proceedings, the appellant stressed that the system of D1 only identified one facility whereas the invention identified a group of vendors and gave navigation information about how to visit them. If the system of D1 were to be used to order several items, it would only return information on a single vendor that could supply all the items. There might be no single vendor capable of doing this, or the vendor might be a long way away from the customer. The invention would be able to find more than one vendor that together could fulfil the order. Thus the invention solved the problem of reducing the number of failed attempts to fulfil an order. In the Board's view, this is another example of a standard argument, which could be termed the "non-technical prejudice fallacy". The argument essentially invokes non-technical aspects as a reason for not modifying the prior art, whereas these features cannot in fact contribute to inventive step. The question is not whether the skilled person would consider providing these features because that has already been decided in formulating the technical problem. The question is simply how it would be done. As mentioned above, in this case, the "how" comprises conventional hardware carrying out the tasks in an obvious way. In particular, there is no technical reason why the skilled person would not have considered modifying the various parts of the system of D1, at least to the extent claimed, to solve the problem posed.
17. It follows from the above, that in the Board's view, the appellant's analysis of why the repeated selection of vendors according to D1 is not equivalent to the claimed solution is moot.
18. Accordingly the Board judges that claim 1 of the main request does not involve an inventive step (Article 56 EPC 1973).

9 Aug 2016

T 1755/10 - Software implementation fallacy

Key points

  • Published online on 10 March 2015
  • This decision adds another fallacy to the fallacies under the Comvik approach, the "software implementation fallacy
EPO T 1755/10 - link

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division to refuse European patent application No. 99916241.5, entitled "Method and apparatus for determining commission", published as A1: WO-A1-99/60486. [...]

8 Aug 2016

T 0483/11 - Technical inheritance fallacy

EPO Headnote 

A feature does not automatically inherit the technical character of the context in which it occurs. The feature must, itself, make a contribution to the technical context or the technical aspects of the invention (technical inheritance fallacy - see points 2.7 and 2.8 of the reasons).

Key points
The EPO Headnot (not the decisioni itself) adds another fallacy under the Comvik approach: the "technical inheritance fallacy" .

T 0483/11 - link

Reasons for the Decision
1. The invention
1.1 At the date of the invention, mobile data connections were slow and mobile devices had limited processing and display capabilities. At the same time, electronic documents (word processor, worksheet, and spreadsheet documents) were large and contained "rich" content. Therefore, there was a need for a smaller, summary version of electronic documents for use by mobile communication devices.
1.2 According to the invention, the summary is generated by a server (figure 1, reference numeral 100) in response to a request from a mobile communication device (106) and is transmitted to the mobile device (page 4, lines 15 to 20). The user of the mobile device can use the summary to navigate the electronic document and request content corresponding to the summary entries from the server. This precludes the need to send the entire document to the mobile device (page 4, line 21 to page 5, line 3), at least initially.
1.3 The server generates the summary by selecting content from the electronic document. It does this using one of three processes (figure 3).

5 Aug 2016

T 0404/12 - Novelty of use

Key points

  • A claim for use of a treatment composition for hair dyed with an acid-dye-type hair dye or preventing fading of color of the dyed hair, is found to be novel over a prior art disclosure of use of the same composition for for treating hair follow washing, dyeing or perm treatment, for maintenance of shine.
  • " The Board cannot see, however, how this disclosure may be seen as anticipating the prevention of color fading of hair dyed with an acid-dye-type hair dye composition. Shine is a property of treated or untreated hair which is independent of whether the hair has been dyed or not. [] In addition, no evidence has been provided [] with regard to equivalence of shine maintenance with prevention of color fading in any specific condition and document D5 does not make any mention of the difficulty in color maintenance for dyed hair." 

T 0404/12 -  link (online 18.01.2016)

Summary of Facts and Submissions
I. European Patent No. 1 118 319 was granted on the basis of 5 claims, independent claim 1 reading as follows:
"1. Use of a treatment composition for hair dyed with an acid-dye-type hair dye composition wherein the treatment composition comprises the following components (A) (B), and (C) :
for preventing fading of color of the dyed hair.

Reasons for the Decision

Main request - novelty

3. The objection of lack of novelty over document D5 was based on the central argument that maintenance of shine of dyed hair, as disclosed in D5, was nothing different from prevention of color fading, the effect of the use of claim 1 of the main request.

4 Aug 2016

R 0002/14 - Reasoned decision and right to be heard

Key points

  • The Enlarged Board has allowed a petition for review.
  • The case is interesting in that what seems to be a lack of reasoning of the Board concerning the critical reason for (dismissing the appeal against) revoking the patent in the written decision, is dealt with as a violation of the right to be heard. The Enlarged Board states that " Either: [it]  cannot establish that the reasons for the decision under review are based on facts (and on what facts) and considerations (and on what considerations) on which the parties to the appeal proceedings, [] had an opportunity to comment. Or: In the event that the parties had been given an opportunity to comment, the Enlarged Board cannot establish that the parties’ relevant submissions and arguments were considered and fully taken into account when taking the decision."

EPO R 0002/14  ( EPO R 2/14) - link

Reasons for the Decision

5. The petitioner essentially invokes the ground of petition according to Articles 112a(2)(c) and 113(1) EPC.
10. The second complaint
10.1 Regarding the second complaint, the petitioner argued
(a) that, insofar comparable to the situation underlying decision R 16/13 (supra), the board had based the decision under review on a ground that it introduced into the written reasons ex officio and without prior discussion with the parties and
(b) that the reasoning of the board was restricted to a mere statement of legal conclusions rather than a discussion of facts previously discussed by and/or with the parties, i.e. that the board failed to reason its conclusion that the person skilled in the art might have performed each of the steps necessary for recloning but that the combination of all the necessary steps would create an undue burden on the skilled person trying to perform the invention.

3 Aug 2016

T 2355/11 - Multiple independent claims allowed

Key points

  • The Examining Division had refused the application as having multiple independent claims in the same category in a way contravening Rule 43(2) EPC. The Board analyzes in detail the legal history and purpose of Rule 43(2) EPC, in particular the exception of Rule 43(2)(c) EPC for alternative solutions and the further requirement for this exception that "it is inappropriate to cover these alternatives by a single claim". 
  • The Board finds that the question is not whether it is appropriate to use multiple independent claims, but whether formulating a general independent claim is appropriate. The Examining Division had formulated a single general independent claim.
  • The Board finds that such a general claim is not appropriate in this case because the general claim would be problematic under Article 83 EPC: " weil eine Zusammenfassung aller Verfahrensschritte in einem einzigen Anspruch, wie sie von der Prüfungsabteilung unter Punkt 2.1 der Entscheidung angedeutet wurde, möglicherweise gegen Artikel 83 EPÜ 1973 verstoßen würde. Durch die Einschränkung auf die gemeinsamen Aspekte der beanspruchten Verfahren, wie von der Prüfungsabteilung verlangt wurde, würde eine Verallgemeinerung des beanspruchten Verfahrens entstehen, die von den in der Beschreibung beschriebenen Ausführungsbeispiele nicht ausreichend gestützt wäre."

EPO T 2355/11 - link

Sachverhalt und Anträge
I. Die vorliegende Beschwerde richtet sich gegen die Entscheidung der Prüfungsabteilung, die europäische Patentanmeldung Nr. 04 722 560.2 zurückzuweisen. Die Entscheidung wurde am 17. Mai 2011 zur Post gegeben.
II. In der angefochtenen Entscheidung (Punkt 2 der Entscheidungsgründe) stellte die Prüfungsabteilung fest, dass die Anmeldung drei unabhängige Verfahrensansprüche 17, 18 und 19 enthalte. Jedoch lag keiner der Ausnahmefälle nach Regel 43(2) EPÜ vor. Insbesondere definierten die Verfahrensansprüche nicht drei "Alternativlösungen für eine bestimmte Aufgabe", sondern ein- und dieselbe Lösung. []

2 Aug 2016

T 2052/14 - Schematic drawings

Key points

  • The Board applies established case law that schematic drawings in a prior art patent document do not disclose the (relative) dimensions even if measuring the sizes in the drawing provides the feature at issue.
  • " Zusammenfassend: Auch wenn die Figuren der Druckschrift D1 in der Prüfungsabteilung den Eindruck erweckt haben, dem Merkmal des kennzeichnenden Teils des Anspruchs 1 zu entsprechen, so stellt dies in diesem Fall aus den oben benannten Gründen keine direkte und unmittelbare Offenbarung für den Fachmann da, weil dieser weiß, dass es sich bei den Figuren der Patentschrift D1 nur um schematische Darstellungen handelt, aus denen er in diesem Fall ohne entsprechende Hinweise keine konkreten Größen oder Größenverhältnisse bezüglich des Wellungs­profils des Außenrohrs ableiten kann." 

EPO T 2052/14 - link

1.3 Hinsichtlich der Offenbarung des im kennzeichnenden Teils des Anspruchs 1 angegebenen Bereichs des Längen/Krümmungsradius-Verhältnisses, hat die Prüfungs­abteilung auf die Figuren der Druckschrift D1 verwiesen, die ein Verhältnis von 0,9 zeigen.
Diese Feststellung hält jedoch einer Überprüfung durch die Kammer nicht stand.
1.3.2 Da die Figuren der Druckschrift D1 [EP 1 748 243 A2] nicht als maßstabs­getreue Zeichnungen gekennzeichnet sind, stellen sie nur übliche schematische Zeichnungen dar, die das, was in der betreffenden Druckschrift wesentlich erscheint, angeben, aber in aller Regel nicht alle betreffenden Teile maßstabsgetreu wiedergeben müssen. Somit stellt sich die Frage, ob der zuständige Fachmann dem nur zeichnerisch dargestellten Merkmal unmittelbar und eindeutig eine technische Lehre bezüglich des Wellungs­profils des Außenrohrs vermittelt (T0204/83, AB 1985, 310, Punkt 4).

1 Aug 2016

T 1954/14 - Appeal against summons

Key points

  • This is an appeal against a decision of the OD to hear witnesses about public prior use (the summons to the witnesses had been issued). The appeal is inadmissible because this decision is not a final decision (Article 106 EPC). 
  • As a comment, the patentee has been successful to the extent that the proceedings were delayed by two years. 

EPO T 1954/14 - link

Sachverhalt und Anträge
I. Die am 27. August 2014 eingelegte und begründete Beschwerde richtet sich gegen die Entscheidung über eine Beweisaufnahme durch Zeugeneinvernahme (Regel 117 EPÜ) und die angebliche Entscheidung der Einspruchsabteilung bezüglich der prima facie Relevanz, wie enthalten in dem der Ladung beigelegtem Bescheid, beide Schriftstücke mit Datum vom 17. Juli 2014.

1. Zulässigkeit der Beschwerde
1.1 Die vorliegende Beschwerde betrifft die Frage, ob die der Beschwerdeführerin von der Einspruchsabteilung zugestellte Ladung zur mündlichen Verhandlung vom 17. Juli 2014 zusammen mit der der Ladung beigefügten Mitteilung und der Entscheidung über die Beweisaufnahmen als eine Zwischenentscheidung mit gesonderter Beschwerdemöglichkeit (oder Zwischenentscheidungen mit gesonderten Beschwerdemöglichkeiten) zu bewerten ist.
1.2 Entscheidungscharakter der in Frage stehenden Schriftstücke
1.2.1 Nach Artikel 106 (1) EPÜ sind Entscheidungen der Einspruchsabteilung mit der Beschwerde anfechtbar. Da der Begriff der Entscheidung im EPÜ nicht definiert ist, stellt sich die Frage, ob den angegriffenen Schriftstücken der Charakter einer beschwerdefähigen Entscheidung zukommt. Es ist in der Rechtsprechung der Beschwerdekammern anerkannt, dass dies nicht primär von der Form oder Überschrift des Schriftstücks abhängt, sondern grundsätzlich von seinem im verfahrensrechtlichen Zusammenhang zu würdigenden Inhalt. Insbesondere stellt ein Schriftstück eine Entscheidung dar, wenn der behandelte Sachverhalt gegenüber einer Beteiligten abschließend geregelt wird.