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T 2136/16 - No adjournment of oral proceedings

Key points

• This decision was given publication code [C] with reference to paragraph 8.
• The Board does not refer a question proposed by the proprietor to the Enlarged Board of Appeal because the question is not relevant for deciding the case. In particular, "the board did not base its findings on the term "alarm" on a new connotation or interpretation presented for the first time in the oral proceedings. " 
• The Board denied the proprietor's request for adjournment of the oral proceedings " in order to gather evidence as to whether the alleged connotation of the translated term "alarm" in [the translated prior art document] was consistent with the original term in D11."The board cannot accede to this request. It is based on the allegation that the word "alarm" disclosed in [the translation] was given a new connotation or interpretation, i.e. that the alarm is issued to the user, for the first time during the oral proceedings. This allegation is incorrect, as is evidenced by the fact that the decision under appeal is clearly based on the same interpretation of "alarm" as the present decision" . 
• The appeal was dismissed, the patent remained revoked.

EPO T 2136/16 -  link

6.3 Hence, the subject-matter of claim 1 lacks inventive step in view of D11 and the common general knowledge.

First auxiliary request - adjournment of the proceedings

7. As a first auxiliary request, the proprietor requested an adjournment of the oral proceedings in order to gather evidence as to whether the alleged connotation of the translated term "alarm" in paragraphs 24 and 25 of D10 was consistent with the original term in D11.

The appellant contested that the term "alarm" had an emotional connotation implying that it was directed to a human user. This alleged connotation was the basis of an argument raised by the respondents for the first time during oral proceedings before the board.

7.1 The board cannot accede to this request. It is based on the allegation that the word "alarm" disclosed in paragraphs [0024] and [0025] of D10 was given a new connotation or interpretation, i.e. that the alarm is issued to the user, for the first time during the oral proceedings. This allegation is incorrect, as is evidenced by the fact that the decision under appeal is clearly based on the same interpretation of "alarm" as the present decision, i.e. that the alarm of D11 "addresses the user of the device" (see Reasons, point 14.9). No other connotation was and is considered to be implied in the word "alarm". It follows from this and the findings on inventive step above that it was not during the oral proceedings that the word "alarm" was first given a new connotation or interpretation, i.e. that it implied an emotional communication directed to a human user.

7.2 Hence, the appellant's request for an adjournment of the oral proceedings cannot be allowed.

8. The appellant submitted the following question for referral to to the Enlarged Board of Appeal:

"In an argument raised for the first time during oral proceedings before a Board of Appeal, is it allowable to form an opinion of the presence of direct and unambiguous disclosure with regard to a translated term in a foreign language prior art document based on an alleged connotation of that translated term without first gathering evidence on the connotation of that term in the native language? If this is generally allowable is it also allowable where there is disclosure elsewhere in that translated document that is inconsistent with that connotation?"

8.1 According to Article 112(1) EPC 1973, a question may be referred to the Enlarged Board of Appeal in order to ensure uniform application of the law, or if a point of law of fundamental importance arises. A board of appeal may, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the Enlarged Board of Appeal if it considers that a decision is required for these purposes.

8.2 As set out under point 7.1 above the board did not base its findings on the term "alarm" on a new connotation or interpretation presented for the first time in the oral proceedings. Therefore, the board considers that the question according to the appellant's request does not contain a point of law which is relevant for the present case.

8.3 However, for a question to be referred to the Enlarged Board of Appeal, it must be relevant for deciding the case in question (G 1/14, OJ EPO 2016, A95 and G 2/04, OJ EPO 2005, 549). Since this not the case here, the appellant's request for a referral to the Enlarged Board of Appeal has to be refused for this reason alone.

Conclusion

9. Since none of the appellant's requests is allowable the appeal must be dismissed.

T 0428/13 - Oral disclosure not proven

Key points

• In this opposition appeal, the Board considers an oral disclosure not proven by a declaration of the speaker in combination with power point slides and preparation  notes. 
• "[It] is generally accepted case law, that a single declaration of the presenter of a lecture does not give sufficient proof of the content which has been disclosed orally or has been presented on slides prepared for the lecture ". Therefore " the Affidavit of [the speaker] on its own is not sufficient to give proof what had actually been disclosed orally when presenting the slides of Annex A1." The Board cites T 1212/97 holding that " The information content made publicly available by a lecture cannot be put beyond reasonable doubt by any evidence of the lecturer alone". Note that " on slides" refers to what is on the screen, not to any handouts. 

EPO T 0428/13 - link

3. Novelty

3.1 Novelty in view of D7 supported by D8 to D10

3.1.1 The oral disclosure D7 of Mr. Altena took place at the 57th Hardening Colloquium on 10. October 2001.

In the Affidavit D8, Mr. Altena describes what in his view has been presented at the conference by referring to Annex A1 (power point slides, which allegedly had been shown during the conference) and Annex A2 (representing preparation notes which allegedly reproduce the content of the talk held by Mr. Altena).

3.1.2 Concerning the content of an oral disclosure it is generally accepted case law, that a single declaration of the presenter of a lecture does not give sufficient proof of the content which has been disclosed orally or has been presented on slides prepared for the lecture (Case Law of the Boards of Appeal, Chapter I.C.3.2.2, see in particular T1212/97).

Following this generally accepted principle, the Affidavit of Mr. Altena (D8) on its own is not sufficient to give proof what had actually been disclosed orally when presenting the slides of Annex A1.

D9 and D10, which are a publication and a colloquium report on the same topic as the presentation D7, demonstrate that the content of the presentation of Mr. Altena was open to the public and that the presentation had taken place. However, these documents alone are not evidence of what had been disclosed orally. Furthermore, they are not prior art under Article 54(2) EPC themselves, since they have not been disclosed before the filing date of the contested patent.

Therefore it has not been demonstrated by the appellant to a sufficient standard what was orally made available to the public during the 57th Hardening Colloquium.

3.1.3 Thus, the Board concludes that it has not been shown that the subject-matter of claim 1 of the main request was orally made available at the conference in 2001.

EPO G 1/16 - Undisclosed disclaimers (Disclaimer III)

Key points

• The Enlarged Board decides that for 'undisclosed' disclaimers the proper test is whether the criteria of G 1/03 are fulfilled, and that for 'disclosed' disclaimers the proper test is the gold standard disclosure test of G 2/10. Hence, the assessment of the allowability of a claim amendment by an undisclosed disclaimer is governed exclusively by the criteria laid down in G 1/03.

BoA order (headnote) 

For the purpose of considering whether a claim amended by the introduction of an undisclosed disclaimer is allowable under Article 123(2) EPC, the disclaimer must fulfil one of the criteria set out in point 2.1 of the order of decision G 1/03 [i.e. be made to provide novelty over an Article 54(3) prior right, or over an accidental anticipation, or to exclude subject-matter excluded from patentability for non-technical reasons].

The introduction of such a disclaimer may not provide a technical contribution to the subject-matter disclosed in the application as filed. In particular, it may not be or become relevant for the assessment of inventive step or for the question of sufficiency of disclosure. The disclaimer may not remove more than necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons.

From the BoA news item:

"In the reasons for its decision, the Enlarged Board emphasised that this standard is neither intended nor to be interpreted as a departure from decision G 1/03 but that it is understood to be already encompassed by the requirements of G 1/03."
"The standard defined in G 2/10 as the "gold standard" remains the relevant disclosure test for assessing the allowability of a claim amendment by the introduction of a disclosed disclaimer."



Further comment

• The Enlarged Board adds (in [46]) that the evaluation of inventive step has to be carried out disregarding the undisclosed disclaimer (cf. T 710/92). 

EPO G1/16 (G 0001/16) - news item, link


Reasons for the decision
[...]
Disclaimer - definition
12. Patent claims define the subject-matter for which protection is sought in terms of the technical features of the claimed invention (Articles 69(1), first sentence, and 84 EPC). These technical features define the elements and characteristics of the claimed subject-matter and, usually, are phrased as “positive” technical features. However, the claimed subject-matter may also be defined in terms of “negative” claim features which describe elements and characteristics that the claimed subject-matter does not have.
13. Generally speaking, a disclaimer in a patent claim consists of words, terms, formulae, compounds or other elements which identify subject-matter specifically not claimed.
The term “disclaimer”, as used in G 1/03 (supra, Reasons, point 2), means an amendment to a claim resulting in the incorporation therein of a "negative" technical feature, typically excluding from a generally defined subject-matter specific embodiments or areas. However, the Enlarged Board limited the definition in that decision to the extent that a disclaimer which contributes to the technical teaching and adds subject-matter within the meaning of Article 123(2) EPC is not a disclaimer within the meaning of decision G 1/03 (supra, Reasons, point 2.6.1).
This definition of the term “disclaimer” was also used in G 2/10 (supra, Reasons, point 2.2).
The Enlarged Board concurs furthermore with decision T 1870/08 (Reasons, point 4.6.7, not published in the OJ EPO) that a disclaimer is only a proper disclaimer if the remaining legal subject-matter is less than that of the unamended claim. If any subject-matter can be identified which falls within the scope of the claim after amendment by the proposed disclaimer, but which did not do so before the amendment, the disclaimer is improper and, as a consequence of this, unallowable under Article 123(2) EPC.
This understanding of what constitutes a proper disclaimer is also reflected in the present decision.
14. The term “undisclosed disclaimer” relates to the situation in which neither the disclaimer itself nor the subject-matter excluded by it have been disclosed in the application as filed.
15. The term “disclosed disclaimer” relates to the situation in which the disclaimer itself might not have been disclosed in the application as filed, but the subject-matter excluded by it has a basis in the application as filed, e.g. in an embodiment.
16. Thus, undisclosed disclaimers and disclosed disclaimers can be distinguished according to whether the subject-matter on which the respective disclaimer is based is explicitly or implicitly, directly and unambiguously, disclosed to the skilled person using common general knowledge, in the application as filed.

T 1120/12 - In time but not enough explanations

Key points

• In this opposition appeal case, the Board has to decide on admissibility of a request filed with the Statement of response in appeal (under Article 12(4) RPBA). 
• The Board considers a clear case wherein the request did not need to be filed before the OD. "Following a preliminary opinion of the opposition division that the patent as granted fulfilled the requirements of the EPC, the opposition had been rejected during the oral proceedings before the opposition division without any new aspects arising. Therefore, the board cannot identify a situation during the opposition proceedings in which the filing of an auxiliary request by the respondent was procedurally required to such extent that this omission should be detrimental to the respondent at the appeal stage." 
• However, the request is not admitted because it was filed without sufficient substantiation. In particular, basis was indicated A83 was discussed, but inventive step not. Therefore, the request is not admitted.

EPO T 1120/12 -  link 

Reasons for the Decision
[...] 29. The subject-matter of claim 1 of auxiliary requests 1 and 2 thus lacks an inventive step.

Auxiliary request 4 - admission into the proceedings (Article 12(2), (4) RPBA)

30. According to Article 12(4) RPBA, everything presented by the parties under Article 12(1) RPBA, in particular in the reply to the grounds of appeal (cf. Article 12(1)(b) RPBA), shall be taken into account by the board if and to the extent it relates to the case under appeal and meets the requirements of Article 12(2) RPBA, the board having the power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings. Article 12(2) RPBA inter alia provides that the reply to the statement of grounds of appeal shall contain a party's complete case, set out clearly and concisely why it is requested that the decision under appeal be upheld and should specify expressly all the facts, arguments and evidence relied on.

31. Claim 1 of auxiliary request is for a pharmaceutical composition comprising the Abeta1-7 fragment conjugate and an adjuvant. The request, in relation to which the appellant had requested that it not be admitted into the proceedings, was filed with the reply to the appellant's statement of grounds of appeal.

T 2406/16 - Re-establishment of rights and debit order

Key points

• The Board refuses a request for re-establishment for failure to pay an appeal fee. The Notice of appeal was filed in eOLF. The Notice was from an EPA working at a patent attorney firm. Normally, the debit order was also given in eOLF, after a check with the accounts department whether the deposit account had sufficient funds. In this case, the accounts department did not confirm, but the Notice of appeal was sent and the due date was removed from the system by mistake.
• The Board finds lack of due care. " [The] patent attorneys and their assistants apparently do not have access to the account balance. Thus, they cannot check themselves whether there are sufficient funds to make the payment, and need to get information from the accounts department before they can issue a payment order. However, according to the Appellant's submissions, it appears to be rather difficult to get this information. It is not sufficient to contact a colleague from the accounts department because the account balance is reviewed only once or twice a week []. Thus, even when there are sufficient funds in the account, as was the case on 1 September 2016, it might well happen, as in the present case, that members of the accounts department are not in a position to give the green light for payments because the account balance has not been checked recently enough." 
• The Board: " the ultimate responsibility in observing time limits lies with the representative []. In the present case, he signed the letter of 1 September that contained a wrong statement regarding the payment of the appeal fee. He should have made sure that such payment had really been made. When transferring complete responsibility for this payment to his assistant - contrary to the routine procedure - he should have ensured that he performed the final cross-check himself. By jeopardising the possibility of a final cross-check, the principle of "due care" was violated." 
• As a comment, the check of whether sufficient funds are available, was likely implemented in view of the EPO's decision to abolish the possibility of replenishing a debit account with administrative fee as of 1 April 2014. As a further comment, I understand that the Board takes issues mostly with attorney not checking whether the debit order was actually submitted to the EPO. 
• The Board considers it established case law that if an appeal fee is filed after the time limit, the appeal is deemed to have not been filed and the appeal fee is reimbursed.

Reasons for the Decision

1. The decision under appeal was posted on 5 July 2016 and was deemed to have been delivered on 15 July 2016 (Rule 126(2) EPC). The time limit for filing the notice of appeal and for paying the appeal fee, therefore, expired on 15 September 2016 (Article 108, first and second sentence). A notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid (Article 108, second sentence). Thus, the appeal fee not having been paid until 16 November 2016, the notice of appeal of 1 September 2016 was not filed within the prescribed time limit. The non-compliance with the time limit, notwithstanding any later payment, has according to the case law of the Boards of Appeal the effect that the appeal is to be considered as not having been filed (see infra, Reasons 4). Re-establishment of rights is available in this situation (Article 122(1) EPC).

2. [] Hence, the request for re-establishment of rights is admissible.

3. The appellant has, however, not shown that all due care required by the circumstances was taken to comply with the time limit for filing the appeal fee (Article 122(1) EPC).

T 1332/12 - Filing better machine translation

Key points

• In this opposition appeal, the OD had found the claims to lack inventive step over D7, a JP patent application into English. The OD cited D7T, a machine translation. In appeal, the patentee submits (after the Statement of grounds) D7JPO, a newer machine translation of D7. 
• The Board discusses admissibility of D7JPO. "There is nothing in the EPC to prevent a party from filing a corrected translation of a document filed as evidence, even if the evidence and/or translation was filed by the other party to the proceedings." 

III. The opposition was based on the grounds under Article 100(a) EPC.

The opposition division decided that the subject-matter of claim 1 of the main, first, second and third auxiliary requests lacked inventive step over the disclosure of document D7 (JP 07-131734 A) and the common general knowledge of the person skilled in the art (Articles 56 and 100(a) EPC), and that the subject-matter of claim 1 of the fourth and fifth auxiliary requests extended beyond the disclosure of the application as filed (Article 123(2) EPC). For the analysis of inventive step, the opposition division referred to document D7T, which was a JPO machine translation of document D7 into English.

[...] VI. With a letter dated 12 October 2015, the appellant submitted a different translation of document D7 (D7JPO) because "the Japanese and the original and the previously translated prior art document D7T is not precise in many aspects". The appellant provided additional arguments as to why the subject-matter of claim 1 of the main request and the auxiliary request should be considered to involve an inventive step (Article 56 EPC).

Reasons for the Decision

1. The appeal is admissible.

2. Admission of translation D7JPO into the appeal proceedings (Article 13(1) RPBA)

2.1 The respondent filed a copy of Japanese application D7 (JP 07-131734 A) as evidence of the prior art under Article 54(2) EPC 1973 and a JPO machine translation of that document into English (D7T). In response to the respondent's reply, the appellant filed document D7JPO, which is also a JPO machine translation of document D7 into English, but of a later date and, in the appellant's view, a more accurate translation.

2.2 There is nothing in the EPC to prevent a party from filing a corrected translation of a document filed as evidence, even if the evidence and/or translation was filed by the other party to the proceedings. The board takes the view that this also applies if the document is a patent application, taking into account that, under the EPC, the translation of a European patent application or an international application into an official language of the EPO may generally be brought into conformity with the application as filed (Article 14(2) EPC 1973 regarding European patent applications; decisions T 700/05 and T 1483/10 regarding international applications). Hence, the board considers that the translation into English of Japanese prior-art document D7 may be brought into conformity with the original.

2.3 Moreover, the board concurs with the appellant that the differences between the two translations are minor and result in a linguistic clarification of certain passages in D7T without changing its technical disclosure.

2.4 In view of the above, the board, exercising its discretion under Article 13(1) RPBA, decided to admit translation D7JPO into the appeal proceedings and base the discussions of inventive step on D7, referring to the text of translation D7JPO.

T 2184/13 - Parameter and future technologies

Key points

• In this opposition appeal case with claim 1 directed to a resin characterized by parameters, one parameter was the molecular weight measured "by GPC". The opponent raised the issue that the scope of the claim could become broader with future improvements of GPC technology.
• The Board finds that this argument " fails on a pure legal reason, since the terms of a claim, including in the present case "measured by [GPC])" are to be read as they would be by the skilled person at the relevant date (filing or priority) of the application, i.e. in the present case excluding meanings of GPC which would result from further developments of [GPC technology] after said relevant date.
• The Board refuses, under Article 13 RPBA, a novelty attack based on public prior use, which was included the Notice of opposition, but was not elaborated during the oral proceedings before the opposition division, and which also not pursued with the statement of grounds of appeal. Picking up the novelty attack later in appeal was not admissible. 

II. Claims 1 and 6 of that request read as follows:

"1. A methacrylic resin characterized in that the methacrylic resin
- comprises 80 to 98.5 wt% of methyl methacrylate monomer unit and 1.5 to 20 wt% of at least one different vinyl monomer unit copolymerizable with methyl methacrylate,
- has a weight average molecular weight measured by gel permeation chromatography (GPC) of 60,000 to 230,000
- and comprises 7 to 30% of a component having a weight average molecular weight of 1/5 or less of a peak weight average molecular weight (Mp) obtained from a GPC elution curve, based on the methacrylic resin component. (indentations added).

Reasons for the Decision

Main request

Admittance of new objections

1. After the communication of the Board setting out its preliminary view of the case had been received, the appellant submitted one month before the oral proceedings with letter of 18 April 2017 an objection of lack of novelty over the public prior use of the polymer Sumipex MG SS and an objection of inventive step based on document D4. This represents a change to the appellant's complete case as defined in Article 12(2) RPBA and its admittance may thus be considered at the Board's discretion under Article 13(1) RPBA, such discretion being exercised inter alia in view of the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy. Article 13(3) RPBA adds that amendments to a party's case sought to be made after oral proceedings have been arranged may not be admitted "if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings".

1.1 The objection of lack of novelty based on the alleged public prior use of the polymer Sumipex MG SS and already invoked in the notice of opposition was not elaborated during the oral proceedings before the opposition division, a reference being made to the opponent's written submission (see section 3 of the minutes) and also not pursued with the statement of grounds of appeal. The appellant was aware from the impugned decision that it was questionable whether the alleged public prior use had been proven beyond any reasonable doubt, because it had not been shown that Sumipex MG SS had been sold before the priority date, but also because evidence was missing that a GPC analysis of that polymer carried out before that date would show that it contained the amount of "1/5 component" specified in claim 1 of the patent in suit. Therefore the board considers that there was no justification for the appellant to wait until one month before the oral proceedings to provide additional evidence D1c, D1d, D1e and D1f in order to prove the alleged prior use of the polymer Sumipex MG SS. This is even more the case as both documents D1e and D1f, which are meant among others to show a GPC analysis of a product alleged to be Sumipex MG SS, are dated 26 November 2001 and 11 October 2001 and bear the same reference to a laboratory book as experimental evidence D2 concerning measurements made around the same period. Accordingly, there was no reason for the Board to consider that additional documents D1e and D1f were not readily accessible to the appellant when filing the statement of grounds of appeal, when document D2 had been already submitted before the opposition division.

[...]

Sufficiency of disclosure

[...] 2.1.6 The further argument that the scope of the protection of the patent in suit would become broader with new developments in the GPC technic [sic, read: technique], since non soluble (meth)acryl resins might become then analysable, also fails on a pure legal reason, since the terms of a claim, including in the present case "measured by gel permeation chromatography (GPC)" are to be read as they would be by the skilled person at the relevant date (filing or priority) of the application, i.e. in the present case excluding meanings of GPC which would result from further developments of that analytical technic after said relevant date.

T 1693/12 - More pertinent prior art from the Board

Key points

• In this examination appeal, the Board introduced with the summons a new document D6 into the proceedings " which appeared to be more pertinent than the prior art cited by the Examining Division." The Board found the claims of all requests to lack an inventive step in view of D6.

EPO T 1693/12 - link

Summary of Facts and Submissions

I. The applicant (appellant) appealed against the decision of the Examining Division refusing European patent application No. 07024619.4.

II. The decision cites the following documents:

D1: EP 1 100 025 A1, 16 May 2001; and
D2: Cole, L.: "The Dastardly 'favicon.ico not found' Error", 3 August 1999, retrieved by the EPO on 11 October 2000 from http://www.wdvl.com/Authoring/Design/Images/Favicon/icon.html.

The Examining Division decided that the subject-matter of claim 1 of the then main request and auxiliary requests 1 and 2 lacked inventive step in view of document D2.

III. With the statement of grounds of appeal, the appellant filed an amended main request and auxiliary requests 1 and 2. It also filed the following two undated documents:

D3: "Favicon", Wikipedia; and
D4: screenshot of Internet Explorer.

IV. In a communication accompanying a summons to oral proceedings, the Board introduced the following documents into the proceedings:

D5: "Favicon", Wikipedia, 13 May 2004;
D6: US 5 963 964, 5 October 1999; and
D7: Kaasten S. et al.: "Designing an Integrated Bookmark / History System for Web Browsing", Proceedings of the Western Computer Graphics Symposium 2000, March 2000.

It inter alia expressed the preliminary view that the subject-matter of claim 1 of all requests lacked inventive step over document D6, which appeared to be more pertinent than the prior art cited by the Examining Division.

Reasons for the Decision

[...] 3. Main request - inventive step

3.1 Document D6 relates to "visual bookmarks", which are reduced graphical images, i.e. thumbnails, of web pages and are associated with URLs to those web pages (see abstract). It describes a user computer running a browser implementing the bookmarking mechanism shown in Figures 14 to 17 (column 5, lines 26 to 34; column 6, line 16, to column 8, line 22).

7. Conclusion

Since none of the requests on file is allowable, the appeal is to be dismissed.

T 2135/14 - Remittal in examination

Key points

• In this examination appeal case, the Board finds that the claims are not obvious in view of D1, based on a feature (b). Therefore, the refusal decision under appeal is to be set aside. The Board needs to decide whether to remit the case to the ED for further examination, or whether the Board can decide on inventive step. The Board decides to remit the case for further examination, because " a number of further documents (D2-D7) were cited during examination but neither discussed with the examining division nor dismissed as irrelevant, the board considers that inventive step has not yet been exhaustively discussed with the examining division."

EPO T 2135/14 -  link

8.2.5 The board concludes that feature (b) would not have been obvious to the skilled person from D1 and common general knowledge alone.

Remittal to the examining division

9. As a consequence, the decision under appeal must be set aside.

9.1 The board notes that feature (b) was not specifically contained in the claims as originally filed. However, the feature of determining whether an upgrade "can be completed" was contained in original claim 3. Given that the description is fairly short and discloses only a small number of clearly identifiable instances of that determination, the board considers that feature (b) at least should have been searched (see T 789/07, headnote). The board is not in a position to decide whether it actually was, but notes that the examining division did not question that feature (b) was covered by the search when admitting, considering and deciding on the third auxiliary request.

9.2 However, in view of the fact that a number of further documents (D2-D7) were cited during examination but neither discussed with the examining division nor dismissed as irrelevant, the board considers that inventive step has not yet been exhaustively discussed with the examining division.

9.3 Therefore, the board exercises its discretion under Article 111(1) EPC and remits the case to the examining division for further prosecution.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division for further prosecution.

J 0003/17 - No restoration of priority

Key points

• For this Euro-PCT application, the PCT application was filed shortly after the end of the priority period with the Chinese patent office as receiving Office. The rO granted restoration of priority based on the "unintentional"  criterium. This does not bind the EPO (Rule 49ter.1(b) PCT) After entry into the EP phase, the applicant requested restoration of priority from EPO as designated Office under Rule 49ter.2 PCT (and paid the fee). The EPO refused the restoration of priority because the EPO applies the "all due care"  criterium. The applicant appealed.
• The Legal Board dismisses the appeal. The applicant had failed to show that all due care had been exercised.
• The decision is mostly interesting because restoration of priority under the PCT does not show up very often in the case law. 

EPO J 0003/17 -  link

Summary of Facts and Submissions

I. On 26 September 2014, the appellant (applicant) filed an international patent application with the Chinese patent office as receiving Office. The application claimed the priority of a Chinese patent application filed on 16 September 2013. Priority was therefore not claimed within the priority period.

II. The appellant submitted a request for restoration of the right to priority with the receiving Office in accordance with Rule 26bis.3(b) PCT. The same request was addressed to the European Patent Office as designated Office on 15 March 2016. The request was refused by decision of the Receiving Section of 12 December 2016. The appellant filed an appeal from this decision on 10 February 2017. The appeal fee was paid on the same day.

III. In the grounds for restoration the appellant explained as follows the events that had led to missing the deadline for filing the international application within the priority year:

The appellant used a Chinese agent, N.N., for filing PCT applications. According to instructions from the appellant, N.N. had been asked to draft the international application and file it on 22 August 2014, the priority deadline being 16 September 2014. These dates had been entered into N.N.'s electronic and paper time-limit monitoring system.

T 0782/16 - Intellectual processing of the subject-matter

Key points

• The Board revokes for added subject matter EP 2292219, a patent that was already subject to litigation (e.g. UK decision [2015] EWHC 1068 (Pat)).
• Claim 1 is unusually drafted. Claim 1 is a second medical use claim and is directed to "any TTS (transdermal therapeutic system) as long as it comprises rivastigmine and as long as in the use of claim 1 there is provided a certain "starting dose". The amount of the starting dose is corresponding to that provided by the TTS having the structural features as indicated in claim 1. These structural features, however, are intended to define the starting dose only, not the TTS employed in the medical use of claim 1 as such"
• The patentee argued that the claim could be based on Example IV. The Board disagrees: " The appellants' reasoning is therefore based on an intellectual processing of the subject-matter disclosed in the original (or earlier) application rather than a direct and unambiguous derivation as required by the "gold" standard. No matter whether or not such processing is based on obvious considerations, such a reasoning cannot be used to justify the compliance with Articles 76(1) and 123(2) EPC."

EPO T 0782/16 -  link

Summary of Facts and Submissions

I. European patent No. 2 292 219, based on European application 10179085.5 filed as a divisional of the earlier application 06816633.9, was granted on the basis of one claim reading as follows:

"1. Rivastigmine for use in a method of preventing, treating or delaying progression of dementia or Alzheimer's disease, wherein the rivastigmine is administered in a TTS and the starting dose is that of a bilayer TTS of 5 cm**(2) with a loaded dose of 9 mg rivastigmine, wherein one layer:
has a weight per unit area of 60 g/m2 and the following composition:
- rivastigmine free base 30.0 wt%
- Durotak® 387-2353 (polyacrylate adhesive) 49.9 wt%
- Plastoid® B (acrylate copolymer) 20.0 wt%
- Vitamin E 0.1 wt%
and wherein said layer is provided with a silicone adhesive layer having a weight per unit area of 30 g/m2 according to the following composition:
- Bio-PSA® Q7-4302 (silicone adhesive) 98.9 wt%
- Silicone oil 1.0 wt %
- Vitamin E 0.1 wt%".

R 0003/15 - Successful petition for review

Key points

• The Enlarged Board sets aside T 1225/13 because of violation of the right to be heard, caused by a new interpretation of a claim feature given for the first time in the Board's decision.
• The EBA finds " einer zum ersten Mal in der Begründung der schriftlichen Entscheidung eingeführten Auslegung des Patentanspruchs 1 " in the Boards's decision. 
• The case is not an easy one (the Technical Board had a five member composition). The Enlarged Board goes quite deep into the reasoning of the TBA. 
• The substantive issue seems to boil down to the question whether the penultimate feature that a particular property of the lens is achieved "bei allen Vergrößerungen" in the penultimate feature is limited by the second feature "mit einer mehr als vierfachen Vergrößerung".
• The procedural violation of "einer zum ersten Mal in der Begründung der schriftlichen Entscheidung eingeführten Auslegung des Patentanspruchs 1 "  is in 4.5.8. The "Auslegung"  appears to refer back to 4.5.3, first sentence (The Board has" festgestellt, dass Anspruch 1 nicht die Bedingung enthält, dass ein subjektives Sehfeld von mindestens 22° auch bei “niedrigsten Vergrößerungen” erreicht wird"). The Enlarged Board refers to 8.4.2 of the TBA, but I would say that the relevant reasoning of the TBA is in fact in 8.6.2 that " Die Neuheit des Unterscheidungsmerkmals ii) gegenüber [the public prior use] liegt allerdings nicht darin begründet, dass die Formulierung "bei allen Vergrößerungen" ein subjektives Sehfeld von mindestens 22° auch in dem Zoom-Teilbereich 2,0-2,7 des Fernrohrs IOR erfordern würde. Eine solche Voraussetzung ist durch die beanspruchte Erfindung nicht gestützt. " 

EPO R 0003/15 / EPO R 3/15- link


Claim 1 at issue (AR1)

"Fernrohr oder Zielfernrohr, mit einem Mittelrohr (6), das zwischen einem Objektiv (4) und einem Okular (5) angeordnet ist, wobei das Mittelrohr (6) einen maximalen Außendurchmesser von 35 mm aufweist,
"- und wobei das Mittelrohr (6) ein Umkehrsystem (1) enthält, in das eine verstellbare Vergrößerungsoptik mit einer mehr als vierfachen Vergrößerung integriert ist, und die in einem Bauteil ausgeführt sind und die Vergrößerungsoptik durch eine Linsenanordnung mit zumindest zwei relativ zueinander verschiebbaren optischen Elementen (3a, 3b) gebildet ist,"
- wobei das Umkehrsystem (1) zwischen einer objektivseitigen Bildebene (9) und einer okularseitigen Bildebene (10) angeordnet ist,
- und wobei die objektivseitige Bildebene (9) zwischen dem Objektiv (4) und der dem Objektiv (4) zugewandten Seite des Umkehrsystems (1) liegt, und die okularseitige Bildebene (10) zwischen dem Okular (5) und der dem Okular (5) zugewandten Seite des Umkehrsystems (1) liegt,
- und wobei durch das Verschieben zumindest der optischen Elemente (3a, 3b) des Umkehrsystems (1) ein von dem Objektiv (4) in einer objektivseitigen Bildebene (9) entworfenes Zwischenbild mit einem veränderbaren Abbildungsmaßstab und aufgerichtet mit einem maximalen Zoom größer vierfach, in einer okularseitigen Bildebene (10) vergrößert abgebildet ist
- und wobei eine optische Strahlumlenkeinrichtung (2) in das Umkehrsystems (1) integriert ist, wobei die Strahlumlenkeinrichtung (2) durch eine zusätzliche Linsenanordnung gebildet ist, die auf der dem Okular (5) zugewandten Seite des Umkehrsystems (1) angeordnet ist und eine negative Brechkraft zwischen -20 dpt (Dioptrien) und -40 dpt aufweist,
- so dass bei allen Vergrößerungen, mit welchen das objektivseitige Zwischenbild in die okularseitigen Bildebene (10) abgebildet wird, ein subjektives Sehfeld (2omega') der fernoptischen Einrichtung von mindestens 22°, zumindest für Licht mit einer Wellenlänge von etwa 550 nm gewährleistet ist

- und wobei die optische Strahlumlenkeinrichtung (2) auf der vom Okular (5) wegweisenden Seite der okularseitigen Bildebene (10) des Fernrohrs oder Zielfernrohrs angeordnet ist." 

Entscheidungsgründe

Zulässigkeit des Überprüfungsantrags - Antragsfrist

1. [] Der Überprüfungsantrag ist infolgedessen rechtzeitig gestellt worden.

Zu den einzelnen geltend gemachten Verstößen gegen Artikel 113 (1) EPÜ

VERFAHRENSMANGEL I: []

2. Zulässigkeit des Überprüfungsantrags - Rügepflicht gemäß Regel 106 EPÜ

[]

2.4 Der Überprüfungsantrag ist daher hinsichtlich des geltend gemachten schwerwiegenden Verfahrensmangels I nicht zulässig.

VERFAHRENSMANGEL II: überraschende neue Anspruchsauslegung des Begriffes “bei allen Vergrößerungen” und Argumentationslinie bezüglich erfinderischer Tätigkeit in der schriftlichen Entscheidung der Beschwerdekammer

3. Rügepflicht gemäß Regel 106 EPÜ

Die Große Beschwerdekammer stimmt mit der Antragstellerin überein, dass der behauptete Verfahrensmangel II einen Mangel betrifft, der erst mit der Zustellung und der Lektüre der schriftlich begründeten Entscheidung erkennbar wurde. Deshalb war die Antragstellerin nicht in der Lage, entsprechende Einwände schon im Beschwerdeverfahren bzw. in der mündlichen Verhandlung gemäß Regel 106 EPÜ zu erheben. Der Antrag ist daher insoweit zulässig.

4. Verletzung des rechtlichen Gehörs gemäß Artikel 113 (1) EPÜ - überraschende Entscheidungsbegründung

4.1 Allgemeines

Der Grundsatz des rechtlichen Gehörs gemäß Artikel 113 (1) EPÜ erfordert es, dass die Entscheidung nur auf Gründe gestützt werden darf, zu denen die Beteiligten sich äußern konnten. Dies bedeutet insbesondere, dass ein Beteiligter nicht durch bisher unbekannte Gründe und Beweismittel in der Entscheidungsbegründung überrascht werden darf (vgl. z.B. R 15/09 vom 5. Juli 2010, R 21/10 vom 15. Juni 2012, R 3/13 vom 30. Januar 2014). Unter “Gründe” im Sinne des Artikels 113 (1) EPÜ werden die wesentlichen rechtlichen und tatsächlichen Gründe verstanden, auf denen eine Entscheidung beruht. Dies bedeutet aber nicht, dass das entscheidende Organ verpflichtet ist, den Beteiligten im Voraus alle Entscheidungsgründe im Einzelnen darzulegen. In den Entscheidungen R 3/10 vom 29. September 2011, R 15/11 vom 13. Mai 2013 und R 16/13 vom 8. Dezember 2014 wurde dem Überprüfungsantrag wegen einer in den Entscheidungsgründen enthaltenen überraschenden Begründung, zu der die Beteiligten sich nicht hatten äußern können, stattgegeben.

T 1513/12 - Agreement parties does not bind Board

Key points

• The Board does not accept the requested transfer of opposition because of lack of evidence that the business units connected with the opposition were involved in the spin-off.
• In the context of a novelty attack, the parties had agreed on an interpretation of a feature of the claim. The Board  notes that such agreement is not binding for the Board (As a comment, the Board does not cite the principle of examination of own motion, Article 114(1) EPC). In any case, the Board considers that the skilled person would have understood the feature in the same way as the parties.
• The Board admits a prima facie highly relevant prior art document filed with statement of grounds, even though the document could have been filed earlier. "Jedoch gebietet die Rechtssicherheit die Gültigkeit der vom EPA erteilten Schutzrechte, was wiederum impliziert, dass relevante Dokumente des Standes der Technik, deren Relevanz ohne weiteres erkennbar ist, nicht außer Acht gelassen werden dürfen."
• Note 31.05.2018: This decision is apparently of interest, because this post attract a high number of visitors. Honestly, I have no clue why... Comments are welcome.

EPO Headnote

An interpretation of a patent claim agreed between the parties to the proceedings is not binding for the Board of appeal. The reason is that the principle of party disposition should not be understood in such a way, that the parties can agree on an interpretation that is convenient for themselves but that can be relevant for third parties.

Eine zwischen den Verfahrensbeteiligten einvernehmliche Auslegung eines Patentanspruchs ist nicht als verbindlich für die Beschwerdekammer anzusehen. Die Dispositionsmaxime ist nämlich nicht so zu verstehen, dass sich die Verfahrensbeteiligten eine Auslegung aussuchen können, die zwar für sie selbst zufriedenstellend, jedoch für an dem Verfahren Nichtbeteiligte von Bedeutung sein könnte (vgl. Punkt 4.2.2).

Entscheidungsgründe

1. Zulässigkeit der Beschwerde

Die Beschwerde der Einsprechenden genügt den Erfordernissen der Art. 106 bis 108 EPÜ, sowie der R. 99 EPÜ. Die Beschwerde ist zulässig.

2. Antrag auf Übertragung der Parteistellung als Einsprechende und Beschwerdeführerin

2.1 Im Laufe des Beschwerdeverfahrens stellte die Beschwerdeführerin den Antrag auf Übertragung der Parteistellung als Einsprechende und Beschwerdeführerin. Die Kammer wies den Antrag als ungültig zurück. Die ursprüngliche Beschwerdeführerin wird somit als die rechtmäßige Beschwerdeführerin angesehen.

T 1340/15 - Meaning of "prima facie"

Key points

• In this opposition appeal, the OD had raised on own motion an objection of added subject-matter. The patentee appeals and asks the Board to review this decision. In particular, the patentee argued that the added subject matter was not a matter that could not be decided on "prima facie" in the sense of G 10/91 (with reasons given in consolidated case G 9/91).
The Board considers that G 10/91 means that the opposition division " only had to determine if there were, prima facie, clear reasons for considering the issue of added subject-matter. It follows that the "prima facie" test for admitting the ground for opposition pursuant to Article 100(c) EPC is not to be interpreted so narrowly as meaning that it must be possible to definitively conclude "at first glance" that Article 123(2) EPC is actually infringed. In the present case, in view of the evident ambiguity of the language used in the passage essentially relied on by the appellant for support [], the opposition division had a valid reason for admitting the new ground, especially as the allegedly infringing features would have likely played a role in connection with novelty and/or inventive step."

EPO T 1340/15 -  link

Reasons for the Decision

1. Admissibility of the ground for opposition pursuant to Article 100(c) EPC

1.1 In accordance with case law, an opposition division has the discretionary power to introduce of its own motion a fresh ground for opposition (Article 114(1) EPC). The board's review of this decision is essentially limited to ensuring that the opposition division did not use this power unreasonably.

1.2 The opposition division argued in the impugned decision essentially that claim 1 appeared, prima facie, to extend beyond the content of the application as filed. It therefore introduced the ground for opposition pursuant to Article 100(c) EPC, citing the Guidelines for Examination D-V 2.2 and G 10/91. It also noted that the features in question were central to the arguments brought forward with respect to the ground for opposition pursuant to Article 100(a) EPC.

1.3 The appellant essentially argued in the statement of grounds of appeal that the ground for opposition pursuant to Article 100(c) EPC (based in essence on a non-compliance with Article 123(2) EPC) was not a ground which could have been raised as a result of a "prima facie" examination. In the appellant's view, "prima facie" was to be understood as "at first glance", and the legal question of whether or not the granted claims were covered by the original disclosure of the application as filed could not be solved prima facie, at least not in the present case.

1.4 G 10/91 (OJ 1993, 420) cited by the opposition division and the appellant refers to a new ground being exceptionally admissible "in cases where, prima facie, there are clear reasons to believe that such grounds are relevant and would in whole or in part prejudice the maintenance of the European patent" (cf. point 16 of the reasons [of G 9/91]). Therefore, the opposition division only had to determine if there were, prima facie, clear reasons for considering the issue of added subject-matter (cf. Article 123(2) EPC). It follows that the "prima facie" test for admitting the ground for opposition pursuant to Article 100(c) EPC is not to be interpreted so narrowly as meaning that it must be possible to definitively conclude "at first glance" that Article 123(2) EPC is actually infringed. In the present case, in view of the evident ambiguity of the language used in the passage essentially relied on by the appellant for support (i.e. paragraph [0015] of the application as published, as will be discussed below), the opposition division had a valid reason for admitting the new ground, especially as the allegedly infringing features would have likely played a role in connection with novelty and/or inventive step.

1.5 Consequently, the board concludes that the opposition division reasonably exercised its discretion when introducing the ground for opposition pursuant to Article 100(c) EPC.

T 1632/14 - New features in examination appeal

Key points

• In this examination appeal, after finding that the main request lacks inventive step, the Board decided on admissibility of an Auxiliary Request filed during the appeal procedure. The reason is that the added features of the AR relate to a different technical problem that the main request. 
• " This [technical] problem was neither mentioned in the original application nor was any feature relating to this aspect included in the independent claims. Further, it is entirely different from the technical problem addressed by the subject-matter claimed so far[.] Consequently, the amendments according to claim 1 of [the AR] result in an entirely fresh case being presented. It is established case law that ex parte proceedings before the boards of appeal are primarily concerned with examining the contested decision (G 10/93 [)]. The appeal proceedings are intended to review the correctness of the first-instance decision rather than to continue examination by other means." 

EPO T 1632/14 -  link

1.6 The board concludes that, since the subject-matter of claim 1 of the main request does not involve an inventive step (Articles 52(1) and 56 EPC), the main request is not allowable.

2. Auxiliary requests 1-1 to 1-3: admissibility (Articles 12(4) and 13(1) RPBA)

2.1 Auxiliary requests 1-1 to 1-3 were submitted with the letter dated 18 August 2017 in response to preliminary objections of the board under Articles 84 and 123(2) EPC to claim 1 of auxiliary requests 1 to 3.

2.2 Since, in the present case, the auxiliary requests were filed one month before the oral proceedings before the board, they constitute an amendment to the appellant's case within the meaning of Article 13(1) RPBA. In accordance with that article, any amendment to a party's case after it has filed its grounds of appeal may be admitted and considered at the board's discretion.

T 0259/15 - Reasonable expectation of succes and clinical trials

Key points

• In this opposition appeal for a patent directed to a buprenorphine patch for use in treating pain with a dosing interval of at least 7 days, the buprenorphine patch as such was known. The main argument of patentee in support of the presence of inventive step was that the skilled person would not have started such clinical tests (with 7 day intervals) in the absence of a reasonable expectation of success.
• The Board notes that the concept of " reasonable expectation of succes" comes from the case law in the field of biotechnology. In connection with pharmaceutical inventions as claimed, the Board notes that " the concept of "reasonable expectation of success" does not apply when the implementation and the testing of an approach suggested by the prior art do not involve any particular technical difficulties. In such situations the skilled person would prefer to verify whether the potential solution that he has conceived works, rather than abandon the project because success is not certain." 
• The fact that human clinical trials are necessary does not change this in the abstract. For the clinical trials necessary in the present case, the Board notes that " the experimentation required to verify whether the patch of D1 can be used effectively for convenient pain therapy is relatively simple and does not involve major risks for the volunteers." 

EPO T 0259/15 -  link

Reasons for the Decision

MAIN REQUEST (PATENT AS GRANTED)

1. Inventive step

The invention underlying the patent in suit relates to a transdermal delivery device for the administration of buprenorphine, an opioid analgesic agent.

Thus, in the Board's opinion, the skilled person would have observed that the device of example 3 of D1 could be used for a dosing interval of at least 7 days by performing tests which simply require applying the patch of D1 and monitoring the level of buprenorphine in the blood.

1.3.4 In line with the appealed decision, the main argument of the respondent [patentee] in support of the presence of inventive step was that the skilled person would not have started such clinical tests in the absence of a reasonable expectation of success.
[...]

T 2076/13 - Remittal and own motion

Key points

• In this opposition appeal, both opponents withdrew their opposition. The Board finds the claimed to be sufficiently disclosed. The Board remits the case to the OD, because the EPO may continue the opposition of own motion and because the main purpose of appeal proceedings is to review decisions of departments of first instance.
• There is also a discussion of a parameter feature. " [The] skilled person would be able to identify without undue burden the temperature at which the surface tension and the contact angle are to be measured. For this reason alone, the Board cannot come to the same conclusion as the opposition division that the patent does not meet the requirement of sufficiency of disclosure ". The Board agrees with the rationale of decisions such as T 593/09 and T 608/07.

EPO T 2076/13 -  link

3.3 Regardless of the considerations set out above, the Board observes that deficiencies arising from the presence in a claim of an ambiguously defined parameter or a parameter that could be measured by different methods or under different conditions leading to different values do not necessarily result in a problem of insufficiency of disclosure.

T 1955/13 - In house public prior use

Key points

• The opponent had submitted a public prior use as state of the art during the procedure before the OD. The alleged public prior use was by himself. The OD had not admitted it, as being late filed. The OD had cited case law about opponents abusively delaying the filing of prior art already known to them There was no indication for such abuse in this case. Nevertheless, the Board considers the OD's approach correct. Public prior use by the opponent himself must be filed with the Notice of opposition, unless it only becomes relevant by developments during the opposition procedure. 

EPO Headnote
In case an opponent submits as prior art a public prior use by himself only late in the opposition procedure, there are good grounds, when deciding on admissibility, to make no difference between the case that the opponent admits that the piece of prior art was consciously hold back, and the case that he indicates that he had merely not earlier searched for it.
This is because fairness and the obligation to cooperate with the procedure require that also an in-house search is carried out within the opposition period. If the late filing of the prior art is  not explainable by developments in the opposition procedure that would have reasonably prompted parties to carry out a search for the first time in a particular direction, it does not seem legally incorrect that the opposition division applied the case law on abusive holding back of known prior art.

Legt der Einsprechende im Einspruchsverfahren eine aus dem eigenen Haus stammende offenkundige Vorbenutzung erst spät vor, so bestehen gute Gründe, bei der Zulassungsentscheidung nicht danach zu differenzieren, ob der Einsprechende ein bewusstes Zurückhalten dieses Standes der Technik einräumt oder ob er angibt, lediglich nicht schon früher nach diesem recherchiert zu haben.

Denn Fairness und Verfahrensförderungspflicht gebieten es, auch eine hausinterne Recherche bereits innerhalb der Einspruchsfrist vorzunehmen. War die späte Vornahme der Recherche daher nicht mit Entwicklungen im Verfahren erklärbar, die vernünftige Parteien zu einer erstmaligen Recherche in eine bestimmte Richtung veranlasst hätten, erscheint es nicht rechtsfehlerhaft, wenn die Einspruchsabteilung bei ihrer Zulassungsentscheidung die zum missbräuchlichen Zurückhalten von bekanntem Stand der Technik ergangene Rechtsprechung anwendet. (siehe Punkte 4.3 bis 4.4)

EPO T 1955/13 - link

T 0735/13 - Appeal opponent inadmissible

Key points

• In this opposition appeal, the Board holds the appeal of the opponent inadmissible. The appeal was against the decision to maintain the patent in amended form based on the second auxiliary request. The Board holds the appeal inadmissible essentially because the opponent did not present arguments against the second auxiliary request during the oral proceedings before the OD. As a comment, it seems that the request was filed during the oral proceedings before the OD (at 14:10) but the minutes of the oral proceedings are not visible in the EPO online file (only the first and last page).
• The Board, in translation, "Because an opponent can only express its disagreement with a patent in amended form by submitting grounds foreseen in law, is the opponent in any case not adversely affected by the maintenance of the patent in amended form according to the second auxiliary request with respects to the grounds of opposition, which the opponent only asserted in appeal. " 
• It seems that under this decision, an opponent must maintain all grounds against all requests at any costs throughout the entire opposition procedure (even if a new request is admitted during the oral proceedings by the OD that the opponent did not prepare for) in order to safeguard an admissible appeal.

EPO T 0735/13 -  link

Entscheidungsgründe

1. Nach Art. 107 EPÜ ist jeder Verfahrensbeteiligte, der durch eine Entscheidung beschwert ist berechtigt, Beschwerde einzulegen.

2. Entscheidend für das Vorliegen einer Beschwer ist es, ob die angegriffene Entscheidung hinter dem Begehren des Beschwerdeführers zurückbleibt (Entscheidung T 244/85, ABl. 1988, 216 Nr. 3 und aus der Literatur: Singer/Stauder, Kommentar zum Europäischen Patentübereinkommen, 7. Aufl. 2016, Art. 107 Rz. 18 (Bühler). Zu prüfen ist hier zunächst, ob der einsprechende Beschwerdeführer gegen die von der Einspruchsabteilung aufrechterhaltene Fassung des Patents Einwände vorbringt, die der Aufrechterhaltung des Patents entgegenstehen könnten. Das ist, wie sich aus dem Sachverhalt ergibt, der Fall. Von einer Beschwer kann allerdings dann nicht gesprochen werden, wenn der Beschwerdeführer zwar zum Entscheidungszeitpunkt mit der Entscheidung einverstanden war, es sich indessen im Nachhinein anders überlegt hat. Abzustellen ist für die Beschwer daher auf eine Diskrepanz zwischen dem Begehren des Beschwerdeführers zum Zeitpunkt der Entscheidung, und der Entscheidung selbst.

T 0950/13 - Plausible without examples (Dasatinib II)

Key points

• The Board decides on sufficiency of disclosure of a claim for the use dasatinib for the treatment of a specific type of cancer, namely chronic myelogenous leukemia. As a comment, in T 0488/16 the Board had found insufficient disclosure of the use of dasatinib as medicament (based on a different PCT application).
• "In the present case the suitability of dasatinib for the treatment of patients with chronic myelogenous leukemia has to be plausible to the skilled person either from the teaching of the application as filed or from common general knowledge at the relevant date".
• "[It] is clearly disclosed in the application as filed that dasatinib is suitable in the treatment of CML []The board also concurs with the [patentee] that a person skilled in the art at the filing date of the application was familiar with the fact that CML can indeed be treated by inhibiting BRC-ABL kinase. []The application does not contain experimental evidence for dasatinib's BRC-ABL kinase inhibitory activity. However, the disclosure of experimental results in the application is not always required to establish sufficiency".
• "The board is satisfied that the application discloses at least a plausible technical concept, namely that dasatinib based on its functional equivalence to imatinib as a BRC-ABL kinase inhibitor is suitable in the treatment of CML."
• "As a consequence, the post-published evidence in the form of document [D2], which confirms the BRC-ABL kinase inhibitory activity of dasatinib [] can be taken into account"
• "The board also does not agree with the opposition division's approach to equate non-obviousness with the existence of serious doubts. A technical teaching - in the present case the teaching that dasatinib is suitable for the treatment of CML based on its functional analogy to imatinib as BRC-ABL inhibitor - is not rendered implausible, because it may not have been obvious in view of the prior art."
• "Concerning the lack of explicit data, the board re-emphasises that in cases where the application discloses a technical concept which is plausible in the light of the common general knowledge at the relevant date, but lacks concrete or tangible proof that the claimed concept can be put into practice, post-published documents may be used as evidence that the invention was indeed reproducible without undue burden at the relevant filing date of the application "
• Claim 2 is however not plausible. Claim 2 is directed to treatment of CML cancer that is resistent to imatinib. [] The application as filed contains no information at all, neither in the form of experimental data nor in the form of a plausible technical concept, that dasatinib is suitable in the treatment of those patients with imatinib-resistant CML. The functional analogy to imatinib as BRC-ABL kinase inhibitor is not helpful in this context and cannot explain why dasatinib should be active, when imatinib is, or has become, inactive." 
• The case is remitted.

EPO T 0950/13 - link

The main request consist of 6 claims with claims 1 and 4 reading as follows:

"1. Use of the compound of formula (IV) or a salt thereof: [Dasatinib ] for the manufacture of a medicament for the oral treatment of cancer, wherein the cancer is chronic myelogenous leukemia (CML)."

Reasons for the Decision

1. The appeal is admissible.

2. As communicated in advance to the board (see point VIII above), the respondent did not attend oral proceedings, to which it had been duly summoned. The board decided to continue the proceedings pursuant to Rule 115(2) EPC and Article 15(3) RPBA.

Main request and auxiliary request 1

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

3.1 Claim 1 of the main request is directed to the use of dasatinib in the manufacture of a medicament for the treatment of chronic myelogenous leukemia (CML).

3.2 Article 83 EPC stipulates that the patent shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.