T 1434/13 - Priority and same invention

Key points

• Priority was claimed from two US provisional applications, which did not include claims. The priority was deemed to be invalid, because each US provisional was directed to a different problem than the application at issue. Accordingly each provisional had essential features which are not specified in current claim 1. 

EPO T 1434/13 -  link

Reasons for the Decision

1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

The invention

2. The invention concerns a container for carrying a storage medium, e.g. a CD, including bottom and top walls connected by a hinge or spine and a medium-engaging element provided on the inner surface of at least one of the top and bottom walls (or "covers") for securing the storage medium (see paragraphs [0025], [0034] and [0035] of the B9 publication).

In one of the embodiments of the description, the container includes a display region provided on the outer surface of the top wall, configured and adapted for the display of indicia (paragraph [0025]).

The container may further include a film forming "a pocket extending from and across the outer surface of the top wall, around the hinge and across the outer surface of the bottom wall", which "can function as a receptacle for printed material related to the media held in the container" (see paragraph [0026]).

Main request

3. Priority

3.1 The Opposition Division was of the opinion that neither P1 nor P2 disclosed feature (7a) of claim 1, i.e. the display band region being configured and adapted for display of indicia. Neither of those documents was concerned with the problem solved by the opposed patent, which was displaying additional media format information on the container. Furthermore, some specific preferred features mentioned in the summary of the invention in paragraphs [0013], [0016] and [0018] of the B1 publication had no basis in documents P1 and P2.

3.2 It is common ground in the parties' submissions that neither of the priority documents P1 and P2 describes in written form all the features of claim 1 as granted. The points of dispute are whether the subject-matter of claim 1, in particular features (7a) to (9) and some alternatives recited by features (4a) and (6a), can be considered to be disclosed in the priority document as a whole, taking the drawings into account.

T 0201/13 - Tacit secrecy agreement

Key points

• The Board finds that a tacit secrecy agreement between a supplier and a customer, in the context of alleged public prior use. The tacit secrecy agreement is based on the fact that the email from the supplier (and opponent) to the custormer contained a statment that a patent application was still to be filed for the product developped by the supplier, and (later) that the official product launch was a month later.

EPO  T 0201/13 - link

Entscheidungsgründe

1. Die Beschwerdeführerin greift die Neuheit des Gegenstands von Anspruch 1 unter anderem damit an, dass sie behauptet, die technischen Details eines von ihr neu entwickelten Dämpfers für Waschmaschinen durch Verkauf bzw. Lieferung einiger Dämpferpaare und den Versand der E-Mails D1 bis D6, denen technische Zeichnungen D9, D10 bzw. die Unterlagen einer eigenen Patentanmeldung D11/D11a betreffend den Dämpfer angehängt waren, an Mitarbeiter der Hersteller von Waschmaschinen LG, Vestel und Arçelik vor dem Prioritätstag des Streitpatents der Öffentlichkeit zugänglich gemacht zu haben.

2. Vor einem Vergleich des Gegenstands von Anspruch 1 mit dem mutmaßlich vorveröffentlichten Dämpfer, ist demnach zu prüfen, ob die vorgebrachten Beweismittel zur Überzeugung der Kammer beweisen, dass ein solcher Dämpfer, bzw. seine Beschreibung in den vorgebrachten Beweismitteln zum Stand der Technik nach Artikel 54(2) EPÜ gehört.

3. Dabei muss neben den Fragen, "was" "wann" der Öffentlichkeit zugänglich gemacht worden sein soll, insbesondere geklärt werden, unter welchen Umständen, d.h. "wie" dies geschah.

4. Hinsichtlich der Frage nach dem "wie" beruft sich die Beschwerdeführerin zur Stützung ihrer Argumentation auf die Rechtsprechung der Beschwerdekammern, wonach in der Regel ein einziger Verkauf eines Produkts an ein einziges Mitglied der Öffentlichkeit ausreiche als Nachweis darüber, dass ein solches Produkt der Öffentlichkeit zugänglich gemacht wurde. Dabei sei ein gesonderter Nachweis, dass keine stillschweigende Geheimhaltungsvereinbarung vorgelegen habe, nicht zu erbringen. Unter Hinweis auf die Entscheidungen T 602/91, T 782/92, T 681/01, T 1464/05, T 1510/06 und T 1309/07, trägt sie vor, dass das Bestehen einer stillschweigenden Geheimhaltungsvereinbarung im Gegenteil nur dann angenommen werden dürfe, wenn konkrete Hinweise dafür vorlägen, wie zum Beispiel im Fall eines gemeinsamen Entwicklungsvorhabens zweier Unternehmen.

5. Es kann dahin gestellt bleiben, ob der vorliegende Sachverhalt überhaupt mit einem vorbehaltlosen Verkauf oder mit den Sachverhalten, wie sie den genannten Entscheidungen zugrunde lagen, vergleichbar ist. Es ist ebenso unerheblich, ob der Dämpfer eine Eigen­entwicklung der Beschwerdeführerin ist oder ob seine Entwicklung abgeschlossen war und er kurz vor der Markteinführung stand. Denn im vorliegenden Fall gibt es einen konkreten Hinweis, der auf eine zumindest stillschweigende Geheimhaltungsvereinbarung zwischen AKS und den angesprochenen Mitarbeitern von LG, Vestel und Arçelik hindeutet.

T 2096/12 - Parameter "less than 3 mm"

Key points

• The feature that "the absorbent article has a thickness equal to or smaller than 3 mm", kills the patent because no measurement method is given. The claim is therefore found to be insufficiently disclosed.
• " The Board agrees with the statements in T 593/09 and emphasizes that the absence of a test method for a parameter which is a claimed feature does not lead by itself to the issue of insufficient disclosure. In a case where - for example ranges for length or width of a clearly structured article are concerned - the parameters could be established unambiguously and without doubt. However, in each case it has to be evaluated on a case by case basis whether this is possible. According to Article 69 EPC, the extent of protection conferred by a patent shall be determined by the claims and the description and drawings shall be used to interpret the claims. When - such as in the case at issue where neither the claims nor the description provide a clue for how to interpret the parametrical feature of the claim - the extent of the protection conferred by the patent is not defined and cannot be reliably determined, it can only be concluded that the requirement of Article 100 (b) EPC is not met." 

 EPO T 2096/12 - link

VIII. Claim 1 of the main request reads as follows:
"An absorbent article (10) elongated to have longitudinally opposed front and rear edges (13, 14) and transversely opposed left and right edges (11, 12), the absorbent article comprising a stack of:
a backsheet (21) having a liquid barrier effect;
a liquid absorbent layer (22);
a hydrophilic intermediate sheet (23) including fibers; and
a hydrophilic topsheet (24) including fibers,
wherein the absorbent article has a central region (30) of a predetermined width (W5), which is spaced apart from the left and right edges and formed with a plurality of liquid passage holes (31) continuously extending from the topsheet to the intermediate sheet,
characterised in that the absorbent article has a thickness equal to or smaller than 3 mm,and a fiber density of the intermediate sheet is higher than a fiber density of the topsheet in the central region."

 Reasons for the Decision

1. Main Request - Sufficiency of disclosure

1.1 Claim 1 defines a thickness range of "equal to or smaller than 3 mm" without any test method being stated regarding the way in which the thickness parameter is measured. The lack of a disclosed method in the patent itself is undisputed.

1.2 Materials which may be used to form the absorbent article in claim 1 include compressible materials, such as air-laid pulp in the absorbent layer (paragraphs 9, 57 of the patent), and such as through-air bonded nonwoven fabrics in the topsheet and in the two-layered intermediate sheet (paragraphs 46, 48, 50).

1.3 The pressure used in a test method for measuring thickness of compressible products is of utmost importance because the thickness varies inversely with the pressure applied. If the pressure used in the measurement method is unknown, the skilled person is unable to determine whether the article is within or without the scope of claim 1. Thus, while the Board acknowledges that some degree of measurement value variation will occur and is to be included within a claimed range, the complete lack of information as to what load is to be applied when measuring a compressible sheet leads to a degree of uncertainty in thickness measurement of the claimed article which is entirely unacceptable for a skilled person trying to establish which articles might fall within the claims.

T 0013/15 - Admitting new line of argument

Key points

• The Board reviews the decison of the OD to admit a new novelty attack based on document E4 into the proceedings. 
• The Board holds that the criterion of prima facie relevance is applicable to new grounds and new evidence, but not to new arguments. "However, there is no obligation for an Opposition to apply the principle of prima facie relevance in case of a new line of attack which is within the framework of a ground for opposition (here: lack of novelty, Article 100(a) EPC) and which is based on a document (here: document E4) which is already in the proceedings (E4 being cited and discussed in the notice of opposition, although only in respect of dependent claims). In fact, in the present case, the Opposition Division gave precedence to the principe of examination by the EPO of its own motion under Article 114(1) EPC, having regard to the fact that neither reasons of procedural economy [] nor reasons of fairness in respect of one of the parties spoke against it. "

EPO T 0013/15 - link

Reasons for the Decision

1. The appeal is admissible.

2. In the Board's view the Opposition Division correctly exercised its discretionary power pursuant to Article 114(1) EPC when admitting into the opposition proceedings the line of arguments based on E4 related to lack of novelty of granted claim 1.

First, contrary to the Patentee's allegations, there is absolutely no evidence that these arguments were wilfully and intentionally submitted late, only during oral proceedings, in order to put the Patentee at a disadvantage. The Opponent's statement in this respect is entirely plausible, to the extent that it realized the relevance of E4 only when preparing for the oral proceedings on the preceding day.

Second, the Opposition Division correctly allowed the Opponent to outline its arguments (see minutes, points 8, 9, 10, 11), in order to be able to understand their nature, and the Patentee to comment on these arguments. Thereafter the oral proceedings were interrupted (see minutes, point 10) to allow close consideration of these arguments by the Opposition Division and by the Patentee, and to allow the Opposition Division to deliberate on their admission. Thus, the Patentee had enough time to prepare for a response and its right to be heard was not violated. When the oral proceedings were resumed the Opposition Division announced its decision to admit said arguments (see minutes, point 11) and the Patentee presented its response during the following discussion (see minutes, point 12). What is more, the minutes demonstrate that admission of said arguments occurred only after listening to both parties' arguments and after deliberation.

The Respondent argued that the Opposition Division should have assessed the relevance of the arguments based on E4 by means of a prima facie examination.

The criterion of prima facie relevance is indeed used by the departments of first instance when deciding whether to admit facts, evidence or grounds for opposition not filed in due time. If these are prima facie relevant, then according to the Guidelines for Examination (see E-V, 2.) "the competent department has to take such grounds, facts or evidence into consideration, no matter what stage the procedure has reached and whatever the reasons for belated submissions. In that case, the principle of examination by the EPO of its own motion under Art. 114(1) takes precedence over the possibility of disregarding facts or evidence under Art. 114(2)".

T 0093/12 - Country specific cooking program

Key points

• The Board acknowledges inventive step for a cooking device, wherein the pre-programmed cooking programs are specific for the country or language of the user interface. The Board does not expressly discuss whether the feature (or effect) is technical.

EPO T 0093/12 - link

3. Hilfsantrag III

Das Gargerät nach Anspruch 1 des Hilfsantrags III unterscheidet sich im Wesentlichen dadurch von dem Gegenstand wie erteilt (Hauptantrag), dass es zwei Voreinstellungsmöglichkeiten (landes- und sprachspezifisch) umfasst und die Voreinstellung nicht irgendwelche Parameter betrifft, sondern Garparameter eines Garprogramms oder einer Garbetriebsart.

Nach Auffassung der Kammer bedeutet ein Garparameter einen Parameter, dessen Wert bzw. dessen Einstellung einen unmittelbaren Einfluss auf das Garen und daher auf das Endergebnis des Garprogramms bzw. der Garbetriebsart aufweist, vgl. hierzu insbesondere Absätze [0027] und [0033] des Streitpatents.

3.1 Garprogrammdeskriptoren gemäss E7, welche lediglich in eine gewünschte Landes- bzw. Bediensprache übersetzt und im Bildschirm 1 angezeigt werden, sind keine landesspezifisch und bediensprachespezifisch voreingestellten Garparameter im Sinne des Streitpatents.

In E7 sind zwar ebenfalls Garparemeter im Sinne des Streitpatents offenbart, welche voreingestellt und vom Bediener des Gargeräts veränderbar sind, vgl Absätze [0040], [0045], [0048], [0050] und [0057] zusammen mit Figuren 5, 8, 11, 13 und 21 von E7.

Eine, wie beansprucht, landesspezifische bzw. sprachspezifische Voreinstellung eines Garparameters ist E7 jedoch nicht zu entnehmen.

3.2 E1 offenbart lediglich die Anzeige von Garprogrammen bzw. Gardeskriptoren in der Form von Landesprogrammlisten, wo die Reihenfolge landes- bzw. sprachspezifisch voreingestellt ist. Auch bei E1 geht es nicht um die Voreinstellung von Garparametern.

Die Unterscheidung gegenüber E7 bzw. E1 des Gargeräts gemäß dem Anspruch 1 des Hilfsantrags III, wonach Garparameter landes- bzw. sprachspezifisch voreingestellt sind, wodurch die Flexibilität bei gleichzeitig einfacher Bedienbarkeit des Gargeräts erhöht werden kann, bleibt also ohne Vorbild im Stand der Technik und ergibt sich auch nicht allein aus dem fachmännischen Wissen.

Die Erfordernisse des EPÜ und insbesondere des

Artikels 56 EPÜ sind durch die geänderten Patentunterlagen des Hilfsantrags III erfüllt.

T 2054/15 - Receipt of decision

Key points

• In this appeal case, the Statement in grounds was filed in time from the date the professional representative had signed the acknowledgment of receipt form, but late filed from the date a person had signed the postal advice of delivery. The professional representative submits that that person was not autorized to sign for receipt, and was not an employee of him. The case seems to turn on the particular facts, e.g. the later postal advice of delivery for the summons for oral proceedings were signed by the same person.
• " The Board holds the view that persons authorised to receive registered letters addressed to representatives are not required to formally be their employees. This corresponds to the actual situation in most representatives' firms. There is not even a legal requirement that these persons be personally known to the representatives. These elements therefore do not demonstrate that a person lacks authorisation to receive notifications addressed to the representatives." 

EPO T 2054/15 -  link

Summary of Facts and Submissions

I. The appeal concerns the decision of the Examining Division dispatched on 19 June 2015 refusing European patent application No. 08842168.0.

A postal acknowledgement of receipt of the decision, signed on 26 June 2015 by Ms. [S], "empleada", was returned to the European Patent Office (EPO) on 3 August 2015. EPO Form 2936 acknowledging receipt of the decision, signed on 2 July 2015 by Mr. Alberto Alvarez, was returned to the EPO on 8 July 2015.

T 1946/15 - Late appeal of opponent

Key points

• The Board follows established case law that in case an opponent files its Notice of appeal late, no re-establishment of rights is available (G1/86). Moreover, the late filed Notice of apppeal is then deemed to not have been filed and the appeal fee is reimbursed.

EPO T 1946/15 - link

Reasons for the Decision

1. The first question to be decided is whether an admissible appeal was validly filed.

2. The impugned decision was dispatched on 26 June 2015 and the notice of appeal was received on 4 November 2015. It is not disputed that the notice of appeal was not filed within the two-month period under Article 108 EPC.

3. It is established jurisprudence that merely paying the fee for appeal does not give rise to a validly lodged appeal, in the absence of a notice of appeal filed in due time (J 19/90 of 30 April 1992, Reasons, 1.2.2, T 778/00 of 6 July 2001, Reasons, 2.1 and 2.2, T 371/92 of 2 December 1993, Reasons, 3 and most recently T 1325/15 of 7 June 2016, Reasons, 41 and 42). This is also not disputed.

Re-establishment of rights

4. Therefore, it is necessary for the Board to consider the request for re-establishment of rights.

It is established jurisprudence that opponents are not entitled to re-establishment of rights under Article 122 EPC in respect of the two-month period for filing an appeal under Article 108 EPC (G 1/86 of 24 June 1987, Reasons, 6 and T 210/89 of 20 October 1989).

T 2564/12 - Assumed integrity of the representative

Key points

• A professional representative acted as opponent, the appeal was filed by the company that was his client. The Board considers this to be a mistake that can be corrected under Rule 139 EPC, so that the appeal is admissible. 
• The Board: " in view of these submissions made by Dr. N, taking into account the fact that the notice of opposition and the notice of appeal, both filed by the same firm of patent agents, included corresponding subject references and identical own case reference numbers [], and in view of the statements of Dr. N in his affidavit [], given the assumed integrity of the professional representative, the board accepts that sufficient evidence is provided by the requester that the opponent, i.e Dr. N, truly intended to file the appeal in his own name." 

EPO T 2564/12 -  link

Reasons for the Decision

1. Request for correction of the appellant's name and address in the notice of appeal - admissibility of the appeal

1.1 Notwithstanding the fact that the respondent no longer pursued its request that the appeal be held inadmissible (see point XV above, 2nd paragraph), the board is in any case required to examine the admissibility of the appeal ex officio (cf. Article 110 EPC and Rule 101 EPC).

1.2 The board notes (cf. point VI above) that it was made known during the opposition proceedings that the opponent, i.e. Dr. [N], was acting "in his own name but to the exclusive interest of ADVA AG Optical Networking". In other words, in the course of the opposition proceedings, it was made clear that Dr. N was a so-called "straw man" acting on behalf of the principal ADVA. The notice of appeal was however filed in the name of ADVA, who was not a party to the opposition proceedings. A request to correct the name and address of the appellant to those of the opponent was filed subsequently (cf. point X above), but only after the end of the time limit set under Article 108 EPC had elapsed. The question thus arises whether the notice of appeal is correctable in this case.

T 2073/11 - Package delivery at storage site

Key points

• The claimed invention is, essentially, a system wherein packages are not delivered to the home of the customer or to a local post office, but to a delivery and storage stations with lockers. The customer picks up the package from the delivery station. 
• The Board fins the claimed invention to lack inventive step based on D1 and common general knowledge, e.g. the use of a unique identifier such as a bar code for the package was obvious.
• The filing date is in 2000, regional entry in 2002, refusal by the ED in 2011 after only one Communication in 2009, and a decision of the Board finding lack of inventive step was issued in February 2017. So the EPO took about 15 years for one communication from the ED, and oral proceedings before the ED and the BoA.

EPO T 2073/11 -  link 

Reasons for the Decision

The invention

1. The application relates to the delivery of packages to customers, which has become increasingly important for instance due to online shopping (page 2, lines 34-37).

1.1 It is explained that the conventional prior-art solutions, namely home delivery and delivery to a local post office, were inconvenient both for the customer (e.g. because the customer had to be at home at delivery time or drive to the post office during office hours) and for the delivery service (e.g. because it needed to drive to unfamiliar parts of town with potential parking problems; see page 2, line 41, to page 3, line 75). Other known solutions, such as the use of a "smart" locked box at the customer's house or delivery to businesses other than post offices, did not fully overcome these disadvantages (see page 3, line 81, to page 4, line 2).

1.2 The invention thus proposes to use dedicated "smart" storage devices (claimed as "package holding facilities") to which packages may be delivered for the customers to pick up and to which customers may return packages (see page 11, lines 287-293). These storage devices are meant to be placed at locations where parking is not a problem and which customers routinely visit anyway, such as gas stations and the like (see page 10, lines 259-262).

T 0928/12 - Objection Rule 106

Key points

• If a request is not admitted on procedural grounds, there is no need to give the patent proprietor an opportunity to presents arguments for novelty and inventive step.

EPO T 0928/12 -  link

5. Rüge unter Regel 106 EPÜ

5.1 Mit ihrer Rüge hat die Beschwerdeführerin beanstandet, dass keine Möglichkeit gegeben war, "die Neuheit und erfinderische Tätigkeit des mit dem Hilfsantrag 2 neu eingereichten Anspruchssatzes vorzubringen". Die Fragen der Neuheit und erfinderische Tätigkeit dieses Antrags sind jedoch gerade deshalb nicht zur Diskussion gekommen, weil der Antrag aus verfahrensrechtlichen Gründen nicht ins Verfahren zugelassen wurde (s. Punkt 4.1 oben). Eine Diskussion der Neuheit und erfinderischen Tätigkeit kam daher aus diesen verfahrensrechtlichen Gründen nicht in Betracht. Hingegen wurde die Beschwerdeführerin selbstverständlich zur Frage der Zulassung dieses Antrags gehört. Das Unterbleiben der Diskussion über die Fragen der Neuheit und erfinderischen Tätigkeit ist daher auf die Nichtzulassung dieses Antrags zurückzuführen.

5.2 Bezüglich der Frage der Zulassung dieses Antrags wurde der Beschwerdeführerin jedoch ausreichend Gelegenheit eingeräumt, ihre Argumente zu diesem Thema vorzubringen. Eine Verletzung des rechtlichen Gehörs im Zusammenhang mit der Erörterung der Frage der Zulassung dieses Antrags kommt daher ebenfalls nicht in Betracht.

5.3 Die Kammer wies daher die Rüge zurück.

J 0018/16 - Refusal formal defects drawings

Key points

• The application was refused by the Receiving Section because of formal defects in the drawings. The Receiving Section used the normal form for the decision, which contains no reasons or specific identification of the formal defects. The Legal Board decides that the decision is not reasoned, as required, and forms a substantial procedural error.
• Accordingly, it seems that the standard practice of the Receiving Section with respect to formal defects is found to involve a substantial procedural violation. Hopefully the Receiving Section will change its practice (and forms) and from now on give a precise identification of any formal defects in the drawings.

J 0018/16 - link

Sachverhalt und Anträge

I. Die Beschwerdeführer (gemeinsame Anmelder) haben am 4. September 2015 einen Antrag auf Erteilung eines europäischen Patents gestellt und hierfür achtzehn Seiten Beschreibung, sechs Patentansprüche und drei Seiten Zeichnungen (Figuren 1 - 5) eingereicht.

II. Am 28. September 2015 hat die Eingangsstelle in einer Formularmitteilung nach Regel 58 EPÜ (EPA Form 1050C 12.14) auf Mängel betreffend die Anmeldungsunterlagen (Regel 57 EPÜ) durch Ankreuzen der Punkte (b), (c), (d) und (e) der Anlage C ("Mängel betreffend die Form der Zeichnungen") hingewiesen und damit folgendes festgestellt:

"Die Zeichnungen der europäischen Patentanmeldung weisen folgende Mängel auf:
Einige/Die Zeichnungen
(b) weisen Umrahmungen um die benutzbare/benutzte Fläche auf (R. 46 (1) EPÜ).
(c) sind nicht in schwarzen, in sich gleichmässig starken und klaren Linien oder Strichen ohne Farben oder Tönungen ausgeführt (R. 46 (2) a) EPÜ).
(d) sind nicht so ausgeführt, dass eine fotografische Wiedergabe auch bei Verkleinerung auf zwei Drittel alle Einzelheiten noch ohne Schwierigkeiten erkennen lässt (R. 46 (2) c) EPÜ).
(e) enthalten Zahlen, Buchstaben und/oder Bezugszeichen, die nicht einfach und eindeutig sind (R. 46 (2) d) EPÜ)."

III. Für die Beseitigung der Mängel wurde eine Frist von zwei Monaten gesetzt. Innerhalb dieser Frist, am 25. November 2015, ist eine Stellungnahme seitens der Anmelder eingegangen. Als Anlage wurden neue Figuren 1 bis 5 und Korrekturen der Bezugszeichen auf den Beschreibungsseiten 15 bis 18 eingereicht.

IV. Mit einer Formularmitteilung (EPA Form 1120 12.09) vom 4. Dezember 2015 hat die Eingangsstelle mitgeteilt, dass die mit Eingabe der Anmelder vom 25. November 2015 eingereichten Unterlagen nicht mit den bisherigen Anmeldungsunterlagen übereinstimmten. Den Anmeldern wurde die Möglichkeit gegeben, innerhalb einer Frist von zwei Monaten Unterlagen einzureichen, die gegenüber den ursprünglichen Anmeldungsunterlagen nur insoweit zu ändern seien, als es zur Mängelbeseitigung laut Bescheid der Eingangsstelle vom 28. September 2015 erforderlich sei. Innerhalb dieser Frist ist keine Stellungnahme seitens der Anmelder eingegangen.

V. Mit Formularentscheidung (EPA Form 1088 08.10) vom 29. März 2016 hat die Eingangsstelle die europäische Patentanmeldung nach Artikel 90 (5) EPÜ mit folgendem Wortlaut zurückgewiesen:

"Der von der Eingangsstelle in EPA Form 1050C festgestellte Mangel ist nicht rechtzeitig bzw. nicht ordnungsgemäß beseitigt worden.
Er betrifft: Form der Anmeldungs- bzw. Ersatzunterlagen.
Weitere Angaben zu dem noch bestehenden Mangel:
Rechtsmittelbelehrung..."

T 1457/13 - Proof technical effect in opposition

Key points

• This opposition appeal decision is interesting, in that the Boards considers the technical effect of one of the distinguishing features (of claim 1 as granted) to be not proven, because the comparative experiments differ by more than the distinguishing feature of the claim. 
• Accordingly, the Board implicitly gave the patent proprietor rather than the opponent the burden of proof of showing that the invoked technical effect was indeed provided by the distinguishing feature of claim 1 as granted (the patent as granted did not demonstrate this).

EPO T 1457/13 -  link

1.2 Technical problem

1.2.1 Claim 1 of the main request requires that the amount of vinyl group on the polyethylene be at least 0.2 vinyl groups /1000 carbon atoms. According to paragraph 19 of the description, the vinyl groups are usually attributed to a polymer termination reaction after an ethylene insertion. It is concluded from that passage that the presence of vinyl groups on the polyethylene results from a common reaction in the course of polymerization and that it is not specific to the polymerization process used in the patent in suit. Also, the description does not provide any further teaching relating to the effect that feature might have on the properties of the polyethylene produced. The amount in vinyl groups on the polyethylenes produced in example 1 (1.3 vinyl groups /1000 carbon atoms) and comparative example 1 (0.12 vinyl groups /1000 carbon atoms) are reported in Table 1. The polyethylene compositions of these two examples are however different polymeric compositions altogether since the polyethylene composition of example 1 is produced from ethylene and 1-hexene and that of comparative example 1 is produced from ethylene and 1-butene. It is therefore not possible to establish with certainty whether any improvement in the properties of the composition of example 1, which is according to claim 1 of the main request, results from the specific amount of vinyl groups of the polyethylene or from the different monomer used in the preparation of the polyethylene composition. According to the established case law of the Boards of Appeal, for a comparative test to demonstrate an inventive step with an improved effect over a claimed area, the nature of the comparison with the closest state of the art must be such that the effect is convincingly shown to have its origin in the distinguishing feature of the invention. For this purpose it may be necessary to modify the elements of comparison so that they differ only by such a distinguishing feature (see T 197/86, point 6.1.3, OJ EPO, 1989, 371). Since the patent in suit did not offer a fair comparison and since the appellant did not provide it either, no effect can be attributed to the choice of an amount in vinyl groups on the polyethylene of at least 0.2 vinyl groups /1000 carbon atoms.

T 1768/11 - Decision state of file

Key points

• In this case, the Examining Division had raised new issues in the summons for oral proceedings. Instead of replying, the applicant requested a refusal decision according to the state of the file. Only with the appeal did he file claim requests addressing the issues raised in the summons. Such requests are as a rule, inadmissible under Article 12(4) EPC. The Board exceptionally admits them because they present the Board with no difficulties (in rejecting the claims under Article 84 EPC).
• The appeal was admissible, even if the applicant did not comment on one independent claim, which he had apparently overlooked. 

Reasons for the Decision

1. Admissibility of the appeal

1.1 According to Rule 99(2) EPC, the statement of grounds of appeal is to indicate the reasons for setting aside the decision impugned. If this requirement is not complied with before expiry of the time limit for filing the statement of grounds of appeal, the appeal is to be rejected as inadmissible (Rule 101(1) EPC). For the statement of grounds of appeal to comply with Rule 99(2) EPC, it should address in sufficient detail each of the grounds for the decision (see decision T 305/11 of 26 April 2016, reasons 1.1, and the decisions cited there). In principle, a ground for refusal can be addressed by arguing why the objection raised was incorrect or by amending the application and explaining why the objection is no longer relevant.

T 2377/13 - Appeal inadmissible

Key points

• The appeal of the prorpietor in this opposition appeal is not admissible, because he does not explain in the Statement of grounds why the decision of the Opposition Division is incorrect in finding that the technical effect is  not sufficiently demonstrated. Rule 99 EPC requires that the appellant comments on the reasons of the impugned decision.
• The patent proprietor did not attend the oral proceedings and announced so only two days in advance. A cost order is nevertheless not given, because the oral proceedings were not cancelled. The Board considers it the duty of any diligent representative to attend the oral proceedings, even if the preliminary opinion is favourable and the other party does not attend.

EPO T 2377/13 -  link

Motifs de la décision

1. Recevabilité du recours

1.1 La recevabilité du recours est contestée par l'intimée 1 dans sa réponse au mémoire de recours, arguant que le le contenu du mémoire de recours exposant les motifs du recours ne remplissait pas les conditions de la Règle 99(2) CBE.

1.1.1 Dans sa décision, la division d'opposition avait considéré que D7, qui était également le choix de la requérante au cours de la procédure d'opposition, constituait l'état de la technique le plus proche.

T 2117/11 - Devolutive effect

Key points

• Before the Examining Division, the applicant had restricted the claims to a first invention, after an objection of lack of unity of invention, both claims having been searched. The refusal and the claims as filed with the Statement of grounds relate to that first invention. After the preliminary opinion of the Board, the applicant replaces the claims by claims directed to the second invention.
• The Board observes that it could refuse to admit the new claims under Article 12(2) RPBA, but adds that the " main obstacle to the admissibility of said requests, in the present case, rather results from the consequences of the devolutive effect associated with the filing of an appeal" 
• The Board then states that "The devolutive effect of the appeal extends only to the part of the impugned decision which is indicated in the statement of grounds for appeal and actually challenged by the appeal (cf. [T 1382/08]). This means that only those issues that were considered and decided upon in the decision can later on be challenged in appeal proceedings."
•  The Board then reasons that the impugned decision did not deal with the second invention, so that it can not be introduced in appeal.
• As a comment, T 1382/08 is about a not appealed part of a decision, namely about the refund of the paid additional search fee. Only the decision on the deemed withdrawal was appealed. This limits the scope of the appeal (Rule 99).
• As a further comment, the main rule of the "devolutive effect"  means that the Board is competent to decide on all issues of the application / patent (CLBA, IV.E.1.2). E.g., if an application was refused only for lack of clarity, the Board can also examine and refuse the application for lack of novelty. 
• My analysis is that the Board could have refused to admit the request quite simply under Rule 137(3) EPC, exercising the power of the ED (Article 111(1) EPC),  and applying the rule of G 2/92 , namely that only one invention is examined (see e.g. T 0736/14). 

EPO T 2117/11 - link

Reasons for the Decision

1. Admissibility of the appeal

The appeal meets the requirements of Articles 106 to 108 EPC and Rule 99 EPC. It is thus admissible.

2. Admissibility of the main and auxiliary requests

2.1 With the statement of grounds, an amended set of claims was filed to replace the set of claims underlying the impugned decision. These amended claims, as well as the claims underlying the impugned decision, were limited to a needle assembly. In the statement of grounds, the appellant took issue with the reasoning of the examining division as it resulted, more specifically, from the communication of 1 October 2010. The appellant, hence, neither filed a request for claims directed to a method, nor commented on the objection of unity which had been raised earlier in the course of the examination proceedings and had eventually led to his opting for claims limited to the needle assembly.

T 1349/13 - Preparing for not yet admitted documents

Key points

• The Board admits D6, filed by the opponent with its Statement of grounds, because it is a reaction to the 2nd Aux. Req. That request was admitted by the OD, even if it was filed by the proprietor two months before the oral proceedings, " in spite of the amended feature of claim 1 []  having been taken from the description, possibly relating to unsearched subject-matter as objected to by the opponent" 
• The Board does not remit the case, and does not admit further auxiliary requests filed after the summons for oral proceedings, even if they are in reaction to D6, because D6 was on the table since the Statement of grounds.
• " Furthermore, since D6 was filed together with the opponent's statement of grounds of appeal, the patentee had ample opportunity, and even the obligation under Article 12(2) RPBA, to examine D6 and present its complete case with its reply to the statement of grounds of appeal without awaiting the board's decision concerning the admission of D6 into the proceedings."

EPO T 1349/13 - link

3. Second auxiliary request

3.1 Admissibility of D6

Document D6 was filed by the opponent together with its statement of grounds of appeal.

3.1.1 The board is of the view that D6 is to be admitted into the proceedings for the following reasons:

(a) The filing of D6 by the opponent is to be considered as an allowable reaction to the patentee's filing of the present second auxiliary request two months before the first-instance oral proceedings. Indeed, claim 1 of the second auxiliary request was admitted into the proceedings by the opposition division in spite of the amended feature of claim 1 relating to the spray pump actuator including an output trigger signal and having been taken from the description, possibly relating to unsearched subject-matter as objected to by the opponent.

(b) D6 is sufficiently relevant to the case at stake. In particular, figure 1 of D6 and the corresponding description disclose details about how the spray actuator, the illumination source and the camera are connected and/or synchronized.

3.1.2 The patentee argued that D6 was late-filed and was technically not relevant enough to the case at stake. The filing of the second auxiliary request did not justify the filing of D6 because D6 did not disclose any of the newly claimed features, i.e. D6 did neither disclose a signal that triggered a camera, nor a spray pump actuator, nor a spray pump.

The board does not consider the filing of D6 as being late because the facts of the case were changed substantially by the patentee's filing of the second auxiliary request shortly before the first-instance oral proceedings. It is not reasonable to expect the opponent to file D6 earlier than with the statement of grounds of appeal. Concerning the technical relevance of D6, the board is satisfied that D6 discloses a method of spray data acquisition comprising aspects relating to the synchronization of the spray injector, the laser light source controller and the imaging camera. It is not necessary for D6 to disclose these features explicitly for D6 to be regarded as sufficiently relevant to justify its admittance into the proceedings.

3.2 Remittal to the first instance

During oral proceedings, the patentee reiterated its request, already filed with its letter of 30 December 2013, that the case be remitted to the department of first instance. The reasons for its request were that D6 was only admitted into the proceedings on the day of the oral proceedings before the board of appeal and that, according to the case law of the boards of appeal, it had the right to have its case examined by two instances.

The opponent requested not to remit the case to the department of first instance for the reasons that there was no absolute right to two instances and that the examination of the present application had lasted already more than 17 years.

First of all, the board, referring to the "Case Law of the Boards of Appeal" (8th edition 2016), pages 1170 and 1171, is of the opinion that there is no absolute right of a party to have each issue considered by two instances. In the circumstances of the present case, D6 cannot be considered late-filed but must be seen as an allowable reaction to the admission by the opposition division of the patentee's second auxiliary request into the proceedings (see point 3.1 above). Furthermore, since D6 was filed together with the opponent's statement of grounds of appeal, the patentee had ample opportunity, and even the obligation under Article 12(2) RPBA, to examine D6 and present its complete case with its reply to the statement of grounds of appeal without awaiting the board's decision concerning the admission of D6 into the proceedings. Considering the overall length of the present proceedings, the need for procedural efficiency, the balance of interests of both parties and that of the public and the lack of specific reasons for remittal, the board exercised its discretion in not remitting the case.

3.3 Novelty

The claimed subject-matter is anticipated by the disclosure of D6 (Article 54 (1) and (2) EPC 1973).

[] 3.3.2 Counter-arguments of the patentee

[] It follows that the counter-arguments of the patentee in favour of novelty of the claimed subject-matter are not found convincing by the board.

4. Third and fourth auxiliary requests

4.1 Following the opponent's request not to admit the third and fourth auxiliary requests into the proceedings and taking into account the arguments of both parties, the board decides not to admit the third and fourth auxiliary requests into the proceedings under Article 12(2) and 13(3) RPBA for the following reasons:

(a) As a rule of principle, according to Article 12(2) RPBA, the parties must present their complete case at the beginning of the appeal proceedings. D6 was filed by the opponent with its statement of grounds of appeal. The patentee, in its letter of response of 30 December 2013, however, did not file any amendments to its claim requests in order to overcome possible objections based on D6, contrary to the requirements of Article 12(2) RPBA.

(b) The third and fourth auxiliary requests were filed after oral proceedings had been arranged. According to Article 13(3) RPBA, such requests shall not be admitted if they raise issues which the board or the other party cannot reasonably be expected to deal with without adjournment of the oral proceedings. In the present case, claim 1 was amended by introducing features taken from the description for limiting the claim's scope. Having been taken from the description, it is doubtful whether these features were searched by the EPO. The opponent explained convincingly that it had not had sufficient time to carry out a thorough search concerning the newly added features. Therefore, if the third or fourth auxiliary requests were admitted into the proceedings, an adjournment of the oral proceedings or a remittal of the case to the department of first instance would be necessary. In the board's view, this would be contrary to the wording and the spirit of Article 13(3) RPBA.

(c) No substantial change of the facts of the case occurred since the opponent's filing of D6, which possibly could have justified the filing of the third or fourth auxiliary request only one month before the oral proceedings before the board. In particular, the patentee cannot await the board's preliminary opinion or decision on the admittance of D6 into the proceedings before filing amendments intended to overcome objections based on D6 in case of its admittance. Moreover, except for minor clarifications of the initial arguments which were filed in writing by the opponent together with its statement of grounds of appeal, no substantial change of argumentation concerning the novelty objection in view of D6 was brought forward by the opponent or the board since the opponent's filing of D6.

For the above reasons, the board decides not to admit the third and fourth auxiliary requests into the proceedings.

4.2 Counter-arguments of the patentee

(a) The patentee argued that not admitting the third or fourth auxiliary request into the proceedings while having admitted D6 into the proceedings would be unfair. Acting this way would not preserve the balance of rights between the patentee and the opponent.

The board is of the view that this argument of balance of rights would presuppose that the patentee would have filed its amendments directly in response to the opponent's statement of grounds comprising D6, within the time limit set by the Office or at least sufficiently early before issuance of the summons to oral proceedings, so that the opponent and the board would have had time to examine the amendments. The patentee, however, did not avail itself of this opportunity, contrary to the requirements defined in Article 12(2) RPBA.

(b) The patentee further argued that, during oral proceedings, the opponent presented new arguments against novelty of claim 1 of the second auxiliary request in view of D6. The patentee learned only during oral proceedings how the opponent and the board exactly interpreted the disclosure of D6. In particular, the opponent amended its initial argumentation of lack of novelty (see the bottom of page 10 of the opponent's statement of grounds) concerning the definition of the "injection controller" of D6. Moreover, the opponent, in its statement of grounds, did not explain at all why D6 anticipated the "spray pump" of claim 1.

The board acknowledges that the debate on novelty of claim 1 of the second auxiliary request with respect to D6 was more extensive during oral proceedings than initially presented in writing in the opponent's statement of grounds. However, the board is of the view that the opponent did not amend its argumentation so extensively as to fundamentally change its case. In particular, the explanation provided by the opponent for the first time during oral proceedings that the "spray pump" was implicitly disclosed in D6 due to the use of a "high pressure fuel spray" (see the title of D6), cannot be considered to be unexpected so that it would justify admitting new auxiliary requests. The further passages and figures of D6, used by the opponent in its oral argumentation of lack of novelty, remained substantially the same as those used in its written argumentation.

(c) The patentee filed the third and fourth auxiliary requests as soon as it understood that there might be a chance that D6 would be admitted into the proceedings. There was no reason for the patentee to file amendments before knowing that D6 was effectively admitted into the proceedings.

The board does not agree with the patentee's argument because Article 12(2) RPBA requires the parties to present their complete case in their statement of grounds of appeal and in the reply to the other party's statement of grounds. This includes, if the patentee so wishes, the filing of auxiliary requests at this early stage of the appeal proceedings in order for the patentee to be prepared for the situation where documents, such as D6, would be admitted into the proceedings at a later stage.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

T 2602/12 - Full case should be in notice of opposition

Key points

• The opponent raised a new inventive step attack during the oral proceedings against an embodiment previously not attacked for lack of inventive step. The Board does not admit this argument under Article 13(1) RPBA.
• The Board:" Article 99(1) and Rule 76(c) EPC require that as a general rule an opponent's case against an opposed patent should be set out fully and completely in the notice of opposition, and should not be presented and developed piecemeal. " 

EPO T 2602/12 -  link

5. Inventive step

5.1 In the oral proceedings before the Board, the Respondent [opponent] objected for the first time in opposition-appeal proceedings to the inventiveness of the subject-matter of the present main request, namely to the embodiment of the method comprising process step (i) according to granted claim 1. In the communication of the Board accompanying the summons to oral proceedings (see point VI above), the Board expressly indicated that the inventiveness of the method comprising process step (i) had not been contested.

5.2 Article 99(1) and Rule 76(c) EPC require that as a general rule an opponent's case against an opposed patent should be set out fully and completely in the notice of opposition, and should not be presented and developed piecemeal. In addition, according to Article 12(2) RPBA, the statement of grounds of appeal and reply shall contain a party's complete case and should specify expressly all the facts, arguments and evidence relied on. Any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the Board's discretion (Article 13(1) RPBA).

5.3 In the present case, prior to the oral proceedings before the Board, the Respondent had never raised any objection under Article 56 EPC to the subject-matter of the present main request, either before the Opposition Division or before the Board, said subject-matter being an embodiment of granted claim 1 and being comprised in claim 1 of every request ever on file in this case. Allowing the Respondent to raise an inventive step argument against an embodiment of the method never previously attacked under Article 56 EPC at this late stage of the proceedings would raise issues which the Board and the Appellant could not reasonably be expected to deal with without adjournment of the oral proceedings (Article 13(3) RPBA).

5.4 As reason for this late submission, the Respondent argued that until the oral proceedings before the Board, it had been sufficient to attack the methods comprising process steps (ii) or (iii) in order to destroy the patent.

However, together with its statement of grounds of appeal (see point V above), the Appellant filed inter alia auxiliary requests 4 to 7, wherein the subject-matter of claim 1 of each request was restricted to a method comprising process step (i) according to granted claim 1, such that at the latest at this stage of the proceedings, the Respondent could, and should have attacked this subject-matter under Article 56 EPC, had it so wished.

5.5 Thus, under the present circumstances, the Board exercises its discretion not to admit the late filed argument into the appeal proceedings.

5.6 In view of the prior art cited in these proceedings, the Board sees no reason to raise its own objections under Article 114(1) EPC against the inventive step of the claimed subject-matter, such that the patent may be maintained in this amended form.

T 0145/13 - Rule 137(5) is not for non-searched claims

Key points

• In this examination appeal, the ED did not admit under Rule 137(5) EPC a request wherein claim 1 was amended to include the feature of claim 30 as pending when the supplementary European search report was established, because that claim 30 was directed to a fifth invention and no additional search fee was paid for that claim.
• However, Rule 137(5) requires that subject-matter is unsearched subject-matter and does not combine with parts of the originally claimed invention to form a single general inventive concept. Therefore, Rule 137(5) EPC does not apply. 
• As a comment, the Guidelines expressly say so in H-II. 7.2: " Rule 137(5) cannot be invoked. It does not apply when the applicant has not paid the search fee in respect of a non-unitary invention relating to the originally filed claims."
• Rather, Rule 164(2) (in the applicable version) should have been applied. " It is the intention of the second alternative of Rule 164(2) EPC to prevent the applicant from switching during the grant proceedings from searched subject-matter to ­subject-matter which had originally been claimed but not searched due to non-payment of the additional search fee (see T 442/11).
• As a note, Rule 164 does not spell out the consequence of not paying the additional search fee, in the applicable version it just mentioned that an invitation is issued to restrict the application. The actual legal basis for not admitting the request is G 2/92 and Rule 137(3) EPC (edit 07.10.2017: Rule 137(3) is not relevant, the claim is still to be refused even if filed in time under Rule 137(3) EPC). 
• The Board reviews whether the finding of lack of unity of invention in the ESR was correct. The ED based on a posteriori lack of unity in view of D1, but the cited paragraph of D1 is " merely an outlook on various possible future developments"  and does not provide an enabling disclosure. Therefore, it can not support the alleged lack of unity of invention. Claim 30 should have been searched and the request is admitted.. 

Reasons for the Decision

1. Main request

1.1 Rule 137(5) EPC

1.1.1 The claims of the main request are those of the first auxiliary request before the examining division. In the decision, the division held that this request was not accepted into the procedure for violation of Rule 137(5) EPC, because the features "adaptive cruise control", "collision warning or avoidance", "exterior light control imaging", "blind spot warning" and "night vision" of claim 1 of this request formerly constituted the fifth and unsearched invention as identified in the supplementary European search report (see point 5 of the decision).

T 0556/13 - Still admitting request in appeal

Key points

• The Board decides to admit a request that was not admitted by the OD and was resubmitted with the Statement of grounds. Upon review of the way the OD had exercised its discretion to not admit the late filed request, the Board sees no reason for overruling the OD. 
• However, because the request was resubmitted with the appeal, the Board decides that it has under Article 12(4) RPBA " its own discretionary power to hold auxiliary request 1 inadmissible" .
• The Board refers to the line in the case law that the Board should only review the excerise of the discretion of the OD and comments taht " [i]n the board's view, this jurisprudence is not to be understood as meaning that the discretion conferred on the boards of appeal under Article 12(4) RPBA is limited to such an extent that the board must generally hold inadmissible a request which had not been admitted into the proceedings by the opposition division by a correct discretionary decision []. Rather, the present board recalls that the board's power under Article 12(4) RPBA is a discretionary one, and in these cases, too, it must be exercised as such. According to established jurisprudence, discretion has to be exercised equitably, i.e. all relevant factors which arise in a case have to be considered, taking into account the particular circumstances of the case"

EPO T 0556/13 - link

2. Auxiliary request 1

2.1 Admission into the appeal proceedings (Article 12(4) RPBA)

2.1.1 Under Article 12(1) and (4) RPBA, the board has to take into account everything presented by the parties, inter alia in the notice of appeal, the statement of grounds of appeal and any written reply of the other party or parties, if and to the extent that it relates to the case under appeal and meets the requirements set out in Article 12(2) RPBA. The board, however, has the power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings.

[]2.1.3 The present auxiliary request 1 had already been filed as auxiliary request 1 during the first-instance oral proceedings. The opposition division considered this auxiliary request to be late-filed and did not admit it into the first-instance proceedings.

T 1710/11 - Not the required constructive approach

Key points

• In this examination appeal, the application was refused for lack of clarity, with obiter comments that claim 1 did not involve an inventive step.
• The Board notes that "this approach  [not basing the refusal on lack of inventive step, but only on clarity] does not appear to be in line with the "constructive and helpful" attitude that the Guidelines require the examiner to adopt ". The Board observes that it could have remitted the case after finding that the clarity issues were resolved. " Such potential ping-ponging of the application would of course negatively impact the overall procedural economy of the application and may be avoided if all reasons for refusal were to be included in the contested decision." 

Summary of Facts and Submissions

I. The appeal lies against the decision of the Examining Division refusing the European application no. 06 727 684.0 for failure to comply with the requirements of Article 84 EPC 1973, Article 83 EPC 1973 and Article 123(2) EPC. In an obiter dictum the Examining Division indicated that, in its opinion, the subject-matter of claim 1 did not involve an inventive step. []

Reasons for the Decision

[] 2.11 For these reasons, the subject-matter of claim 1 does not involve an inventive step (Article 56 EPC). []

4. The Board appreciates that only one reason is required to refuse an application and that, in the present case, the numerous clarity objections set out in the contested decision more than sufficed for this purpose. Nevertheless, the Board has some sympathy for the Appellant's view that the insistence of the Examining Division that the clarity issues should be dealt with before a definitive assessment of inventive step could be undertaken, led to a procedure which - at least for the Applicant - was rather inefficient.

As may be seen from the obiter dictum of the contested decision, the Examining Division understood the claimed subject-matter sufficiently to be "convinced that the idea of placing the A/D converter in the patient table does not comprise an inventive step". However, the Examining Division held that "a final decision on [novelty and inventive step] can properly be taken only after the scope of the claims has been clarified". In the knowledge that the subject-matter of the "unclear" claim was not inventive, it does indeed appear to be somewhat inefficient to issue a decision which gives lack of clarity - but not a lack of inventive step - as a reason for refusal, thus forcing the Appellant to address each of the clarity objections before being able to challenge the inevitable inventive step objection. This approach does not appear to be in line with the "constructive and helpful" attitude that the Guidelines require the examiner to adopt (C-I,2). In the present case, the Board decided to deal with the question of inventive step itself, thus concentrating on the issue which ultimately sealed the fate of the application. But it was equally possible that the Board, once satisfied that the claimed subject-matter would meet the requirements of Article 84 EPC 1973 and Article 123(2) EPC, could have chosen to remit the case to the Examining Division for a decision on this issue in order to give the Appellant the benefit of two instances. Such potential ping-ponging of the application would of course negatively impact the overall procedural economy of the application and may be avoided if all reasons for refusal were to be included in the contested decision.

Order

For these reasons it is decided that:

The appeal is dismissed.

T 1872/11 - Proprietor is also opponent

Key points

• In this opposition appeal, patent proprietor is a company, files an appeal against revocation of the patent, and is then taken over by the opponent. This does not affect admissibility of the appeal.
• Moreover, the admissibility is neither effected by an assignment of the patent, because that assignment was to another company, because that assignment was filed with the EPO only the day after the filing of the appeal. Only after that the filing of the assignment, the new company was the proprietor, as far as the EPO was concerned (Rule 22(3) EPC). 

Reasons for the Decision

Admissibility of the appeal

1. The former respondent-opponent 02 challenged the admissibility of the appeal: first upon the basis that the wrong party was named as the appellant in both the notice and statement of grounds of appeal; and second upon the basis that the current proprietor and appellant is a former opponent and hence cannot be adversely affected by the decision under appeal. These issues were taken up by the board in a communication.

Wrong party as appellant

2. The board notes that the notice and grounds of appeal were filed on time, the grounds of appeal being filed on 8 November 2011, the last day for doing so. At the time of filing of the above, the EPO's records showed that the proprietor of the patent was Royal Nedalco BV.

One day later, on 9 November 2011, an assignment of the patent in suit from Royal Nedalco BV to C5 Yeast Company BV was filed with the EPO (document D53). On the same day the fee for registering the transfer was paid.

Rules 22 and 85 EPC govern the registration of such transfers - see also Rule 100(1) EPC and T 128/10 of 10 December 2010. These rules also apply during appeals. Rule 22(3) EPC provides that such transfers shall have effect vis-à-vis the EPO only at the date when and to the extent that the documents referred to in Rule 22(1) EPC have been produced. These documents were produced on 9 November 2011, hence it is from 9 November 2011 that the EPO is to consider C5 Yeast Company BV as the owner of the patent. Prior to this date the owner was Royal Nedalco BV as far as the EPO was concerned. The board therefore concludes that the appellant was correctly named in both the notice and grounds of appeal (cf. T 128/10, supra, point 3 for application of Rule 22 EPC).

Adversely affected

3. The board notes that the EPO's records show that DSM IP Assets BV, the former opponent 01, is now the proprietor of the patent and the appellant in this case.

The former respondent-opponent 02 argued that the appellant is not adversely affected by the opposition division's decision, and hence, under Article 107 EPC is not entitled to appeal as the appellant can be considered to be the opponent, who is clearly not adversely affected by the opposition division's decision.

The board is unable to find any support in the EPC or the case law of the boards for such an interpretation of "adversely affected" under Article 107 EPC. C5 Yeast Company BV, (and its predecessor in title), was the proprietor of the patent in suit, and hence, adversely affected by the opposition division's decision. DSM IP Assets BV, a former opponent, is now the owner of the patent and is also adversely affected by this decision. Such changes of position are an entirely normal and unobjectionable aspect of commercial life.

4. All other formalities having been complied with, the board therefore finds the appeal to be admissible.