T 0592/13 - Board introduces document

Key points

• In this examination appeal, the Board introduces D6 of own motion, two months before the oral proceedings. The Board finds the claims to be obvious in view of D6 and common general knowledge. D6 was cited earlier for a parallel application of the same applicant, with the same filing date and description. The Board refuses the (main) request for remittal of the case, because D6 must already have been known to the applicant. 
" It is thus clear, in the board's view, that the appellant, or at least its representative, was aware of the existence and pertinence of D6 with respect to the subject-matter of the present application long before the board issued its communication."

EPO T 0592/13 -  link

Reasons for the Decision

3. Main request

3.1 This procedural request is directed to setting aside the decision under appeal and to remitting the case to the examining division for further prosecution.

3.2 The appellant argued that the communication under Article 15(1) RPBA contained no comments on the merits of the decision under appeal, or on its submission in the statement setting out the grounds of appeal, but instead raised new objections based on newly cited document D6. The appellant further argued that it had received the above-mentioned communication on 15 March 2017, so that less than three weeks had been available to report the communication to the applicant, study the documents, formulate a response for the applicant and file written submissions one month in advance of the hearing. Therefore, a remittal would provide the appellant with first-instance examination based on newly cited document D6, and, if needed, appeal at second instance, in accordance with the principles of G 0009/91.

3.3 The board would first point out that the findings of G 0009/91 apply to opposition proceedings only. Rather, G 0010/93 has confirmed that, in an appeal from a decision of an examining division refusing a European patent application, the board of appeal has the power to examine whether the application meets requirements of the EPC that the examining division did not take into consideration. In the present case the board considered while studying the appeal that document D6 was much more relevant to the issue of inventive step than the other documents, in particular D1 and D2, used by the examining division in its Article 56 EPC objection which led to the refusal of the application.

Further, it is important to note that document D6 was cited during the prosecution of European patent application Nr. 07115471.0 filed by the same applicant, on the same date, and which comprised the same description and drawings as the present application. Also the representative throughout the prosecution of this application was the same as in the present case.

D6 had been cited as an "X" document in the search report for application 07115471, issued in the same month (April 2008) as the search report for the present application, and was the basis for an inventive-step objection. It is thus clear, in the board's view, that the appellant, or at least its representative, was aware of the existence and pertinence of D6 with respect to the subject-matter of the present application long before the board issued its communication.

Nor did the appellant request a postponement of the oral proceedings, which could have given it the time it says it needed to study the document. It also decided not to attend the oral proceedings on 11 May 2017 which would have given it a further opportunity to present its case. In addition, the level of technical complexity of both the present application and document D6 is such that seven weeks before oral proceedings seems a reasonable amount of time for a technical study of the case. This is corroborated by the fact that the appellant provided a thorough analysis of D6 with respect to the first and second auxiliary requests in response to the board's communication.

For these reasons, the board judges that a remittal to the examining division is not appropriate in the present case and decides not to allow the appellant's main request.

4. First auxiliary request

D6 discloses in column 6, lines 17 to 45 a method for enabling input on a handheld electronic device with a reduced keyboard (see Figure 1A) wherein, after a user has entered initial characters, i.e. a text object, on the display using prior-art techniques, the device displays candidate words matching the initial characters, i.e. proposed completions of the text object. As an example, D6 describes that if the user has entered the letters "PLE" in the display, a dictionary look-up routine may display the word "PLEASE", "PLEAD, and "PLEDGE" on a portion of the display (see Figure 4).

The differences between the subject-matter of claim 1 and the disclosure of D6 are thus that:

a) the prior-art technique for entering the initial letters is explicitly defined as being a disambiguation scheme of ambiguous input, outputting a list comprising a number of disambiguated interpretations, and

b) the device does not display a list of proposed completions when the last input of the user is at a location disposed elsewhere than at the terminal end of the displayed text object.

Features a) and b) are juxtaposed in the claim since the trigger for displaying a completion list defined in feature b) does not depend on the kind of prior-art technique used for entering the text object.

As to feature a), it is a common measure in the field of hand-held devices with reduced keyboards, such as the one shown in Figure 1A of D6, to use the so-called T9 disambiguation scheme illustrated in D4 (see the abstract). The skilled person would thus obviously consider using the T9 scheme as a technique for entering the text object.

[...] Therefore, the board holds that feature b) represents a mere alternative providing advantages and drawbacks mainly based on the user's preferences and thus with no inventive merit in itself.

For these reasons the board judges that the subject-matter of claim 1 does not involve an inventive step, having regard to the disclosure of D6 and common general knowledge, as exemplified by D4 (Article 56 EPC).

T 2144/14 - 13 years examination, only clarity

Key points

• After 13 years of examination, only clarity was decided and the case is remitted for examination of novelty and inventive step. 
• The international filing date is 8 July 2002, request for entry in January 2004, supplementary search results in 2006. Communication in 2007, a response. Next action, summons in 2013.
• "  The decision under appeal considered only Article 84 EPC, clarity and support in the description. "  "[The] examining division has yet to consider, inter alia, novelty (Article 54 EPC) and inventive step (Article 56 EPC), which may require considerable investigative effort." 

EPO T 2144/14 -  link

Reasons for the Decision

4. Remittal

4.1 The decision under appeal considered only Article 84 EPC, clarity and support in the description. In the interests of overall procedural economy, the Board has also considered the issue of added subject matter, Article 123(2) EPC.

4.2 However, other issues have yet to be examined. In particular, the examining division has yet to consider, inter alia, novelty (Article 54 EPC) and inventive step (Article 56 EPC), which may require considerable investigative effort.

In view of this and in order to allow the appellant consideration of the remaining issues before the first instance, the Board considers it appropriate to exercise its discretion under Article 111(1) EPC by remitting the case to the department of first instance for further prosecution on the basis of claims 1 to 13 of the main request.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

T 0725/11 - Industry journal article as CPA

Key points

• The Board decides that a claim for essentially a tablet with  combination of two active ingredients for HIV therapy, was obvious over an announcement of patentee of a clinical trial of that combination therapy in D24, an article in the industrial journal "BioWorld® Today." 
• The patentee argued that D24 did not form the closest prior as " D24 was silent on important issues such as efficacy. Also [D24] provided no actual technical information". 
• The Board does not agree. " D24 is a public statement of intent made by Gilead's CEO and its executive vice president of research and development. It therefore carries weight and would not be dismissed by the skilled person as mere speculation. Instead, a skilled person would regard this plan of co-formulating FTC and TDF as a promising approach." 
• The Board finds the claimed formulation to be obvious. " Any effects related to synergy are inherent to the two active ingredients used in the co-formulation and thus already covered by the disclosure of the two specific active agents to be combined, TDF and FTC, in the closest prior art [D24]."

EPO T 0725/11 -  link

Reasons for the Decision

1. The appeal is admissible.

Oral proceedings were held and the proceedings were continued in the absence of the duly summoned respondent 2 in accordance with Article 15(3) RPBA and Rule 115(2) EPC.

The main request and auxiliary requests 1 and 5 are admitted into the proceedings. Compared to the corresponding requests previously on file they contain minor amendments in the dependent claims that do not raise any new issues (Article 13(3) RPBA).

2. Inventive step (Articles 52(1) and 56 EPC)

2.1 The present invention is directed to a pharmaceutical co-formulation in the form of a tablet comprising tenofovir disoproxil fumarate (TDF) and emtricitabine (FTC) for the treatment or prevention of the symptoms or effects of an HIV infection. The pharmaceutical composition should provide enhanced therapeutic safety and efficacy, impart lower resistance, and lead to higher patient compliance (see patent in suit, paragraph [0010]). Concerning the efficacy, synergy is mentioned (paragraphs [0003] and [0011]). It is intended to provide a "one pill, once daily" dosage regimen (paragraph [0054]). An important issue is the chemical stability of the composition (paragraph [0011]). In sum, a physically acceptable, chemically stable and effective composition is to be provided.

2.2 Closest prior art

Document (24) represents the closest prior art. Document (24) is an issue of BioWorld® Today. According to document (37), BioWorld® Today is read by biotechnology professionals (first complete paragraph). It publishes information that is researched and written by the top business and science reporters in industry (second complete paragraph).

T 1903/13 - Art 12(4) and not examined requests

EPO Headnote
It is within the board's discretion not to admit auxiliary requests which define subject-matter "diverging" from subject-matter of higher ranking requests, including those requests which, in essence, were filed during first-instance proceedings and re-filed with the respondent's reply, but were not examined by the first-instance department. See point 3.3 of the Reasons.

Key points

• In this case, the OD maintained the patent according to the second auxiliary request. The OD accordingly did not examine the third and further auxiliary requests then on file. The Board finds that the subject-matter of the claims as maintained by the OD is obvious. Hence, the Board has to decide of the further auxiliary requests, as these were re-filed with the appeal proceedings. The Board holds them inadmissible, even though they are not " requests which could have been presented or were not admitted in the first-instance proceedings" because the power of the Board to hold inadmissible requests, is not limited by Article 12(4) RPBA.
• The Board does not admit the requests because the "subject-matter of lower ranking requests which does not converge with the subject-matter of higher ranking requests by comprising features which restrict its scope within the line of development defined by the amendments of the higher ranking requests", applying T 1685/07 not only to requests filed after the summons (as in that case) but also to requests filed with the Statement of grounds.

EPO T 1903/13 - link

Reasons for the Decision

3. Second to fourth auxiliary requests

3.1 The second to fourth auxiliary requests were in essence already filed but not examined during first-instance opposition proceedings and re-filed during appeal proceedings by the patentee with the reply to the opponent's statement of grounds of appeal.

T 1852/16 - No response appeal

Key points

• In this case, only the opponent appealed. The proprietor did not file a response to the Statement of grounds of the opponent in due time (hence, not even oral proceedings were requested). The Board agrees with the opponent, and revokes the patent without further communication.
• The Statement of ground was filed 11.10.2016, the decision is issued 14.06.2017. 
• As a comment, the online file does not appear to contain an acknowledgement receipt of the invitation from the Board to the proprietor to file a reaction to the Statement of grounds, neither an advice of delivery.  

EPO T 1852/16 -  link

Entscheidungsgründe

1. Mit Schreiben vom 19. Oktober 2016 wurde der Beschwerdegegnerin die Beschwerdebegründung der Einsprechenden zugestellt. Für eine eventuelle Erwiderung hierauf wurde eine Frist von vier Monaten gesetzt. Die Beschwerdegegnerin gab hierzu keine Stellungnahme ab.

2. Gemäß Artikel 12(3) der Verfahrensordnung der Beschwerdekammern des Europäischen Patentamtes kann die Kammer - vorbehaltlich der Artikel 113 und 116 EPÜ - nach Ablauf der Erwiderungsfrist jederzeit über die Sache entscheiden. Da sich die Beschwerdegegnerin im Beschwerdeverfahren nicht geäußert hat und die Kammer sich dem Sachvortrag der Beschwerdeführerin in Bezug auf fehlender Neuheit (Artikel 52(1) und 54(2) EPÜ) gegenüber D4 anschließt (siehe unten), stehen die Bestimmungen der Artikel 113 (1) und 116 EPÜ einer Entscheidung in der Sache nicht entgegen.

T 0047/12 - Respondent's submissions

Key points

• In this opposition case, the respondent (opponent) referred in his response to the submissions made earlier before the opposition. The Board appears not pleased,  but of course can not hold the respondent's case inadmissible.
• " It cannot be left to the board or to the other parties to the proceedings to look for arguments, facts and evidence filed before the department of first instance and to speculate and assess which ones are maintained and of relevance for the requests put forward in appeal proceedings. [...] Since the respondent has only generally referred to a lack of novelty and inventive step without substantiating why it considered this to be the case, the board takes the respondent's arguments into account only insofar as it can deduce them from the decision under appeal." 

EPO T 0047/12 -  link

Reasons for the Decision

Respondent's submissions

1. In its reply to the appellant's statement of grounds of appeal, the respondent referred only to the submissions made at first instance (cf. point XII, above).

2. When examining the admissibility of an appeal, a statement of grounds of appeal referring generally to submissions made at first instance, as a rule, cannot be considered sufficient (cf. "Case Law of the Boards of Appeal of the EPO", 8th edition 2016, IV.E.2.6.4.a), page 1102). In the board's view, this applies equally to the submissions of other parties to the proceedings even if the decision underlying the appeal was in their favour. It cannot be left to the board or to the other parties to the proceedings to look for arguments, facts and evidence filed before the department of first instance and to speculate and assess which ones are maintained and of relevance for the requests put forward in appeal proceedings.

3. The new main request differs from both, the main and the auxiliary request underlying the decision under appeal. Since the respondent has only generally referred to a lack of novelty and inventive step without substantiating why it considered this to be the case, the board takes the respondent's arguments into account only insofar as it can deduce them from the decision under appeal.

T 0727/10 - Withdrawal opposition

Key points

• The Board applies established case law that in case the sole opponent and the proprietor both appeal, and the opponent withdraws both the opposition and the appeal, the appeal proceedings are continued. The former opponent is no longer party to the appeal (in respect of the substantive issues). 
• The Board carries out examination of own motion of the proprietor's requests. None are allowable and the appeal is dismissed. As a comment, the patent is accordingly maintained in amended form according to the impugned decision of the OD.

EPO T 0727/10 - link

Reasons for the Decision

1. The appeal is admissible.

2. Withdrawal of the appeal and of the opposition by the opponent

2.1 During appeal, the sole opponent withdrew both its opposition and its appeal. Hence the patent proprietor became the sole appellant and sole remaining party to the proceedings.

2.1.1 According to decision G 9/92 of the Enlarged Board of Appeal (OJ 1994, 875), if the patent proprietor is the sole appellant against an interlocutory decision maintaining a patent in amended form, the maintenance of the patent as amended in accordance with the interlocutory decision may not be challenged at appeal proceedings (prohibition of reformatio in peius).

2.1.2 As regards the withdrawal of the opposition by the opponent who is not the sole appellant, this does not affect the appeal proceedings, in so far as it is the principal task of the boards of appeal to review the decision under appeal on the basis of the appellant's requests. However, the withdrawal of an opposition by the respondent means that the respondent ceases to be party to the appeal proceedings in respect of the substantive issues (T 789/89, OJ 1994, 482). The board may nevertheless take into account the submissions and evidence filed by the former opponent before the opposition was withdrawn (T 629/90, OJ 1992, 654).

T 1777/12 - Suffiency for all the diseases

Key points

• The Board accepts sufficiency of disclosure of claim 1 for a compound for use in the treatment of a metabolic disorder selected from the group consisting of "obesity, diabetes mellitus, insulin resistance, insulin resistance syndrome (also known as Syndrome X), dyslipidemia, and cardiovascular disease".
• " It was common ground between the parties that the patent disclosed that [the compund] achieved a reduction of weight or weight gain in obese mice when administered at certain concentrations". However, " Obesity is only one of several therapeutic applications claimed []. The question is thus whether or not the patent discloses further evidence that [the compound] is a suitable therapeutic agent for all of them."
• The board finds it does. " Slowing weight gain down in obese or overweight patients - compared to such patients untreated for obesity - is already in itself a beneficial therapeutic effect in the therapy of obesity, and [] reduces the risk of these patients developing any of the obesity-associated disorders referred to in claims 1 and 10. Moreover, slower weight gain might also postpone the need to administer further disease-specific therapeutic agents, such as insulin in case of diabetes mellitus." " Accordingly, the board concludes that the disclosure in the patent demonstrates the suitability of [the compound] for achieving a beneficial effect in all of the claimed therapeutic applications by reducing weight or weight gain." 

EPO T 1777/12 -  link

Summary of Facts and Submissions

V. With its reply to the appellant's statements of grounds of appeal the patent proprietor (hereinafter the "respondent") submitted a main request - identical to auxiliary request 1aa underlying the impugned decision - and eleven auxiliary requests.

Claims 1, 4, 8, and 10 of the main request read:

"1. Use of a PYY agonist in the manufacture of a medicament for treating a metabolic disorder in an obese or overweight subject in need of said treating, wherein said treating comprises reducing weight or reducing weight gain, wherein the PYY agonist is to be administered peripherally to said subject in an amount therapeutically effective to reduce weight or reduce weight gain, wherein the PYY agonist is the peptide PYY[3-36] and wherein the metabolic disorder is selected from the group consisting of: obesity, diabetes mellitus, insulin resistance, insulin resistance syndrome (also known as Syndrome X), dyslipidemia, and cardiovascular disease.

Reasons for the Decision

[] Sufficiency of disclosure (Article 83 EPC)

6. Claims 1 and 10 are medical use claims. It is the established case law of the boards of appeal that for such claims to fulfil the requirements of Article 83 EPC the patent has to disclose the product's suitability to be manufactured for the therapeutic applications claimed. Clinical trials are not required to establish suitability. It may suffice that in vitro or in vivo data directly and unambiguously reflect the therapeutic effect on which the claimed therapeutic application relies or, alternatively, that there is an established relationship between the physiological activities of the compound under consideration and the disease in question (see Case Law of the Boards of Appeal, 8th edition 2016 (hereinafter "CLBA"), section II.C.6.2).

T 2175/16 - Wrong Examiner signing

Key points

• In this opposition appeal case, the decision of the OD was signed on the signature page by a different person than the three members participating in the oral proceedings. The Board does not accept this and sets aside the decision.
• " It is established case law that a signed written decision issued after oral proceedings should be taken by those members of the first instance who conducted the oral proceedings, and no-one else. This principle applies also if the division delivers a decision orally during those proceedings." 
• It is not relevant that the decision to revoke the patent announced orally at the end of the oral proceedings corresponds to the one issued in writing.

EPO T 2175/16 -  link

Reasons for the Decision

1. The appeal is admissible.

2. Oral proceedings before the opposition division took place on 21 June 2016. According to Form 2309.1 of the minutes of those proceedings, the member of the division acting as first examiner during them was S.H.

The same name (S.H.) appears in Form 3301 of the decision of the opposition division.

However, Form 2339, which bears the signatures of the members of the opposition division, is signed by a first examiner with the initials E.D.

T 0802/10 - Correction of errors in claims

Key points

• In this opposition, the claims as granted included the feature of " at least 900  mPa" , whereas at least 900 MPa was intended. The difference is only one billion (10^9). Yet, the error can not be corrected under G 1/10. 

EPO T 0802/10 - link




Reasons for the Decision

[] 4. Interpretation of the feature "a tensile modulus of at least 900 mPa"

In the patent in suit, including all claim requests on file, mPa ("millipascal") is indicated as the unit of the tensile modulus. However, for a skilled reader it is obvious that this information is erroneous and that the correct unit of the tensile modulus has to be MPa ("megapascal"), which can also be inferred from the reference to the ISO 527-2 standard in the patent specification.

However, the demand of appellant IV that this obvious error be corrected under Rule 140 EPC cannot be followed, since Rule 140 EPC is not available for correcting the text of a patent (cf. G 1/10, OJ EPO 2013, 194).

T 0186/15 - Withdrawing request oral proceedings

Key points

• In this opposition appeal, the opponent had withdrawing its request for oral proceedings before the opposition division in response to the summons. The opponent appealed against the OD's decision to maintain the patent according to the main requests.
• The patent proprietor argues that the appeal is therefore inadmissible. The Board does not agree.  " The appellant merely withdrew its request for oral proceedings. It unambiguously stated that it wanted to continue the proceedings [] explicitly upheld its request that the patent be revoked in full [], and provided arguments as to why the claimed invention was not sufficiently disclosed. As the opposition division decided to maintain the patent in the form of the then pending main request, the appellant is adversely affected by the decision, and its appeal is thus admissible" 

EPO T 0186/15 - link 

Reasons for the Decision

Admissibility of the appeal

1. With the response to the grounds of opposition on 22 January 2014, i.e. at the earliest opportunity during opposition proceedings, the respondent filed a new main request.

On 27 February 2014, the opposition division summoned the parties to oral proceedings, providing a full substantiation of its view that the subject-matter of the main request of the respondent was novel and inventive, and the claimed invention sufficiently disclosed.

With a letter dated 30 September 2014, the appellant withdrew its request for oral proceedings in view of the amendments made, submitted further arguments on the issue of sufficiency of disclosure, and explicitly maintained its request that the patent be revoked.

T 1573/12 - Essential features

Key points

• The Examining Division insisted that a particular thickness range should be included in claim 1, the feature being considered essential. The Board does not agree. 
• The Board however does not simply note that the range is mentioned expressly as "preferably" , but cites the remark in the application that " ..by proper selection of the width of the etch-resist in combination with the thickness of the temporary substrate, the current crack-preventing properties can be regulated"

EPO T 1573/12 - link

Reasons for the Decision

4. Claims (Article 84 EPC 1973)

4.1 In its communication of 27 October 2011, the examining division considered that claim 1 then on file was not clear because an essential feature of the claimed invention was missing(see point 5). Although the current version of claim 1 is different from the one on file at that time, the objection would still apply to current claim 1 and, therefore, the board considers it appropriate to address it.

4.2 The examining division considered that the range of the thickness of the temporary substrate foil should have been mentioned in claim 1. Making reference to the statements in lines 5-13 on page 9 of the description, the examining division stated that the thickness range of 1 - 200 mym of the temporary substrate foil mentioned therein was an essential feature of the invention, since it was required (page 9, line 5) that the temporary substrate foil had a certain thickness to ensure sufficient support for the foil during its manufacturing process. The omission of this essential feature was contrary to the requirements of Article 84 EPC.

4.3 The board does not share the examining division's conclusion on this matter.

T 0719/09 - Hidden invitation from the Board

Key points

• The representative of the opponent filed an appeal, without mentioning the name and address of the opponent. The communication of the Board annexed to the Summons with the preliminary opinion contained the paragraph: " For the proper administration of the case the appellant is invited to remedy the deficiency of the omission of the name of the appellant in the notice of appeal by confirming in writing the name and the address of the appellant before the scheduled oral proceedings"
• The opponent did not reply to this by confirming the name and address explicitly in writing. The Board decides that said paragraph in the preliminary opinion is in fact an invitation pursuant to Rule 101(2) EPC, and rejects the appeal as inadmissible for failure to respond. 
• As a comment, it seems quite unfortunate that the Board qualifies this remark in the preliminary opinion as invitation under Rule 101(2) EPC, taking into account that the preliminary opinion as usual starts with " the following observations are made without prejudice to the Board's final decision". I wonder if the principle of legal expectations could not have been applied, that an invitation under Rule 101(2) EPC is issued with the  normal form, or at least mentions Rule 101(2) EPC, or that the preliminary opinion indeed is non-binding. 
• Also, there appear to be established case law that formal deficiencies should not be raised years later in the proceedings (e.g. recently T 0707/12), and that parties are then protected by the principle of legitimate expectations. 
• There is also some reasoning about admissibility of the opposition. However, as a comment, I wonder whether the Board can even examine admissibility of the opposition without an admissible appeal. 

EPO T 0719/09 -  link

V. With a communication dated 9 June 2016 the board summoned the parties to oral proceedings on 9 September 2016. In an annex to the summons the board expressed its preliminary opinion.

According to this preliminary opinion, the opposition appeared to be admissible for the reasons given in the decision T 1486/10 (see reasons, points 1.5 to 1.9) of board 3.5.03, in which the underlying facts were comparable to those in the present case.
As to the admissibility of the appeal which was challenged by the respondent for not providing the name and the address of the appellant, the board stated that the notice of appeal dated 27 March 2009 had been filed by the professional representative appointed in the proceedings before the first instance. From the letter heading it was clear that the letter concerned the opposition against the patent "EP 1374028" giving the title of the patent, the name of the patentee and the reference to the number of the "Zusammenschluss" "EPA 194". Furthermore, the first paragraph referred to the decision under appeal "... Beschluss ... vom 10.2.2009 eingegangen 13.02.2009 wird Beschwerde eingelegt...."
In the board's view, from all these elements of information it was possible to deduce with a sufficient degree of probability by whom the appeal should be considered to have been filed. The Board considered that in line with the established case law (see inter alia T 1/97 of 30 March 1999, Reasons No. 1.1 and T 97/98, Reasons No. 1.3 (OJ EPO 2002, 183)) and endorsed by the Enlarged Board of Appeal in G 1/12 (OJ EPO 2014, A114), the appellant had been sufficiently identifiable within the period for filing an appeal and thus, that the appeal appeared to be admissible.

In the line with the G 1/12 conclusions and for the proper administration of the case the board invited the appellant to remedy the deficiency of the omission of the name of the appellant in the notice of appeal by confirming in writing the name and the address of the appellant before the scheduled oral proceedings.

[Note: the actual sentence in the summons is: " For the proper administration of the case tthe appellant is invited to remedy the deficiency of the omission of the name of the appellant in the notice of appeal by confirming in writing the name and the address of the appellant before the scheduled oral proceedings" .]

Reasons for the Decision

1. Admissibility of the opposition

T 0519/12 - Technical standards and inventive step

EPO Headnote

It is expected from the skilled person that he would exercise his skills in the framework of technical Standards in force in his field of activity. No inventive activity can thus be derived from a feature that simply reflects the content of such a technical prescription (cf. point 3.5).

Comments

• It is not entirely clear to me, why the Board does not follow the standard problem and solution approach, and does not identify the technical effect of the distinguishing feature, and does not formulate an objective technical problem (i.e. compliance with the standard, or e.g. providing an alternative).

EPO T 0519/12 - link




Reasons for the Decision

[] 3.4 The embodiment referring to the incorporation of a microchip as a card feature is considered to define the most promising starting point (closest prior art) when deciding on the inventive merits of the claimed invention since it reproduces the functionalities of the claimed transaction card.

It follows that the subject-matter of claim 13 differs from the card disclosed in D1 only in that the second pocket is disposed on the first surface of the card.

Similarly, the method of making the transaction card of claim 1 differs from the method disclosed in D1, in that the second pocket is milled on the first surface of the transaction card.

3.5 The presence of the second pocket for receiving the microchip on the first surface of the transaction card does not justify the presence of an inventive step since it results from requirements contained in said International Standard ISO/IEC 7816-2:2007(e). Specific reference is made to section 5 ("Location of contacts relative to other technologies") where it is specified that "Embossing (ISO/IEC 7811.1) when present, shall be located on the same side as the contacts". No inventive activity can be recognised with regard to this technical prescription. It is expected from the skilled person that he would exercise his skills in the framework of technical Standards in force in his field of activity. No inventive activity can thus be derived from a feature that simply reflects the content of such a technical prescription.

3.6 Consequently, the subject-matter of claims 1 and 13 of the main request does not involve an inventive step in the sense of Art. 56 EPC 1973.

T 1297/12 - Disclaimer and accidental anticipation

Key points

• The claim with proposed disclaimer filed during the appeal of this opposition appeal,  is not allowable, because it is made in view of a document D3 which is not a accidental anticipation (and none of the other grounds are applicable). 
• D3 relates to the same field, however  " the anticipatory disclosures are neither an example, nor a comparative example but three sieved fractions isolated from a composition obtained in the course of an [] example." 
• "Following the finding of T 14/01 these fractions are disclosed in a relevant document, D3 and so cannot be considered to represent an "accidental" disclosure. Thus based on this assessment alone a disclaimer in respect of these disclosures would not be allowable." 

T 1297/12 -  link

1. Main request

1.1 Art. 123(2) EPC - allowability of the disclaimer.

1.1.1 The patent in suit relates to polyolefin powders of a defined particle size distribution (paragraph [0001]. The powders have uses in the production of pipes or films (paragraph [0006]). In respect of these uses it is stated that it has been found that a high proportion of large polymer particles can lead to problems in the final products. According to paragraph [0008] it was found that the problems can be obviated by controlling not only the width of the particle size distribution but in particular by reducing the proportion of large particles, while maintaining a low content of fines.

Thus the patent is concerned with polyolefin powders of controlled - narrow - particle size distribution.

1.1.2 D3 also addresses the problem of the provision of controlled morphology polyolefin moulding powders in particular for the production of films ("Field of the Invention").

1.1.3 D3 is a document comprised in the prior art pursuant to Art. 54(2) EPC. Consequently a disclaimer in respect of the disclosure thereof is only permissible if the anticipation is "accidental", i.e "so unrelated and remote that the person skilled in the art would never have taken it into consideration when working on the invention" (G 1/03, reasons 2.2.2.)

1.1.4 The document D3 itself is not unrelated and remote since it relates to the same field as the patent in suit, namely polyethylene polymers in particulate form having defined morphology, in particular a narrow particle size distribution. The appellant/patent proprietor has acknowledged the relevance of D3.

However it was considered by the appellant/patent proprietor that the cited novelty destroying disclosures i.e. the three sieved fractions of example 1 were "unrelated and remote".

1.1.5 To understand what is meant by an "unrelated and remote" disclosure it is necessary to consider G 1/03, and some of the case law developed subsequently.

(a) According to point 2.2.2 of the reasons of G 1/03:

"What counts is that from a technical point of view, the disclosure in question must be so unrelated and remote that the person skilled in the art would never have taken it into consideration when working on the invention" and "In the case of an accidental anticipation, its definition (see above) makes clear that it has nothing to do with the teaching of the claimed invention, since it cannot be relevant for examining inventive step. Therefore, a mere disclaimer excluding the subject-matter of an accidental anticipation may be assumed not to change the technical information in the application as filed and, for this reason, also not to change the subject-matter of the application as filed, within the meaning of Article 123(2) EPC".

In the present case disclaiming certain polyolefin powders having specific particle size distributions cannot be held not to change the technical information of the application as filed, which information aims at defining in the first part of claim 1 itself the polyolefin powder by its particle size distribution.

(b) The question of what constitutes "unrelated and remote" disclosures was considered in more detail in decisions subsequent to G 1/03.

In T 14/01, it was held in section 1.5 of the reasons, with reference to section 2.2.2 of the reasons of G 1/03 that a disclosure can be considered to be accidental only when it appears from the outset to have nothing to do with the invention. In the subsequent section 1.6, T 14/01 held that an allegation that a teaching leading away from the invention would have been extracted from the prior document presupposed that the document would have in fact initially been taken into consideration. However for an anticipation to be accidental it was necessary that the disclosure in question would never have been taken into consideration (T 14/01, section 1.6 of the reasons, third paragraph).

T 1146/01 in sections 4.2.3 concludes, with reference to section 2.2.2 of G 1/03 that a comparative example of a document, although teaching what not to do nevertheless served to elucidate the teaching of the document as a whole and was closely related to the other experiments - inventive and comparative - disclosed therein. Although a comparative example has a "negative relevance" it is, according to T 1146/01 neither remote from nor unconnected with the disclosure in the document (section 4.2.3, second paragraph). Thus a comparative example cannot be considered as an accidental disclosure in the sense of G 1/03.

1.1.6 In the present case the anticipatory disclosures are neither an example, nor a comparative example but three sieved fractions isolated from a composition obtained in the course of an - in this case inventive - example.

Following the finding of T 14/01 these fractions are disclosed in a relevant document, D3 and so cannot be considered to represent an "accidental" disclosure. Thus based on this assessment alone a disclaimer in respect of these disclosures would not be allowable.

Even if one were, for the sake of argument, to follow the position of the appellant that although D3 in itself is relevant the particular fractions cited as novelty destroying did not constitute a relevant disclosure, the conclusion would be the same because, as will now be explained, the fractions in question cannot be considered to constitute remote or unrelated disclosures.

The purpose of producing the fractions was to demonstrate the particle size distribution of the product of D3, which, as noted is related to the technical problem common to the patent in suit and to D3.

Consequently, to apply the vocabulary of T 1146/01, the fractions of example 1 of D3 cited as novelty destroying serve to "elucidate" the teaching of D3 and as such cannot, by the standards of the case law discussed above, be seen as "unrelated and remote" from the invention of D3 or from the technical problem common to D3 and the patent in suit.

Consequently even following the differentiated approach of the appellant, a disclaimer in respect of the specific sieved fractions of D3 would, following G 1/03 not be allowable since the individual sieved fractions of D3 were not "unrelated and remote" with the consequence that the anticipation was not accidental.

1.1.7 One argument of the appellant/patent proprietor addressed the question of whether the skilled person would have considered these particular fractions as potentially pertinent prior art for arriving at the invention now claimed. However based on the foregoing assessment and conclusions relating to the meaning of "unrelated and remote" in the context of the case law developed in the light of G 1/03 this argument is no longer relevant. However, the board notes that, following the approach of the above-cited T 14/01 the very premise that the skilled person would even have considered a particular fraction as potentially constituting the closest prior art - even if then disregarded - presupposes that the teaching would, in the terminology of G 1/03, have been "taken into consideration". Thus also on this approach the conclusion would be that the disclosed fraction was not "unrelated and remote" from the invention of the patent in suit.

1.2 For the above reasons it is concluded that the cited disclosures of D3 do not constitute an "accidental" anticipation, with the result that a disclaimer in respect thereof is not allowable (G 1/03 reasons 2.2 and Order, paragraph 2.1, second bullet point).

T 0835/14 - Inventive cooking device

Key points

• The Board acknowledges inventive step based on the distinguishing feature, that the cooking device allows for simultaneously choosing two or more time parameters for pre-selecting cooking programs, i.e. making a pre-selection based on the the time, weekday and seasons; the cooking programs are shown in the display in the order or arrangement based on the frequency of use depending on the selected parameter. 
• The claims use first parameter and/or second parameter and/or third parameter, so as a comment I doubt if a plurality of parameters is actually required in claim 1. 

EPO T 0835/14 - link

Key points


EPO T 0835/14 - link

Claim 1:

"Gargerät, bei dem eine Vielzahl von Programmen in Abhängigkeit von zumindest einem Parameter vorauswählbar ist, wobei auf zumindest einer Anzeigeeinrichtung (1,1') nach Einschalten des Gargeräts die über den Parameter vorausgewählte Vielzahl der Programme automatisch anzeigbar ist, und über zumindest eine Bedieneinrichtung eines dieser angezeigten Programme anwählbar ist,
dadurch gekennzeichnet,
dass eine Auswahleinrichtung zum Auswählen eines ersten, zweiten und/oder dritten Parameters in Wirkverbindung mit einer Steuer- oder Regeleinrichtung von dem Gargerät umfasst ist,
so dass der Parameter der erste Parameter, der durch die Uhrzeit am Aufstellungsort des Gargeräts bestimmt ist, und/oder der zweite Parameter, der durch den Tag am Aufstellungsort des Gargeräts bestimmt ist, und/oder der dritte Parameter, der durch die Saison am Aufstellungsort des Gargeräts bestimmt ist,

ist die vorausgewählten Programme am Aufstellungsort automatisch aus den abgespeicherten Programmen vorausgewählt sind, und die Reihenfolge und/oder Anordnung der vorausgewählten Programme auf der Anzeigeeinrichtung durch die Verwendungshäufigkeit derselben bestimmt ist."

4. Anspruch 1 - Erfinderische Tätigkeit

4.1 Das gegenüber E1 unterscheidende Merkmal, dass das Gargerät eine Auswahleinrichtung zum Auswählen eines ersten, zweiten und/oder dritten Parameters in Wirkverbindung mit einer Steuer- oder Regeleinrichtung, umfasst, mit der Aufgabe die Bedienfreundlichkeit des Gargeräts weiter zu erhöhen, ist aus dem zitierten Stand der Technik nicht in naheliegender Weise herleitbar.

Auswahleinrichtungen bei Gargeräten sind natürlich an sich bekannt und verbreitet eingesetzt. So umfasst beispielsweise das Gargerät gemäß E5 ein Drehrad 4 und Tastelemente 7a, 7b, 8a, 8b, die als Änderungsfunktionselement für ein Garprogramm (Figur 1) oder Garparameter (Figuren 2 bis 4) dienen. Diese Auswahleinrichtung erlaubt es, Garmenüs bzw. Garprogramme nach einem einzigen Zeitparameter voreinzustellen.

Die Möglichkeit gleichzeitig zwei oder mehr Zeitparameter (Uhrzeit, Tageszeit, Saison) auszuwählen, wie es im Anspruch 1 verlangt wird, wird in E5 jedoch nicht angeboten.

Der Fachmann erhält daher keine ausreichende Lehre aus E5, um das aus E1 bekannte Gargerät mit einer Auswahleinrichtung wie beansprucht auszustatten.

4.2 Eine ähnliche Problematik ergibt sich, wenn der Fachmann von E7 ausgeht. Auch hier fehlt die Anregung für den Fachmann, dem aus E7 bekannten Gargerät eine Auswahleinrichtung hinzuzufügen, mittels welcher ein erster, zweiter und/oder dritter Zeitparameter in Wirkverbindung mit einer Steuer- oder Regeleinrichtung von dem Gargerät ausgewählt werden kann/können, wobei der erste Parameter durch die Uhrzeit am Aufstellungsort des Gargeräts, der zweite Parameter durch den Tag am Aufstellungsort des Gargeräts und der dritte Parameter durch die Saison am Aufstellungsort des Gargeräts bestimmt ist.

4.3 Die im Anspruch 1 definierte Vorrichtung erfüllt daher die Erfordernisse des Artikels 56 EPÜ.

T 0260/14 - Partial priority also for narrowed claims

Key points

• In this decision, the Board applies G 1/15 about partial priority: is claim 1 novel over the published EP priority application D5, in particular the example of D5? The Board decides that partial priority can be acknowledged concerning the working example. 
• " The working example is thus alternative subject-matter by virtue of a generic "OR"-claim which falls within the ambit of claim 1 of the patent in suit. Thus, the part of claim 1 which concerns the working example is entitled to partial priority. Therefore, the disclosure in the priority document of the working example cannot be considered to take away the novelty of the subject-matter of claim 1 pursuant to Article 54(3) EPC." 
• Unlike in G 1/15, claim 1 was not broadened compared to the priority document D5, but narrowed. According to the Board, this is not relevant.
• " 2.4 The Board does not accept the appellant-opponent's argument that the questions referred to the Enlarged Board in G 1/15 were not relevant for the case at issue. The appellant-opponent argued that the referral in G 1/15 concerned the situation where the priority document disclosed only one or more embodiments, but not the subject-matter of the entire claim claiming that priority, whereas the patent in suit comprised a limitation of the more general disclosure in D5. [] The Board notes that this comparison, as well as the reference to other distinguishing features between the patent in suit and D5, concerns the question of whether priority can be acknowledged for the entire scope of claim 1 of the patent in suit. This is, however, not the issue which the Board needs to decide. The only relevant issue is whether partial priority can be acknowledged for that part of claim 1 which concerns the working example, i.e. that part of claim 1 against which the novelty attack was directed."

EPO T 0260/14 -  link 

2. Novelty

2.1 The opposition division decided that the patent was not entitled to the claimed priority date and that claim 1 of the patent in suit lacked novelty pursuant to Article 54(3) EPC in view of the priority document itself (document D5) which was published on 30 January 2008, i.e. after the filing date of the patent in suit (24 July 2007).

T 0015/15 - Skilled person and new technology

Key points

• The Board comments on the skilled person in this case. 
• " [W]here a new technology is about to spread into a traditional field, it is common practice to group people from both technical fields into a development team. The Board is thus of the opinion that the skilled person in the present case consists of a team of an orthodontist and an expert in CAD/CAM technology. This conclusion is drawn from the situation in the field before the filing/priority date, without considering any specific invention. "

EPO T 0015/15 - link

4.4 The skilled person

In the early nineties, use of computers in planning and manufacturing was spreading into basically every industry and field of technology. As evidenced by e.g. E30, column 2, line 64-68 or E12, page 540, first paragraph of the introduction, the field of dentistry and orthodontics was no exception. Thus, also the specialist in the field of dentistry and orthodontics was aware of the new technology and its potential for improved quality and cost efficiency.

In such a situation, where a new technology is about to spread into a traditional field, it is common practice to group people from both technical fields into a development team. The Board is thus of the opinion that the skilled person in the present case consists of a team of an orthodontist and an expert in CAD/CAM technology. This conclusion is drawn from the situation in the field before the filing/priority date, without considering any specific invention. There is thus no element of hindsight involved.

T 2290/12 - Multiple independent claims in opposition

Key points

• If claim 1 as granted is considered to lack inventive step, Rule 80 is not prejudicial to filing auxiliary requests having multiple independent claims, each with different distinguishing features compared to claim 1 as granted.
• The Board reviews the case law regarding the difference between clarity and insufficiency of disclosure, and finds that meanwhile there is a broad consensus, or at least predominant opinion, that the question of whether the skilled person can determine whether a product falls in the scope of the claims, or not, is a matter of clarity and not of insufficient disclosure. 

EPO T 2290/12 - link

Entscheidungsgründe

3. Hauptantrag

3.1 Ausführbarkeit (Artikel 100 b) EPÜ 1973)

Die Beschwerdegegnerin hat in diesem Zusammenhang geltend gemacht, dass der Fachmann wissen muss, wann er im Schutzbereich der Ansprüche arbeitet und sich dabei auf die Entscheidungen T 464/05 bzw. T 256/87 berufen.

T 2580/16 - Appeal too late

Key points

• In this case, the statement of grounds was dated 10 February, the last possible day, and signed by the professional representative on that day. However, it was sent with online filing only on Monday 13 February, out of time. The appeal is inadmissible.

EPO T 2580/16 - link 

Summary of Facts and Submissions

I. The opponent (hereinafter "the appellant") filed on 30 November 2016 an appeal against the decision of the opposition division dated 30 September 2016 rejecting the opposition. The appeal fee was paid on the same day.

Said decision was posted on 30 September 2016 as registered letter with advice of delivery. Pursuant to Rule 126(2) EPC the notification of this decision is deemed to have been delivered to the addressee on the tenth day following its posting, i.e. on 10 October 2016.

II. The statement of grounds of appeal was electronically filed on 13 February 2017.

Reasons for the Decision

1. The four month time limit for filing the statements of grounds of appeal according to Article 108 and Rule 101(1) EPC ended on 10 February 2017 (see also T 743/05, Reasons, 1.4).

As the written statement setting out the grounds of appeal was filed on 13 February 2017, it has been filed out of time. Since the notice of appeal of 30 November 2016 does not contain any reasoning within the meaning of Rule 99(2) EPC or anything that could be regarded as a statement of grounds of appeal pursuant to Article 108 EPC, a statement of grounds is missing so that the appeal is inadmissible (Article 108 EPC in conjunction with Rule 101(1) EPC).

2. Moreover no request for re-establishment of rights under Article 122 EPC in combination with Rule 136(1) EPC (see also G 01/86, Reasons 15) was filed by the appellant within two months of receipt of the communication dated 16 February 2017.

Order

For these reasons it is decided that:

The appeal is rejected as inadmissible.

T 0540/13 - Lost in the EPO Post Room

EPO Headnote

When the opposition division decides that an opposition is inadmissible in a case where at least one other admissible opposition has been filed, it is not necessary for the opponent of the opposition held inadmissible to appeal this decision in order to preserve party status in appeal proceedings initiated by another party (see points 1.2 to 1.5 of the reasons).

Key points

• The opposition of Opponent O1 was held inadmissible by the OD. O1 did not appeal this. Is O1 then party of as right (respondent) in the appeal of the patent proprietor? The Board decides that it has to review the party status of O1, and thus the admissibility of the opposition, of its own motion. Irrespective of whether O1 appealed the OD's decision regarding the admissibility (and irrespective of whether O1 could have done so, the patent being revoked by the OD).
• The Board decides that the opposition of O1 was admissible. The Board accepts as proven that the EPO had received a package sent with DHL containing the opposition form and cited evidence, but according to the EPO lacking the Annex with Facts and Arguments. The Board finds that the OD should have made an enquiry as to what has happened in the EPO post room. 
• "  In the board's view, the opposition division should have made an attempt to investigate the circumstances of opening the DHL package and/or ascertaining whether the statement of facts and arguments could yet be found in the EPO, at the latest following receipt of the letter dated 25 January 2008, at which point it was clear that opponent O1 believed that the statement of facts and arguments had indeed been filed within the opposition period. Without such an investigation, it is unclear how the opposition division could, more than four years later, regard it as a "fact" that the statement of facts and arguments had not been received. Further, by waiting so long before considering the matter, any meaningful investigation was rendered impossible. The board is now in the position that nine years have passed since the filing of the opposition. It is more than doubtful, whether hearing witnesses, either those offered by opponent O1 or those within the EPO, after such a long time could now still serve any useful purpose." 

EPO T 0540/13 -  link

Reasons for the Decision

1. Admissibility of the appeal of appellant-opponent O1

1.1 The Opposition Division held that the opposition of opponent O1 was inadmissible. Opponent O1 appealed this part of the decision (see above point VIII).

1.2 As regards the admissibility of opponent O1's appeal, the board notes that only persons adversely affected by a decision are entitled to appeal (Article 107 EPC, first sentence). On the one hand, opponent O1 was not adversely affected by the decision to revoke the patent. On the other hand, the opposition division also held that O1's opposition was inadmissible and took a separate "additional decision" to this effect (see above point V). It is open to question whether this additional decision, which seemed to have a negative outcome for opponent O1 but did not change the fact that its main request that the patent be revoked had been granted, is open to a separate admissible appeal. However, for the reasons given below, this question does not need to be answered in the present case, where also the patent proprietor appealed the decision and did not withdraw its appeal.