T 0161/17 - Fixing costs and appeal

Key points

• In this opposition appeal case, the OD first decided that the patent as amended met the requirements of the EPC and wherein the opponent was ordered to bear the costs of the patentee for the oral proceedings. This decision was not appealed. Thereafter, the formalities officer for the OD fixed the amount of the costs award (see GL D-II 7). The opponent then requested a decision by the OD. The OD took a decision fixing the costs. The appeal is directed to this decision fixing the costs.
• The Board finds that because pursuant to Rule 97(1) EPC, the decision on the apportionment of the costs cannot be the sole subject of the appeal, and because the decision on the merits was not appealed, the decision to apportion the costs can be challenged together with the decision fixing the costs. The appeal is accordingly admissible. 
• The Board finds that the decision on the apportionment of costs is res iudicata,  even if under Rule 97(1) an apportionment of costs can not be the sole subject of an appeal. The Board cites T 0668/99. Hence, opponent's arguments against the costs apportionment are not considered. The appeal is not allowable. As a comment, in T 0668/99 the opponent had appealed the decision on patentability and had in that appeal did not challenge the costs apportionment. 
• The Board rejects the request of the proprietor for apportionment of the cost for the appeal procedure, as well as the request of the opponent for apportionment of the costs for the appeal procedure. 
• As a comment, it follows that the Opponent was effectively ordered to pay about EUR 6000 without an effective possibility for appeal if an appeal against the OD's decision on patentability would have been inadmissible. 

EPO T 0161/17 -  link

Sachverhalt und Anträge

I. Mit Zwischenentscheidung vom 27. Mai 2015 entschied die Einspruchsabteilung, dass das Patent in geändertem Umfang den Erfordernissen des EPÜ genüge und dass die der Patentinhaberin im Zusammenhang mit der mündlichen Verhandlung entstandenen Kosten von der Einsprechenden zu tragen seien.

Gegen diese Entscheidung wurde keine Beschwerde eingelegt.

T 2599/12 - The Essentiality Test

Key points

• In this opposition appeal case, the Board comments on the " essentiality test". The Board finds the test moot because in  this case there is direct and unambiguous disclosure of the claimed subject-matter. 
• "[It] will normally not be admissible under Article 123(2) EPC to extract isolated features from a set of features originally disclosed only in combination in a particular embodiment unless the skilled person recognises without any doubt that the isolated feature is structurally and functionally unrelated to those other features and may therefore be applied in a more general context." 
• " Claim 1 is directed at a teat cup liner, a nozzle means and a check valve 19, thus an arrangement comprising these features. The Board considers that there is a direct and unambiguous disclosure of such a group of features, isolated from the rest of the teat cup, in the original application (see application as published, page 3, lines 6 to 10). There, precisely this group of elements (liner, nozzle, check-valve) is disclosed, isolated from the remainder of the teat cup, allowing their easy replacement together." 
• " In the light of this direct and unambiguous disclosure, the Board sees no reason for any further investigation, for example by applying the test laid out in T 331/87 (see reasons 6). Ultimately, the essentiality test is meant to provide an indication of whether an amendment complies with Article 123(2) EPC as interpreted according to the "gold standard", see above. It does not take the place of the "gold standard" and should not lead to another result than when applying the "gold standard" directly. Having considered compliance of the amendment with the "gold standard" directly and confirmed compliance, the discussion, for example, as to whether or not a teat cup in its entirety is indispensable for carrying out the invention is therefore moot." 

EPO T 2599/12 - link

3. Article 123(2) EPC, main request (as upheld)

3.1 In deciding the question of allowability of amendments under Article 123(2) EPC, the Board, following well established practice (see Case Law of the Boards of Appeal, 8th edition, 2016 (CLBA), II.E.1.2.1 and the decisions cited therein), must consider whether the amendments in question are directly and unambiguously derivable by the skilled person from the application as filed, using normal reading skills and, where necessary, taking account of their general knowledge. This is the "gold" standard according to which amendments are assessed (see G2/10, reasons 4.3).

Furthermore (see CLBA, II.E. 1.7 and the decisions cited therein), it will normally not be admissible under Article 123(2) EPC to extract isolated features from a set of features originally disclosed only in combination in a particular embodiment unless the skilled person recognises without any doubt that the isolated feature is structurally and functionally unrelated to those other features and may therefore be applied in a more general context.

T 2068/15 - Public prior use, secrecy

Key points

• In this extensive opposition appeal decision about an alleged public prior use of multilayer films for car parts, one of the issues is whether there was a tacit secrecy agreement.
• " It can be accepted that, if joint development projects are agreed, they often are - explicitly or implicitly - combined with an obligation of confidentiality. In the case at hand, the board does however not see enough indications from which it could be convincingly concluded that there existed a joint development project between opponent 2 and Nissan and, linked to that, confidentiality as regards the nature (composition and layer sequence) of the films". " the 37 films [that were supplied] were not the only films produced by opponent 2 but were part of in total 12600 parts 93893 8Z400 of production run 12 (D41) as shown by the opponents. The production of such a large number is not indicative of test purposes either." 
• The Board also finds that the supplied multilayer films had the composition of claim 1, based on extensive evidence (including three experimental reports from research institutes). 
• The Board also discusses analysability. " The board acknowledges that a precondition for the chemical composition of a product to be prior art is that it can be analysed by the skilled person (G 1/92[]). This question therefore has to be examined in the present case. The Board finds that the skilled person could have determined the composition of the supplied films based on a combination of technologies including IR, 1H and 13C NMR, and pyrolysis GC-MS.
  
  

EPO T 2068/15 -  link

Reasons for the Decision

Main request (claims as granted)

2. Lack of novelty - alleged public prior use

2.1 Both opponents contested novelty in view of a public prior use of films which they said had a composition as defined in claim 1 and were part of the state of the art before the date of filing of the patent in suit (Article 54(2) EPC).

2.2 To substantiate a public prior use, it must be established when the prior use occurred, what was used, and the circumstances relating to the alleged use (T 328/87, headnote).

2.3 Date of the alleged public prior use

2.3.1 In February 2002, Kay Automotive Graphics, who is opponent 2 in the present proceedings, received a specification tender dated 25 February 2002 from Nissan to initiate production of part numbers 93892-8Z400 and 93893-8Z400 (D26). On 29 September 2004, a job ticket was issued to initiate production run number 12 of 12600 of each of these two part numbers for the customer Nissan (D41). Once produced, the parts were placed at inventory location WHB-703-G within opponent 2's facility (D55 and D56).

T 0064/13 - Public prior use and evidence

Key points

• In this opposition appeal case, the Board applies "balance of the probabilities"  as the evidence standard, because the public prior was not by the opponent but by an (independent) third party. The third party had filed evidence of their own prior use in the opposition against the parallel German patent. The opponent had filed a copy of the file of the German opposition. Hence, the prior use was outside the sphere of influence of the opponent, and therefore the evidence standard of " balance of probabilities"  is applied. 
• Also the sworn declaration of the manager of the third party is accepted as evidence, albeit on the principle of the free evaluation of evidence. 

EPO T 0064/13 - link

7.3 Beweiswürdigung der Vorbenutzung D3-D5,DX

7.3.1 Bei allen in Art. 100 EPÜ aufgeführten Einspruchsgründen gilt zwar dasselbe Beweismaß; dennoch kennt die Rechtsprechung zwei unterschiedlich hohe Beweisaufforderungen, wenn eine offenkundige Vorbenutzung bestritten wird ? das "Abwägen der Wahrscheinlichkeit" und den "lückenlosen Nachweis". Das Abwägen der Wahrscheinlichkeit wird dann angewandt, wenn Patentinhaberin wie Einsprechende gleichermaßen Zugang zu dem Material hatten, dessen offenkundige Vorbenutzung behauptet wird (siehe Rechtsprechung der Beschwerdekammern, 8e. Auflage, III.G.4.3.2)

J 0011/16 - Retraction of withdrawal

Key points

• An applicant files a letter stating "The applicant wishes to withdraw the above application", the withdrawal is entered into the Register, and the applicant writes to the EPO about two weeks later that the letter was sent in error, and that the intention was to proceed further. 
• The applicant argued that "a correct application [of established case law] meant that if there existed the slightest doubt whether a declaration made by a party corresponded to its true intentions, the EPO should seek clarification before acting upon the declaration. Because the EPO did not do so in the present case although it should have had doubts, it committed a substantial procedural violation" . 
• The Legal Board states that "The issue in the present appeal is whether the statement made in the letter of 2 February 2015 was unambiguous or whether the EPO should have had doubts with respect to the true intention of the appellant." The Board finds that the wording "The applicant wishes to withdraw the above application"  used in this case, constituted a valid withdrawal.
• As a comment, the applicant presumably did not request a correction under Rule 139 EPC of the withdrawal (which would be late filed, namely after the withdrawal was entered into the Register), but argued that the letter was not a withdrawal, such that application was never withdrawn. 

EPO J 0011/16 -  link

Summary of Facts and Submissions

I. The appeal was filed against the decision of the Receiving Section of 4 January 2016, rejecting the appellant's request aiming at the retraction of the letter of withdrawal of the European patent application 10 743 328.6.

II. On 2 February 2015, the representative of the appellant filed a letter, citing European Patent Application No 10743328.6, the title of the invention to which this application relates, "Pneumatic Seat Cushion System", and the registered applicant "Comfort Concepts Pty Limited". The letter states "The applicant wishes to withdraw the above application leaving no rights outstanding. We would welcome any fees which may be refundable."

T 0632/12 - Undisclosed disclaimer

Key points

• The applicant filed amended claims with an undisclosed disclaimer (and with very limited arguments), presumably on D1 being possibly an accidental anticipation.
• However, D1 belongs to the same technical field, and hence is not an accidental anticipation within the meaning of G 1/03.
• The disclaimer would also remove more than necessary, and is also for this reason not allowable.
• The Board also considers the effect of G 1/16: " It could, therefore, be argued that proceedings in the present case should be stayed until the questions now pending as case G 1/16 have been answered. [] Staying the proceedings would mean, however, that the inclusion of the disclaimer in claim 1 of the first auxiliary request - an amendment made after the Board arranged oral proceedings - raises an issue which the Board cannot deal with without adjournment of the oral proceedings. This is a situation which strongly suggests that the first auxiliary request should not be admitted into the proceedings under Article 13(1) and (3) RPBA."
• " This argument of lateness could perhaps be countered with the argument that at the time of filing the appeal there was no doubt - in view of the case law - that the disclaimer infringed Article 123(2) EPC, whereas the [later] referral made in decision T 437/14 has at least some potential to change this situation [justifying the filing of the request after the summons].

The Board finds this counterargument not necessarily persuasive [.] [The] appellant has not raised this counterargument or any other relevant argument in support of the admissibility or of the allowability under Article 123(2) EPC of the first auxiliary request; it has left it entirely to the Board to investigate whether and for what reason the disclaimer may be allowable."

EPO T 0632/12 -  link

5. First auxiliary request - admission

5.1 Admission into the proceedings of the first auxiliary request is again within the Board's discretion under Article 13(1) and (3) RPBA.

5.2 Claim 1 of the first auxiliary request does not include the phrase "for any selected code rate" that was added to the main request. Instead, in claim 1 the text "the method comprising the steps of" has been replaced with "the method, for code rates other than 3/4, comprising the steps of".

According to the appellant, this amendment is intended as a disclaimer, limiting the claimed method to code rates other than 3/4. The appellant has not indicated a basis in the original application for this amendment or given arguments why the disclaimer is an allowable undisclosed disclaimer.

J 0007/16 - Interruption and mental health

Key points

• In this case, a renewal fee was not paid in time. The request for re-establishment of rights was refused. The appeal was filed late. The Board grants re-establishment of rights for the appeal and for the renewal fee.
• The professional representative "  suffered from severe stress caused by the death of his wife and several other deaths in his circle of acquaintances".
• The Board examines ex officio whether interruption of proceedings should be applied (retroactively). However, the Board considers that "[in] view of the fact that declaration of the legal incapacity of a professional representative has serious consequences for his professional life", a medical certificate is indispensable. In the absence of such medical certificate, interruption is not applied. As a comment, this is in agreement with J 900/85, hn IV.
• Re-establishment for the time limit for the Notice of appeal and the Statement of grounds is granted. Only one re-establishment fee was due (following T 832/99).
• Re-establishment is granted, due to the mental health of the former professional representative (having a one person firm). The date of removal of the cause of non-compliance is the date that the applicant himself checked the status of the application, after rumours that the former representative had mismanaged other applications.
• The re-establishment is also granted for the payment of the renewal fee, because the mental health problem of the former representative had been substantiated in appel.  

EPO J 0007/16 - link

Summary of Facts and Submissions

I. The applicant's appeal is directed against the decision of the Receiving Section dated 29 July 2015 to reject a request for re-establishment of rights under Article 122 EPC concerning European patent application 11812841.2.

II. The renewal fee for the third year, which fell due on 30 June 2013, was not paid by the due date. By communication dated 2 August 2013 notified to the applicant's former representative Mr E. (in the following 'former representative') the applicant was informed that the renewal fee could still validly be paid up to the last day of the sixth calendar month following the due date provided that the additional fee was paid at the same time. Furthermore it stated that the patent application would be deemed to be withdrawn pursuant to Article 86(1) EPC if the renewal fee and the additional fee were not paid in due time.

J 0009/16 - Re-establishment priority right

Key points

• The decision deals with a request for re-establishment of the priority right for a Euro-direct application filed after the end of the priority year. The reason for the late filing of the application, is that the US agent had given instructions for filing two applications simultaneously to the firm of European patent attorneys, and only one case was docketed. The other case was not docketed and not timely filed.
• The Board seriously doubts admissibility of the request for re-establishment, because the grounds were filed 2 months after the cause of non compliance, whereas Rule 136 (1) second sentence sets a time limit of 2 months from the end of the priority year. The Receiving Section had found the request admissible but not allowable. However, because the request is not allowable in any case, the Board does not needs to deal with the issue.
• The Board recalls that " it appears reasonable to also expect an independent cross-check when data is entered in a time limit monitoring system, and not only for the strict "monitoring" of time limits already recorded". 
• The Board finds a lack of due care of the European firm, because there was no person in the firm with the taks of checking whether orders received by email were actually entered in the docketing system. 
• The Board finds also a lack of due care from the US attorney, by not acting when the EP firm did not sent the requested confirmation receipt of the orders. " Instructing the foreign partner to confirm receipt of orders doubtlessly contributes to the diligent handling of the case, because the US agent's responsibility for the timely filing of the applications would have ended upon receipt of the acknowledgement of the order by the EP representatives, but only then. Therefore, it ought to have been of paramount importance for the US agent to check soon after the dispatch of the filing orders if they had also been duly received. Indeed, there is little purpose in instructing a foreign colleague to confirm the receipt of instructions if the return of this confirmation is not checked soon thereafter.' 

EPO J 0009/16 -  link

Summary of Facts and Submissions

I. The appeal is against the decision of the Receiving Section dated 18 August 2015 refusing the request dated 4 March 2013 for re-establishment of rights in respect of the priority period under Article 87(1) EPC.

Summary of events leading up to the present appeal

II. The appellant-applicant, a US company, is the assignee of two US patent applications. It instructed its US agent to file two corresponding applications with the EPO, each of them claiming priority of one of the US applications. The priority period of 12 months pursuant to Article 87(1) EPC expired on 31 January 2013. An assistant of the US agent sent the necessary instructions to an association of professional representatives before the EPO ("EP" representatives, hereafter referred to as "JP"), headquartered in Milan, Italy. The instructions were sent in two successive filing orders by two emails dated 23 January 2013 and received on the same date (at 23:20 hrs and 23:26 hrs local time). More specifically, the emails were sent to an attorney at JP (Mr L.) personally and to a central email address of JP. The filing orders included the following instruction: "Please acknowledge receipt of this communication and be sure to include a copy to [email address of the docketing unit of the US agent]".

III. Mr L. forwarded the emails to the competent unit, namely the Milan Patent Department of JP (hereafter referred to as "PD"). Due to various circumstances, as explained in more detail below, only one of the two filing orders was properly docketed and processed by the PD. The properly docketed application was filed with the EPO on 29 January 2013 (European patent application No. 13153077.6), and a filing report was sent by email to the US agent on the same day. A separate acknowledgement of receipt had not been sent to the US agent before this filing report, for neither one of the two filing orders.

T 0945/12 - Claims are not facts under Article 114

Key points

The OD did not admit a request under Article 114 EPC.
" In the opinion of the Board, claims are not facts within the meaning of Article 114(2) EPC (see also Bühler in Singer/Stauder, "Europäisches Patentübereinkommen", 7th edition, 2016, Art 114, 52; T 133/92 of 18 October 1994, reasons 7), so that the Opposition Division did not provide the correct legal basis for not admitting the request. Nonetheless, the same reasoning would apply under Rule 116(2) EPC."

EPO T 0945/12 -  link

7. Admission

7.1 The Opposition Division did not admit into the proceedings the auxiliary request submitted during oral proceedings at 15:10, which substantially corresponds to auxiliary request I filed with the grounds of appeal. It is therefore questionable whether auxiliary request I should be admitted into the appeal proceedings.

T 1589/12 - Avirulent isolate

Key points

• Claim 1 as granted reads " An avirulent Lawsonia intracellularis isolate, wherein said avirulent isolate is [...] any avirulent Lawsonia intracellularis isolate of European origin, characterized in that said avirulent Lawsonia intracellularis does not cause fecal shedding at day 14 post vaccination."
• It is interesting that the characterizing feature seems to define a result to be achieved. From the OD decision, I understand the closest prior art differed in that it was of US origin, not European origin.
• The decision only deals with whether or not to admit D6. The Board decides to not admit D6. The opponent has no further objections, and the patent is maintained (in amended form, namely with claim 1 directed to
  "1. A live vaccine for the immunization of an animal, comprising a pharmaceutically effective amount of an avirulent live Lawsonia intracellularis isolate and a pharmaceutically acceptable carrier, wherein said avirulent live isolate is [] any avirulent live Lawsonia intracellularis isolate of European origin, characterized in that said avirulent live Lawsonia intracellularis does not cause fecal shedding at day 14 post vaccination.").
  
  

EPO T 1589/12 -  link

Summary of Facts and Submissions

I. The appeal of opponent 1 (hereinafter "appellant") lies against the decision of the opposition division rejecting the opposition filed against European patent No. 1651260, entitled "Lawsonia intracellularis of European origin and vaccines, diagnostic agents and methods of use thereof."

Claim 1 as granted reads:

"1. An avirulent Lawsonia intracellularis isolate, wherein said avirulent isolate is Lawsonia intracellularis deposit isolate ATCC No. PTA-4926 or any avirulent Lawsonia intracellularis isolate of European origin, characterized in that said avirulent Lawsonia intracellularis does not cause fecal shedding at day 14 post vaccination."

[]

T 2341/13 - No need to explain why

Key points

• This examination appeal deals with an interleaver, so the technology is not easy (at least for me). The problem addressed by the invention is, essentially, providing a hardware chip design (for a mobile phone) "capable of interleaving input data frames with a size that is not a multiple of 2**(m)". The difficulty for the Examining Division was that the application does not explain why you would want to use frame sizes (and presumably, such frame sizes are not common in the art).
• " In the oral proceedings before the Examining Division, it was repeatedly asked why the invention should use a frame size that was not a multiple of 2**(m). The Examining Division appears to have considered it problematic that the application suggests that the invention may be used in a communication system based on a standard that was neither publicly available at the priority date nor fully disclosed in the application.

• The Board observes that knowledge of any communication standard is not necessary to carry out the claimed invention and that it is perfectly valid to pose the problem of obtaining interleavers for frame sizes that are not a multiple of 2**(m). If the claimed solution to this problem is not rendered obvious by the prior art, then an inventive step is present. " 

EPO T 2341/13 -  link 




5.4 Neither document D1 nor document D3 addresses the problem of constructing, from a plurality of m-stage PN generators, an interleaver of low hardware complexity which is capable of interleaving input data frames with a size that is not a multiple of 2**(m). In particular, neither document hints at the solution as claimed.

T 0075/14 - Disclaimer under G1/03

Key points

• The Board applies the test of G 1/03 for undisclosed disclaimers, in this decision of 30.03.2017. The disclaimer is not allowed because it removes more than necessary for restoring novelty The Board acknowledges pending referral G 1/16, but finds that it does not needs to stay the appeal, because the disclaimer is in any case not allowable under G 1/03.

EPO T 0075/14 -  link

Reasons for the Decision

1. Allowability of disclaimers

According to G1/03, a disclaimer which does not have a basis in the application as filed may be allowable in order to restore novelty by delimiting a claim against state of the art under Article 54(3) EPC, such as D3 in the present case, (see Headnote, point 2.1). However, G1/03 also stipulates amongst other criteria (see Headnote, points 2.2 and 2.4) that:

(i) a disclaimer should not remove more than is necessary to restore novelty;

(ii) a claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC.

2. Main request

2.1 The main request comprises the following disclaimer:

"the thumbwheel means (16) does not have an association in which the thumbwheel means (16) is movable with respect to the sparkwheel means (15)."

This characteristic is not disclosed in the application as filed, thus the requirements of G1/03 apply.

New rules for patents on plants

Amended Rules 27 and 28 (decision CA/D 6/17) as of 01.07.2017

link on EPO site
 

Rule 27

Biotechnological inventions shall also be patentable if they concern: 

[...] (b) without prejudice to Rule 28, paragraph 2, plants or animals if the technical feasibility of the invention is not confined to a particular plant or animal variety; 

Rule 28

New paragraph (2) added:

"(2) Under Article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process."

Comments
The proposal to the AC is available at the website of " No Patents on Seeds"  (link - corrected link).
Some interesting points:

• Plants obtained through induced mutagenesis, e.g. with CRISPR, are patentable. The same applies for mutagenesis with irradiation or chemical mutagenesis. (point 40).
• Plant parts other than propagation material, e.g. flour, sugars or fatty acids are not excluded (point 47).
• Plant or animal cells or cell populations which are the subject of in vitro culture are patentable and are treated like microorganisms.(point 51).
• Yeast is not excluded (point 64).
• The use of a molecular marker for selection of the plants, does not provide for an escape of the exclusion (point 34). 
• The Notice of the EU Commission does not bind the CJEU. "Until a decision on the matter, if applicable, is handed down by the CJEU, the EU Commission Notice thus carries considerable weight and persuasive character"  (point 20). "The Boards of Appeal, in particular the Enlarged Board of Appeal, have jurisdiction to review the compliance of EPC Rules with the Articles of the Convention. [The] EU Biotechnology Directive is taken into account in the interpretation of the relevant EPC provisions. In this context, a possible decision of the CJEU, which under the EU Treaties is responsible for the legally binding interpretation of the EU Biotechnology Directive, can be taken into account as persuasive by the Boards of Appeal and the Enlarged Board of Appeal." (point 25). So, presumably we need first a decision by the CJEU about the meaning of Article 4(1)(b) Biotech directive, followed by a decision of the Enlarged Board.