T 2076/13 - Remittal and own motion

Key points

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

EPO T 2076/13 -  link

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

T 1955/13 - In house public prior use

Key points

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

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

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

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

EPO T 1955/13 - link

T 0735/13 - Appeal opponent inadmissible

Key points

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

EPO T 0735/13 -  link

Entscheidungsgründe

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

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

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

Key points

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

EPO T 0950/13 - link

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

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

Reasons for the Decision

1. The appeal is admissible.

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

Main request and auxiliary request 1

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

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

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

T 0268/13 - Preamble limiting for production method

Key points

• The Board considers the identification of the product in the preamble of a claim for a production method, to be limiting. Hence, even if the method steps are disclosed, the claim can still be novel by virtue of the feature " Verfahren zur Herstellung eines mehrlagigen Dekorbandes" .
• The Board indicates that it can  not follow the Guidelines F-IV 4.13 (2016), in particular the paragraph based on T 304/08. 
• " [T 304/08]  beschäftigte sich mit der Angabe einer bestimmten Wirkung (Verringerung von üblem Geruch) in einem Verfahrensanspruch. Merkmale, die die Herstellung eines bestimmten Gegenstands betreffen, sind aber von Wirkungsangaben zu unterscheiden" .
• The paragraph of the Guidelines at issue is changed in the 2017 version, although I can not say if the present decision indicates the same as the new wording of the Guidelines. 

Changes in Guidelines F-IV 4.13
A distinction does however have to be made where theA claim which is directed to a method or process aiming at a certain purpose, when it comprises physical steps which result infor the production of a product ("method of manufacture") (i.e. the claim is in fact directed towards the production of a product). In this case, the indication of the intended purpose of the method (production of a product) ishas to be understood in the sense that the method or process has to be merely suitable for that usethe production of the product, rather than comprising the use as an integral method step. Consequently, a prior disclosure of the same method, which is suitable for producing said specific product but does not indicate that the specific product is produced with it, anticipates without an indication of the particular purpose (product production), although the method is nevertheless suitable for it, would anticipate a claim to the method for that particular purpose (see T 304/08)the production of that specific product.

V. Antrag 1 des Hauptantrags lautet wie folgt (die von der Kammer benützte Merkmalsgliederung ist in eckigen Klammern angegeben):

"[A] Verfahren zur Herstellung eines mehrlagigen Dekorbandes [B] mit reliefartiger Struktur [C] aus Text oder graphischem Symbol, umfassend [D] eine Oberlage (12) [E] aus Metall, vorzugsweise Aluminium, wobei das Verfahren die folgenden Schritte umfasst:

Entscheidungsgründe

2.8 Bedeutung der Produktmerkmale für die Auslegung des Verfahrensanspruchs

Die Kammer kann sich dem Argument der Beschwerdeführerin, dass das Verfahren gemäß Anspruch 1 nur durch die Verfahrensschritte definiert wird, nicht aber von dem herzustellenden Produkt, nicht anschließen. Laut Oberbegriff betrifft Anspruch 1 ein Verfahren zur Herstellung eines mehrlagigen Dekorbandes mit reliefartiger Struktur aus Text oder graphischem Symbol, das eine Oberlage umfasst. Nur solche Verfahren werden vom Anspruch erfasst, und nur Verfahren, die zur Herstellung eines solchermaßen definierten Dekorbandes führen, können - wenn sie auch die eigentlichen Verfahrensschritte umfassen - den Anspruch neuheitsschädlich treffen. Die Rechtsprechung betreffend Produkte für einen bestimmten Zweck lässt sich insofern in der Regel nicht auf Verfahren zur Herstellung von Produkten anwenden.

In diesem Zusammenhang kann sich die Kammer den Ausführungen in den "Richtlinien für die Prüfung", Abschnitt F-IV 4.13 (Fassung vom November 2016) und insbesondere ihrer Auslegung der Entscheidung T 304/08 nicht anschließen. Diese Entscheidung beschäftigte sich mit der Angabe einer bestimmten Wirkung (Verringerung von üblem Geruch) in einem Verfahrensanspruch. Merkmale, die die Herstellung eines bestimmten Gegenstands betreffen, sind aber von Wirkungsangaben zu unterscheiden (siehe auch die Entscheidungen T 1384/08 vom 16. Dezember 2010, Punkte 5.1.3-4 der Entscheidungsgründe, und T 2111/13 vom 22. Juli 2014, Punkt 3 der Entscheidungsgründe).

3. Klarheit

Die Kammer teilt die Auffassung der Beschwerdeführerin, dass es fast unmöglich ist, allgemein festzulegen, was als Text oder graphisches Symbol gelten kann [see the wording of claim 1 above]. Diese Schwierigkeit wurde von der Beschwerdeführerin mit mehreren Beispielen belegt. Sie rührt unter anderem davon her, dass der Symbolwert eines Zeichens von gesellschaftlichen Konventionen, technischen Normen, usw. abhängig ist. Ein Zeichen, dem kein symbolischer Wert beizumessen ist, kann zum Beispiel durch Festlegung einer Norm plötzlich Symbolwert erlangen. Ebenso kann ein Zeichen, das in einer Kultur ohne jeden Zweifel Symbolcharakter trägt, in einer anderen Kultur nicht als Symbol wahrgenommen werden.

Dennoch macht dieses Merkmal den Anspruch nicht völlig unklar. Zwar lässt sich nicht ganz allgemein und universell feststellen, was ein Symbol darstellt, aber im konkreten Anwendungsfall ist dennoch klar, ob ein bestimmtes Zeichen im gegebenen kulturellen, linguistischen oder technischen Kontext ein Symbol ist oder nicht. Der Anspruch stellt also weder die Person, die eine Patentverletzung vermeiden will, noch den Verletzungsrichter vor unlösbare Aufgaben, da sie sich ja des relevanten Kontexts bewusst bzw. Teil davon sind.

Daher ist die Kammer zum Schluss gelangt, dass das Merkmal den Erfordernissen von Artikel 84 EPÜ 1973 genügt.

T 0219/15 - Transfer opposition refused

Key points

• In this case, a request for transfer of the opposition was filed, but the Board refuses this because of lack of evidence that the relevant business assets were transferred. The original opponent remained opponent and is also appellant. His submissions remain valid in the appeal.
• " The representative of the opponent submitted information after commencement of the appeal proceedings to show the alleged transfer of the business relating to the opposed patent and had been at the same time authorised representative of the alleged new opponent. In agreement with T 423/11 [4], the board concludes that even if the situation were unclear this had no impact on the overall procedure, i.e. the appeal proceedings." 
• There is also an issue about inventive step, boiling down to "the unusual position of the opponent during oral proceedings before the opposition division in not commenting on inventive step". The Board sees no procedural violation in how the OD dealt with this. 

EPO T 0219/15 -  link

Reasons for the Decision

1. Party status and admissibility of the appeal of appellant I

The appeal was filed by the opponent Clariant Produkte (Deutschland) GmbH of Lenbachplatz 6 in Munich. A request for transfer of the opposition to Johnson Matthey PLC was filed by letter of 30 March 2015. The evidence provided does not conclusively establish that the entire rights and obligations relating to the appeal were transferred to Johnson Matthey PLC.

An opposition pending before the EPO may "be transferred or assigned to a third party as part of the opponent's business assets together with the assets in the interests of which the opposition was filed" (G 4/88 [order], G 2/04 [2.2.2]).

T 2416/12 - 17 years pending, remittal

Key points

• This is an examination appeal. 17 years after the filing date (Euro-PCT, not a divisional), the case is remitted back to the Examining Division.
• Filing date 12.02.1999, entry into the European phase 11.09.2000 , first Communication in 2006, second in 2008, summons in 2012, Notice of appeal also in 2012. Board remits the case. 
• The Examining Division has meanwhile issued an Intention to grant within a few months from the remittal. 
• " In the further prosecution of the case, the Examining Division may want to take into account the observations made in the Board's communication with regard to the prior art cited in the first-instance proceedings. The Board further notes that minor corrections of the claims may be required (e.g. "dependent" rather than "dependant" in claim 1)." The ED issued the Rule 71(3) directly  after the remittal, with the typographic error in claim 1. 

EPO T 2416/12 - link

Reasons for the Decision 
[...] 

Further prosecution

7. For the reasons given above, the Board does not uphold the clarity objections raised in the decision under appeal. Moreover, the Board is satisfied that the claims of the main request overcome the objections raised under Article 84 EPC in the appeal proceedings, fulfil the requirements of Article 123(2) EPC and define subject-matter which is new over document D1. It follows that the grounds on which the decision under appeal was based do not apply.

8. The Board further concludes from the above discussion that the Examining Division incorrectly mapped the tracking and storage at the search engine to features of a browser or client. As a consequence, it did not take into account important features of the claimed invention, which have been further clarified in the appeal proceedings.

9. Under those circumstances, and in spite of the long duration of the proceedings thus far, the Board is not minded to assess inventive step in the appeal proceedings.

In accordance with Article 111(1) EPC, the case is therefore to be remitted for further prosecution by the first-instance department. This is in accordance with the procedural suggestion made by the Board in its communication and accepted by the appellant (see sections III and IV above). The decision can therefore be taken without oral proceedings.

10. In the further prosecution of the case, the Examining Division may want to take into account the observations made in the Board's communication with regard to the prior art cited in the first-instance proceedings. The Board further notes that minor corrections of the claims may be required (e.g. "dependent" rather than "dependant" in claim 1).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.

T 0243/14 - Multiple independent claims in opposition

Key points

• Rule 43(2) does not apply in opposition. If claim 1 as granted is not inventive, you can split it up in two independent claims, with two different and unrelated features that each provide inventive step. The patentee did precisely this in the present case in Aux Req 1 before the OD. However, the procedural status becomes not so straightforward. 
• The OD did not admit AR-1, the Board does admit it. The OD found AR-2 with only one of the two independent claims (of AR-1) to be allowable. The opponent did not appeal. Therefore, in AR-1 with two independent claims, only the second independent claim (claim 3) is open to examination in appeal. 

IV. The decision was based on the claims of the patent as granted as main request and two auxiliary requests.

The differences in auxiliary request 1 compared to the main request, insofar as relevant to the present decision were that:

- Claim 1 specified the chemical nature of the initiating functional groups;

- Claim 3 - newly introduced as a further independent claim - differed from granted claim 1 by specifying that:

"said photoreactive polymer has at least five initiating functional groups on the dendritic polymer core".

Auxiliary request 2 differed from auxiliary request 1 in deletion of claim 3 with consequential renumbering of the remaining claims.

V. According to the decision the main request did not meet the requirements of Article 56 EPC. [] Auxiliary request 1, which had been filed during the oral proceedings was not admitted on the grounds that the amendment represented by claim 3 thereof, relying on features of the description, could not have been expected by the opponent.

Auxiliary request 2 also filed in the oral proceedings, but lacking claim 3 of the first auxiliary request was held to meet the requirements of Article 56 EPC since there was no incentive in the prior art to provide a photoreactive polymer having the defined initiator groups and co-initiators bound to a hyperbranched polymer core.

VI. The patent proprietor filed an appeal against the decision.

Reasons for the Decision

1. Admissibility of the main request.

T 0395/16 - Appeal and deemed withdrawn application

Key points

• In this examination appeal, the applicant requested a reimbursement of the appeal fee. During the appeal period, the application became deemed withdrawn due to failure to pay the renewal fee. Does the Board needs to decide on the request for reimbursement of the appeal fee?
• The Board finds that it does need to decide based on G 8/91. 
• The alleged procedural violation was that a decision was taken at the oral proceedings that the professional representative could not attend because " the lack of instructions from its client [the applicant] due to serious and unexpected health problems experienced by the [CEO] of the applicant during the period between the deadline for filing the written submissions and the oral proceedings" 
• The Board finds that "the examining division had no reason not to proceed in its absence and no substantial procedural violation was committed". The Board also recalls that " [where] oral proceedings are held the decision taken orally becomes effective by virtue of its announcement and cannot be amended even by the department that issued it" .

EPO T 0395/16 - link

Reasons for the Decision

1. The appeal is admissible.

2. As announced with email dated 25 July 2017 the appellant did not attend the oral proceedings. In accordance with Rule 115(2) EPC and Article 15(3) RPBA, the proceedings were continued in its absence.

3. According to Rule 103(1) (a) EPC, the appeal fee is reimbursed when a board deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

3.1 A review of the decision under appeal, as to its merits, is no longer possible as the European patent application no. 07710600.3 was deemed to be withdrawn under Article 86(1) EPC and hence the appeal to this respect is not allowable.

T 2324/14 - The meaning of "not admitting"

Key points

• In this examination appeal case, an auxiliary request was not admitted under Rule 137(3) EPC by the Examining Division because prima facie it did not overcome the deficiencies of the main request. The Board needs to decide whether the ED actually did  not "admit" the request in the sense of Article 12(4) RPBA, or did something else with the request. The issue is that the Examining Division that the auxiliary request "prima facie [... did] not overcome the objections" raised against the main request. However, it then indicated which specific objections were not remedied. 
• "The board considers that, contrary to the wording of the decision, the examining division did not limit its examination of the auxiliary request to prima facie considerations. It concludes that the discretionary decision was incorrect even though it was based on right principles (see G 7/93, reasons 2.6). In fact, the examining division considered the auxiliary request fully, since it was able to give sufficient reasons for its conclusion that a patent could not be granted on the basis of the auxiliary request. The examining division thus having considered the auxiliary request fully, the board takes the view that there was no discretion left for the examining division "not to admit" it." Therefore, the Board considers that Article 12(4) RPBA obliges it to take into account the request at issue.
• The Board makes some interesting observations about some basic terminology in the EPC. "The EPC does not define what it means for an examining division to give or deny its consent to an amendment under Rule 137(3) EPC." "[The] EPC also does not specify what it means for a submission to be "admitted"." 
• " The EPC also does not define how the examining division should exercise its discretion under Rule 137(3) EPC. The boards of appeal have, however, accepted that the examining division may base its decision to deny consent to an amendment on prima facie considerations and that it may deny its consent to an amendment with prima facie deficiencies. 
• "A prima facie judgment is one which is made at first sight and is commonly understood to be one assumed to be correct until proven otherwise."

EPO  T 2324/14 -  link

Reasons for the Decision

The decision of the examining division

not to admit the auxiliary request

1. The decision under appeal objected that claim 1 of the main request lacked clarity and sufficient disclosure (see reasons 1-1.1.2 and 2-2.4.2). It then observed that claim 1 of the (first) auxiliary request still contained at least some of the expressions found to be unclear (reasons 3.1) and did not remedy "in any way" the lack of disclosure (reasons 3.2). In view of this, the examining division found that the auxiliary request "prima facie [... did] not overcome the objections under Article 84 EPC and Article 83 EPC", and thus it did not give its consent under Rule 137(3) EPC to the auxiliary request (see reasons 3).

2. Under Rule 137(3) EPC, "No further amendment may be made without the consent of the Examining Division". The examining division therefore had discretion to deny its consent to the auxiliary request.

2.1 Like any other decision open to appeal, the discretionary decision to deny consent to an amendment must be reasoned (Rule 111(2) EPC). In giving reasons for its decision, the examining division acted correctly in this respect, too.

2.2 The EPC does not define what it means for an examining division to give or deny its consent to an amendment under Rule 137(3) EPC.

T 0630/11 - The notional business person

Key points

• In this well written decision in an examination appeal, the Board finds lack of inventive step for the claims of this application directed to online poker.
• " The description explains that the principal aim of the invention is to reduce the time players spend waiting. [] This aim is achieved by pooling players from a plurality of online casinos. "
" In CardinalCommerce [T 1463/11 of 27.04.2017] , the Board stated that the notional business person (more generally, the non-technical person) cannot normally require even notorious technical means. The reason is that the inventor may have obtained a technical effect using technical means, even notorious means, in a way that would not have been obvious to the skilled person. That is what a patent is meant to reward. To allow the notional business person to prescribe technical means would be to foreclose any discussion of whether they were used in a technically non-obvious way. This should not lead to a proliferation of patents for technically trivial inventions; they would be obvious to the skilled person. [The applicant] submitted that, in applying the Comvik approach, particularly in the light of CardinalCommerce, the business person cannot make requirements that have technical implications. The Board disagrees."

EPO T 0630/11 -  link

Reasons for the Decision

Introduction

1. The invention is about online gambling. It is described in terms of poker, but it could be any zero-sum game with (monetary) winnings and losses. In the variant considered, a game requires at least four players and has a maximum of eight. If there are only three players, they will have to wait for a fourth. If there are nine, one will be left waiting. The description explains that the principal aim of the invention is to reduce the time players spend waiting.

T 1432/12 - Interlocutory revision

Key points

• This decision is about an examination appeal, with amended claims filed on appeal, and wherein the ED did not grant interlocutory revision.
• " Since with the set of claims filed together with the grounds of appeal, the appellant overcame all objections raised by the examining division in their communication dated 28 September 2011 [referenced in the refusal decision according to the state of the file], and no opinion on the potential inventive step of the subject-matter as now claimed can be found in the said communication, the examining division should have rectified its decision under Article 109(1) EPC" 
• The Board's decision is in line with the Guidelines which state that " clearly overcome the grounds for refusal, interlocutory revision should be granted even if further new objections arise" (E-XII, 7.4.2). 

3. Article 109 EPC

3.1 The examining division, referring to D3 and in particular to the spaceblocks 148 shown in figure 8 of D3, which are provided with a C-formed concave surface 146, considered that the subject-matter of claim 1 then on file differed from the machine known from D3 only in that the paddles were formed of rectangular flat plates.

The examining division was of the opinion that:

- the problem of improving air flow through the rotor winding ends was not solved in a machine according to claim 1,
- no technical problem was apparently solved by the identified difference in combination with the other features of claim 1, and
- the replacement of the re-entrant portion 154 of the spaceblocks of D3 (see figure 8) comprising the sidewall portions 162, 164 by flat rectangular plates forming the paddles resulted in a non-functional modification (see item 3 of the communication dated 28 September 2011).

The examining division then concluded that the subject-matter of the claim 1 filed with the letter dated 28 September 2011 lacked an inventive step (Article 56 EPC) having regard to D3.

T 1775/14 - No consideration for US style drafting

Key points

• For Article 123(2), the patentee argued that  " it should be taken into account that the patent in suit was based on US priority documents and on a US-PCT application so that, although the original set of claims was worded in accordance with American practice, the skilled person would understand that multiple dependency of the dependent claims was contemplated." 
• The Board is not convinced. Because of G 2/10 " the question whether the amended claims are based on an application filed in the US or in Europe cannot play a role" .

T 1775/14 -  link

4.1 The appellants argued that the combination of features now being defined in claim 1 was derivable from the combination of claims 1, 7 (feature B)(i)), 8 (feature B)(ii)), 18 (feature C1)) and 19 (feature C2)) as originally filed.

4.1.1 However, each of original claims 7, 8, 18 and 19 was only dependent on original claim 1. Therefore, the combination of claims 1, 7, 8, 18 and 19 cannot be held to be directly and unambiguously derivable from the original set of claims. In particular, the original set of claims can neither provide a valid support for the combination of features B)(i) and B)(ii) nor of features C1) and C2). Nor can it provide a valid basis for the combination of all those features together.

4.1.2 In that respect, the appellants argued that it should be taken into account that the patent in suit was based on US priority documents and on a US-PCT application so that, although the original set of claims was worded in accordance with American practice, the skilled person would understand that multiple dependency of the dependent claims was contemplated.

T 0181/14 - No re-establishment opponent

Key points

• In the present opposition appeal case, the opponent had filed the Notice of appeal late and had requested re-establishment of rights. The Board refuses the request. Following G 1/86 and established case law, re-establishment is only available for an opponent for missing the time limit for filing the Statement of grounds. 

EPO T 0181/14 -  link

Motifs de la décision

1. En vertu de l'article 108, première phrase CBE, le recours doit être formé dans un délai de deux mois à compter de la signification de la décision. La deuxième phrase de cette disposition énonce que le recours n'est réputé formé qu'après le paiement de la taxe de recours.

2. En l'espèce, la décision faisant l'objet du recours a été émise le 29 novembre 2013 et le délai spécifié à l'article 108, première phrase CBE a expiré le 9 février 2014. La taxe de recours n'ayant pas été acquittée dans ce délai (elle a été payée le 28 mai 2014), la requérante a été informée par notification du greffe de la Chambre de recours datée du 10 avril 2014, conformément à la règle 112(1) CBE, que le recours était réputé non formé en application de l'article 108, deuxième phrase CBE. La requérante n'a pas contesté cette conclusion ni demandé que la question soit tranchée par une décision au titre de la règle 112(2) CBE. Par conséquent, la conclusion ci-dessus est devenue définitive. Le recours est donc réputé ne pas avoir été formé pour autant que la requête en restitutio in integrum du requérant ne soit pas jugée recevable.

T 2371/13 - Plausibility and the PSA

Key points

• In this opposition appeal, the issue is whether the alleged technical effect is credible. Comparative tests results were filed. The Board admits these test results, because not admitting them on the ground that the application as filed contains no experimental results, is incompatible with the problem and solution approach. 
• The opponent's argument for non-admissibility was in particular that it had learned in parallel US litigation that Examples 1-4 in the application were virtual (had not been actually carried out) and the results stated therein had been mere predictions. Therefore, the claimed invention was prima facie lacking inventive step. 
• As a comment, the oral decision in this case was taken before the written decision in T 0488/16 about the requirement that the application as filed makes the technical effect plausible (in a medicines case). On the other hand, the present Board found it useful to add a headnote to the written decision. 

EPO Headnote
Un défaut de plausibilité d'un effet basé sur l'absence de preuve dans la demande du brevet n'est pas un motif suffisant pour écarter des essais comparatifs déposés ultérieurement et visant à prouver cet effet. Les écarter pour cette raison est incompatible avec l'approche problème/solution qui demande de définir un problème technique à partir du document de l'état de la technique le plus proche, qui n'est pas forcément celui cité dans la demande de brevet.

EPO T 2371/13 - link

6. Succès

6.1 Admissibilité des essais comparatifs dans la procédure de recours

6.1.1 La partie de droit à la procédure [respondent - opponent] a demandé à ce que tous les résultats d'essais expérimentaux déposés par l'intimé après la date de dépôt du brevet litigieux soient écartés de la discussion de l'activité inventive, et par conséquent, qu'ils ne soient pas pris en compte pour la démonstration d'un l'effet sur l'homogénéité de la composition. La demande telle que déposée ne contenait aucune donnée expérimentale, ni sur les colorations encore moins sur la prétendue amélioration de l'homogénéité. Il n'avait donc pas été rendu plausible à la date de dépôt de la demande que les compositions selon l'invention conduisent à des colorations plus homogènes que celles de l'état de la technique. L'intimé avait reconnu dans la procédure aux Etats-Unis impliquant l'équivalent US du brevet litigieux que les exemples 1 à 4 n'étaient que des exemples virtuels et prédisaient simplement les colorations qui seraient obtenues par des compositions du brevet litigieux. La demande telle que déposée n'était que purement spéculative et aucune invention n'avait été réalisée à la date de dépôt de la demande. Dans ces circonstances, l'invention revendiquée manquait prima facie d'activité inventive.

T 1758/15 - Not a second medical use

Key points

• Claim 1 is directed to "a biocompatible, biodegradable filler material for injection and for use in radiation treatment [wherein the filler is injected between a first and a second tissue and] educes passage of radiation into the second tissue" . The composition is not further defined and e.g. collagen can be used. The Board finds that the claim is not novel, because it is not a proper second medical use claim. The Board notes that the effect is by the filler spacing the second tissue apart from the radiation source, e.g. by its 3D shape. Therefore "the accumulated mass of the filler material does not, however, qualify as a chemical entity or composition of chemical entities in the sense of G 5/83."
• For Auxiliary Request 1,  claim 1 "defines a method of injecting a biocompatible, biodegradable filler material into a space between the prostate and the rectum. " This is considered a method of treatment by surgery. 
It is noted that [claim 1 of a further request"  additionally comprise a disclaimer "excluding methods according to Article 53(c) EPC". In view of the above analysis, the disclaimer essentially deprives the claim of any content. In addition to not being allowable under Article 53(c) EPC, these claims are thus internally contradictory and hence not clear (Article 84 EPC).
• The Board also sees a substantial procedural violation because the OD announced that it would not accept further auxiliary requests during the oral proceedings, after the patentee requested to file an additional auxiliary request. The OD indicated that "the opposition division considered four attempts (Auxiliary requests 1-4) to overcome a single issue sufficient and will not admit an additional Auxiliary Request into the proceedings"
• " Therefore, - the [patentee]'s explicit request to be allowed to file a further request having been refused upfront - the opposition division was not in a position to consider and weigh up in this respect the relevant facts of the particular case. Without knowing the content of the request, it was impossible e.g. to assess whether the amendments were appropriate, i.e. a fair attempt to overcome the objections, and whether or not the request was prima facie allowable.
The opposition division thus concluded, in an unjustified manner, that four auxiliary requests (of which only three had been filed during the oral proceedings) were enough. It thus did not exercise its discretion pursuant to Rule 116(2) and Article 114(2) EPC in a reasonable way, which constitutes a substantial procedural violation."

EPO T 1758/15 -  link

V. Claim 1 of the main request reads as follows:

"A biocompatible, biodegradable filler material for injection and for use in radiation treatment whereby the filler is injected into a space between a first tissue of a body and a second tissue, and whereby the first tissue is treated by radiation whereby the filler within the space reduces passage of radiation into the second tissue."

Reasons for the Decision

1. Procedural violation

1.1 Denial of the opportunity to file an additional request

1.1.1 The appellant essentially complains that although the objection under Article 54(5) EPC had only been introduced by the respondent with submission dated 15 May 2015, the opposition division - after accepting two genuine and bona fide requests into the proceedings - arbitrarily refused to admit a further request, before even seeing it. The respondent, on the other hand, essentially argues that the opposition division never refused to entertain further requests because none had actually been filed, the extremely late filing of several auxiliary requests being in any case an abuse of procedure.

T 0128/14 - Respondent needs to respond

Key points

• If an opponent appeals, the patent proprietor needs to submit with its Statement of response any auxiliary requests that are responsive to opponent's arguments why the impugned decision is incorrect. The patent proprietor can not file such requests after the preliminary opinion of the Board, even if (as in the present decision), that is "the first time that an indication [comes] from an organ of the European Patent Office that there might be deficiencies with the patent". 
• The Board finds that argument of patentee for admissibility  not convincing, and comments that " it does not serve to justify the admissibility of these late filed requests. This is in particular because the Board did not take position on matters going beyond those set out in the submissions of the parties. The appellant [opponent] in the statement of grounds of appeal explained why it considered the conclusions of the opposition division to be incorrect. It was incumbent on the respondent [patentee] to formulate requests to address all the arguments put forward, in particular insofar as the appellant [opponent] considered the conclusions of the opposition division flawed.

6. Fourth to sixth auxiliary requests - admittance

These requests were filed after issue of the communication of the Board [annexed with the Summons]. The initially filed versions contained an error which was noted by the Board and resulted in a [second] communication, leading to corrected versions being submitted.

All of these requests present various combinations of subject matter resulting in part from restrictions of existing features (fourth and fifth auxiliary requests) or additionally specifying the nature of the contents of the packaged product (sixth auxiliary request) - see section VIII, above. This gives rise to questions concerning the basis for the amendments made (Article 123(2) EPC).

In the letter filing these requests explanations as to the rationale and the issues which these were intended to address were provided. These explanations however referred in a large part on the submissions made in the response to the statement of grounds of appeal and a subsequent letter, prior to issue of the summons by the Board. Crucially the respondent did not explain whether or in what manner the amendments resulting in the fourth to sixth auxiliary requests were directed to addressing the issues identified as significant by the Board in its communication [annexed with the Summons. This in turn leads to the conclusion that the amendments made could in fact have been filed earlier in the appeal proceedings.

The argument of the respondent that the communication of the Board was the first time that an indication came from an organ of the European Patent Office that there might be deficiencies with the patent is not convincing and does not serve to justify the admissibility of these late filed requests. This is in particular because the Board did not take position on matters going beyond those set out in the submissions of the parties. The appellant in the statement of grounds of appeal explained why it considered the conclusions of the opposition division to be incorrect. It was incumbent on the respondent to formulate requests to address all the arguments put forward, in particular insofar as the appellant considered the conclusions of the opposition division flawed.

In addition it is not immediately apparent for the Board how these requests would address all the pending issues, in particular with respect to inventive step.

Under these circumstances the Board finds it appropriate to exercise its discretion under Article 13(1) RPBA by not admitting the fourth to sixth auxiliary requests to the procedure.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

T 1889/13 - Same Board members as before

Key points

• In this opposition appeal, two members of the Board had also taken part in an earlier decision in an examination appeal about a divisional application of the present patent. The patentee raises an objection of suspected partiality.
• " The appellant argued that a board should not be put in a position wherein its members are forced to either confirm or not their previous own judgment. However, the right to a lawful judge also includes the right to a judicial body having a foreseeable composition in accordance with a predetermined business distribution scheme. There may be unavoidable conflicts between the wish for a completely detached board and the requirements of the business distribution scheme from which deviations are allowed only in specific circumstances. In cases where three or more proceedings are related to each other (e.g. a parent and two divisional applications), it would normally be impossible to compose three non-overlapping boards within the business distribution scheme." 
• The objection is dismissed. 

EPO T 1889/13 - link

Summary of Facts and Submissions

I. The appeal lies from the decision of the opposition division to revoke European patent No. 1 458 425.

II. In its statement setting out the grounds of appeal, the appellant (patent proprietor) requested that the members of the board who were involved in decision T 1676/11 (not published in OJ EPO) relating to divisional application No. 09159082.8 of the opposed patent be excluded from taking part in the present appeal proceedings for suspected partiality under Article 24(3) EPC.

The members who took part in T 1676/11 and who are affected by the objection are the chairman and the rapporteur of the board in its original composition.

Reasons for the Decision

1. Scope of the interlocutory decision

The present decision was taken by the alternate board composition established under Article 24(4) EPC in order to decide on an objection of suspected partiality raised under Article 24(3) EPC (see above points II, VI). In accordance with the procedure described in decision T 1028/96, the board in its original composition decided in its interlocutory decision of 20 May 2015 that the objection was admissible (see above point V). Said interlocutory decision is binding on the present (alternate) board. The scope of the present decision is therefore limited to the allowability of the objection of suspected partiality.

2. Allowability of the objection

2.1 Legal basis of the objection

2.1.1 The appellant has not argued that there was any reason for exclusion under Article 24(1) EPC, nor does the present board see any basis for the application of Article 24(1) EPC either. The appellant raised an objection for suspected partiality under Article 24(3) EPC only. Under Articles 24(3) and 24(4) EPC, the deciding board should apply a twofold test, namely:

- Firstly a "subjective" test "in concreto" requiring evidence of actual partiality of the member or members concerned;

- Secondly an "objective" test "in abstracto" to determine if the circumstances of a case would allow a reasonably objective and informed person to conclude that he or she might have good reason to suspect the partiality of the member concerned.

(see G 2/08, interlocutory decision of 15 June 2009, not published in OJ EPO, Reasons point 4)

T 0797/14 - Commercially available but insufficiently disclosed

Key points:

• In this opposition appeal, claim 1 is directed to a container with a coating comprising an ethylene-tetrafluoroethylene copolymer . The copolymer is a key element of the claimed invention. This causes a problem with sufficiency of disclosure.
• " It appears however that the preferred and unique coating composition disclosed by the contested patent, namely the product Flurotec**(TM), has a composition and method of production which is not of public knowledge and is kept secret by the manufacturer".  Said Flurotec**(TM) coating is a known commercial product and is mentioned in several cited documents, such as the commercial brochures or Internet commercials [] but none of said documents brings further details as regards the structure and composition of the coating composition Flurotec**(TM)." 
• " The Board comes therefore to the conclusion that the essential element of the claimed invention, namely the coating composition Flurotec**(TM), is not of public knowledge and that there is also not enough information available to the skilled person for him to reliably determine the composition or structure of the product. The counterpart of a monopoly by a patent is however the disclosure of the invention, in particular of its essential elements, and not the provision or use of a commercial product which structure and composition are not public." 
• As a comment, this appears to be a patent of genuine user and buyer of the commercial polymer, not of the manufacturer.

EPO T 0797/14 - link

2. Main request - Article 100(b) EPC

2.1 Claim 1 is directed to a radiopharmaceutical composition supplied with a container sealed with a closure coated with a coating comprising an ethylene-tetrafluoroethylene copolymer (ETFE). Dependent claim 4 is directed to a specific closure coating made from the modified ETFE coating Flurotec**(TM). Said coated closure is the key element of the claimed invention, the selection of the claimed closures having an ETFE coating having indeed been shown to be particularly suitable for radiopharmaceuticals, since their purity and integrity composition is maintained during manufacture, transport and clinical use (see par. [0008], [0009], [0040] of the specification).

2.2 More precisely, the coating of the closures is made from a coating composition comprising an ethylene-tetrafluoroethylene copolymer, preferably a modified ETFE commercialised by Daikyo Seiko as Flurotec**(TM), as disclosed in the application as originally filed on page 13 (see also the specification in par. [0042]-[0044], [0050]). Said commercial product Flurotec**(TM) is the only coating composition disclosed in the description of the contested patent and all examples of the contested patent disclose closures coated exclusively with said Flurotec**(TM) coating.

2.3 It appears however that the preferred and unique coating composition disclosed by the contested patent, namely the product Flurotec**(TM), has a composition and method of production which is not of public knowledge and is kept secret by the manufacturer, Daikyo Seiko Ltd or its licensee Westpharma (see description of the contested patent par. [0050]).

T 0169/14 - Apportionment of costs and OP

Key points

• In this opposition appeal case, the appellant (proprietor) informed the Board with a letter sent a few days before the oral proceedings, that it would not attend them. The Bord cancelled oral proceedings. The respondent requested that Board would order the appellant to pay its expenses for flight tickets.
• " In the board's view, there is an equitable obligation on every party summoned to oral proceedings to inform the EPO and the other party as soon as possible, once it has decided that it will not be attending or is withdrawing its request for them. Consequently, in cases where a party unduly delays its decision not to attend the oral proceedings, or the withdrawal of its request for them, or its communication of this to the board, an apportionment of costs in favour of the other party could be justified if the costs were directly caused by the fact that the notice was not filed in due time." 
• The Board does not order the apportionment of costs, mainly because the appellant had sent a copy of its letter to the respondent's attorney, and because it had included substantive arguments with its letter. 

EPO T 0169/14 -  link

Summary of Facts and Submissions

I. This case concerns an appeal filed by the patent proprietor (henceforth, the appellant) against the decision of the opposition division to revoke European patent []. [...]

IX. In a letter dated 10 November 2016, in response to the board's communication, the appellant provided further arguments, informed the EPO that he would not be attending the oral proceedings and withdrew his request for oral proceedings. The last line on page 3 of this letter reads as follows: "cc: Regimbau (Lyon office), Attn. [mr. X], Ref: OB0011 (by email)".

X. In a communication from the board dated 11 November 2016 and faxed to the parties the same day, the parties were informed that the oral proceedings scheduled for 16 November 2016 had been cancelled and that the proceedings would be continued in writing.

XI. In its letter dated 15 November 2016, the respondent submitted that it had incurred costs due to the late cancellation of the oral proceedings and requested that, pursuant to Article 16 RPBA, its representative's fees for preparing the oral proceedings before the board and his non-refundable travel expenses for the flight ticket be fully borne by the appellant. []

Reasons for the Decision

[] 2. Allowability of the appeal - claim 1 of the patent as granted - added subject-matter []

2.7 The board concludes that the ground for opposition pursuant to Article 100(c) EPC 1973 prejudices the maintenance of the patent as granted and, consequently, sees no reason to remit the case to the opposition division for further prosecution.

2.8 It follows that the appellant's main request is not allowable and, consequently, that the appeal is to be dismissed.

3. Apportionment of costs

3.1 After cancellation of the oral proceedings appointed for 16 November 2016, the respondent requested that, pursuant to Article 16 RPBA, its representative's fees for preparing them and his non-refundable travel expenses for the flight ticket, be fully borne by the appellant.

T 1995/15 - Unusual parameter

Key points

• In this examination appeal, claim 1 was directed to a lighting device wherein "at least 50% of light entering the diffuser exits in an exit pattern regardless of an entrance pattern", i.e. a device claim with a parameter.
• "When relying on an unusual parameter ("at least 50% of light entering the diffuser exits in an exit pattern regardless of an entrance pattern"), the onus is on the appellant to establish novelty over the lightening device of D5 for which, unless otherwise evidenced, there is no reason to doubt that it implicitly fulfils this parameter" 

EPO  T 1995/15 -  link

(a) Main request

Claim 1 reads as follows:
"A lighting device, comprising:
at least a first solid state lighting device; and
at least a first patterned diffuser comprising a plurality of optical features,
(1) said first solid state lighting device positioned relative to said first patterned diffuser,
and (2) the first patterned diffuser configured, such that if said first solid state lighting device is illuminated so that said first solid state lighting device emits light, (a) at least some of said light emitted by said first solid state lighting device enters said first patterned diffuser and exits said first patterned diffuser, in an exit pattern such that a projected pattern of the emitted light would be produced on a structure having a flat surface positioned in the path of the emitted light and substantially perpendicular to the path of at least a portion of the emitted light, and (b) regardless of an entrance pattern of the light that enters said first patterned diffuser, at least 50% of said light entering said first patterned diffuser exits said first patterned diffuser within said exit pattern."

Reasons for the Decision

1. Main Request

1.1 Novelty (Article 54 EPC)

1.1.1 D5 is a print out of the slides which were presented at the SPIE 2006 Annual Conference in San Diego(see page 1 of D5) on 17 August 2006 as evidenced by D6 (pages 1 and 196).

The public availability of D5 before the priority date of the present application was not disputed by the appellant.

T 2331/14 - No re-establishment for intentional action

Key points:

• The applicant missed the time limit for filing a Notice of appeal and requests re-establishment of rights. This is denied. 
• " So, if anything, it can be concluded that, when [the applicant] was contacted by [the patent attorney], no decision had been taken yet on whether to file an appeal; rather a decision-making process was still ongoing. [] Since [the patent attorney] did not receive any instructions to file an appeal before expiry of the relevant time limits, it can only be speculated what the outcome of the decision-making process at that time was. Under these circumstances, the burden would be on the appellant to prove that, when the relevant time limits expired, it had had the intention of filing an appeal[]. Since the appellant has not provided any such proof, the board has to assume that there was no such intention. Not filing an appeal within the relevant time limits is thus to be considered to have been a deliberate choice rather than a mistake on the part of the appellant. However, an intentional action cannot be cancelled by means of Article 122 EPC" 
• In this case, there is a remarkable number of changes of patent attorney and attorney firms, as well as changes in names and legal identities of the applicant, but these are not relevant for the re-establishment request. 

EPO T 2331/14 - link

Reasons for the Decision

1. Identity of the appellant/representation

1.1 At the date of the oral proceedings before the board, the appellant entered in the European Patent Register was still Huvepharma EAD although in the meantime Huvepharma EOOD had been mentioned in various letters (see points VIII and X above). The appellant's professional representative during those oral proceedings was Mr Radkov. The authorisation D14 that he filed during the oral proceedings was, however, signed on behalf of Huvepharma EOOD. Thus Mr Radkov was duly authorised only if the appellant was not the one entered in the European Patent Register, but Huvepharma EOOD.