T 0846/16 - Admissibility arguments before appeal

Key points

• In this opposition appeal, the Board considers the opponents's appeal admissible. The patentee had argued that Rule 99(2) was not complied with, because opponent's line of argumentation in the Statement of grounds was new. The Board considers that "this new line of argumentation is the reaction of the opponent to the changes in argumentation of the patent proprietor and a corresponding change in opinion of the opposition division which occurred only very late in the proceedings, i.e. during the oral proceedings before the opposition division."
• "The board thus concludes that the opponent was confronted with a new situation regarding the opposition ground under Article 100(c) EPC during the oral proceedings before the opposition division. Under such circumstances, the board considers it as an appropriate procedural reaction of the opponent to change their corresponding argumentation under Article 123(2) EPC during the appeal proceedings. Consequently, the board concludes that the appeal complies with Rule 99(2) EPC and Rule 101(1) EPC."
• The Board then decides that essentially because of the same reasons, the new arguments are admissible under Article 12(4) RPBA.
• As a comment, Article 12(4) RPBA gives a power to hold inadmissible  "facts, evidence or requests " filed with the Statement of grounds, but does not refer to holding arguments inadmissible. 
• As a further comment, there is some precedent for considering the admissibility of arguments prior to considering the admissibility of the appeal (e.g. T 0501/09, appeal inadmissible because based on newly filed documents, which were inadmissible, in contrast recent T 0509/13). However, where Article 12(4) RPBA does not give a ground for holding arguments inadmissible, the same can not be factor for admissibility of appeal.

EPO T 0846/16 -  link

Reasons for the Decision

1. Admissibility of the appeal (Rule 101(1) EPC)

1.1 The appeal [of opponent] is admissible under Rule 101(1) EPC and complies with Article 12(2) RPBA.

Rule 101(1) EPC refers to Rule 99(2) EPC which requires that the statement setting out the grounds of appeal shall indicate the reasons for setting aside the impugned decision. Similar requirements can be found in Article 12(2) RPBA according to which the statement setting out the grounds of appeal shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed.

1.2 The respondent argued that these requirements are not complied with since there were allegedly no reasons for setting aside the decision and further the statement setting out the grounds of appeal concerned a new case.

The board does not share this view. Indeed, the statement setting out the grounds of appeal comprises a new line of argumentation of the opponent. However, this new line of argumentation is the reaction of the opponent to the changes in argumentation of the patent proprietor and a corresponding change in opinion of the opposition division which occurred only very late in the proceedings, i.e. during the oral proceedings before the opposition division.

Further, the statement setting out the grounds of appeal clearly states that the claims underlying the decision of the opposition division go beyond the application as filed, see for example page 3, second paragraph of the statement. From this content it can be deduced that the opponent wished the impugned decision to be set aside based on his new argumentation.

1.3 According to the impugned decision, the amended feature H) reading "the communication interface (27) is isolated from the first power source (40)", which formed part of the independent claims as granted, does not contravene Article 123(2) EPC. However, the opposition division had in the annex to the summons to oral proceedings indicated that the subject-matter of claim 1 of the patent, that already contained the disputed feature H), contravened Article 123(2) EPC. Thus, there was an unexpected change in the opinion of the opposition division during the oral proceedings.

1.4 The patent proprietor had also changed their argumentation only during the oral proceedings before the opposition division.

In their reply to the opposition dated 12 August 2014, the patent proprietor argued that the amended feature H) was allowable since the description of the A1 publication stated in paragraph [0008], that the isolation of the inverter system from the first power source is optional. Further, the text of the patent had, before grant, been corrected under Rule 139 EPC to state in paragraph [0031] that "the GND of the motor control circuit Ca has the same electrical potential (high voltage system GND) as the GND of a high voltage circuit Cb to which a high voltage is supplied from the high voltage power source". On the basis of this correction under Rule 139 EPC the patent proprietor argued that the motor control Ca was not isolated from the first power source since both shared the same ground (GND).

In response to the summons to oral proceedings dated 18 September 2015 the patent proprietor had argued that the amendments underlying the objection of the opponent under Article 123(2) EPC were the consequence of an error in the translation and that the opponent's arguments were therefore not relevant.

Thus, up until the oral proceedings before the opposition division, the patent proprietor had consistently stated that the amendment of both the description and claims of the patent as granted was the consequence of a translation error.

During the oral proceedings before the opposition division, however, the patent proprietor argued that there had been a mistake in originally filed claim 1 by claiming that the inverter system is isolated. The correct statement was "that the inverter uses an isolated inverter", which was evident from the description. The amendment was "thus not due to an error of translation". The fact that this statement was made with respect to an objection under Article 83 EPC has no bearing on its content, which is that during the oral proceedings before the opposition division the patent proprietor no longer stated that the amendments to the claimed subject-matter served to correct a translation error.

The patent proprietor's new arguments obviously caused the opposition division to reverse its opinion on this objection.

1.5 The board thus concludes that the opponent was confronted with a new situation regarding the opposition ground under Article 100(c) EPC during the oral proceedings before the opposition division.

Under such circumstances, the board considers it as an appropriate procedural reaction of the opponent to change their corresponding argumentation under Article 123(2) EPC during the appeal proceedings.

Consequently, the board concludes that the appeal complies with Rule 99(2) EPC and Rule 101(1) EPC.

The appeal is therefore admissible.

2. Admissibility of the appellant's new arguments (Article 12(4) RPBA)

Regarding the admissibility of the appellant's arguments under Article 123(2) EPC as such, the same reasoning as with respect to the admissibility of the appeal applies.

As discussed above, the argumentation of the patent proprietor regarding Article 100(c) EPC had changed only during the oral proceedings before the opposition division. Therefore, the board considers it as appropriate that the opponent brought forward new arguments in reaction to the change in argumentation of the patent proprietor and the change in the opinion of the opposition division in the opponent's statement of grounds of appeal.

The appellant's arguments regarding Article 123(2) EPC are therefore also admissible.

T 0646/13 - Clarity or insufficiency

Key points

• The opponent had requested a referral to the Enlarged Board about the question "If one or several features of a claim are so ill-defined that a skilled person does not know when he is working within the forbidden area of the claims, is this an issue to be addressed under clarity - Article 84, or under sufficiency of disclosure - Article 83" 
• The Board does not refer the question. "[More] importantly, decision T 464/05 forms part of a line of jurisprudence established between 2004 and 2007, which has not been generally followed since then [as explained in decision T 1811/13]. As today there is a clearly predominant opinion among the boards that the definition of the "forbidden area" of a claim should not be considered as a matter related to Articles 83 and 100(b) EPC (1973), the alleged contradiction between decisions T 464/05 and T 1811/13 does not exist. Rather than being in conflict, these decisions illustrate a development of the case law on a particular question over an extended period of time. " 

EPO T 0646/13 -  link

4. Request for referral of questions to the Enlarged Board of Appeal

4.1 The respondent requests that two questions relating to allegedly diverging jurisprudence by the boards of appeal on the issues of clarity of the claims and sufficiency of disclosure be referred to the Enlarged Board of Appeal (cf. point IX. above).

"In view of the contradicting positions taken in decision [sic] T 1811/13 and T 464/05 (and the decisions referred to) the following questions are referred to the EBoA

1. If one or several features of a claim are so ill-defined that a skilled person does not know when he is working within the forbidden area of the claims, is this an issue to be addressed under clarity - Article 84, or under sufficiency of disclosure - Article 83, i.e. whether the claimed invention was not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art?

2. If the answer 1 [sic] cannot be decided as such, what are the criteria for deciding whether such an issue is to be addressed under Article 84 or Article 83?"

4.2 Article 112(1)(a) EPC 1973 requires the board of appeal during proceedings on a case, and in order to ensure uniform application of the law or if an important point of law arises, to refer any question to the Enlarged Board of Appeal, either of its own motion or following a request from a party to the appeal, if it considers that a decision is required for the above purposes.

4.3 In the present case, the request for a referral hinges on an alleged contradiction between decisions T 464/05 and T 1811/13.

T 0029/16 - Appeal about adapting the description

Key points

• This is the second appeal in this opposition appeal case. In the first decision, the Board had remitted the case back to the OD with the order to maintain the patent in amended form with a description to be adapted. The Board finds a substantial procedural violation in how the OD handled this. In particular, the amended description as filed by patentee had been sent to the opponent with a Communication which did not set a time limit and did  not contain an invitation to comment. When the patent was maintained with the revised description (without oral proceedings, and without the opponent having given a reaction), the opponent appealed. 
• The Board finds that the opponent's right to be heard was violated, and in particular that Rule 82(1) was violated - this is the rule about the opposition procedure which is hardly used in practice because most of the times decision in opposition procedures are taken at oral proceedings. 
• Rule 82(1): "Before the Opposition Division decides to maintain the European patent as amended, it shall inform the parties of the text in which it intends to maintain the patent, and shall invite them to file their observations within two months if they disapprove of that text.".

EPO T 0029/16 -  link

Summary of Facts and Submissions

I. The appeal filed by the opponent lies from the interlocutory decision of the Opposition Division, posted on 4 December 2015, concerning maintenance of the European patent no 1 363 985 in amended form.

II. The impugned decision follows a first decision, T 130/11 dated 20 December 2013, by which the Board decided to remit the case to the Opposition Division with the order to maintain the patent on the basis of the claims according to the Main Request submitted with letter dated 6 December 2013, and of description and figures to be adapted thereto where appropriate.

III. In a communication dated 18 November 2014 the Opposition Division invited the "Applicant" [sic] to adapt the description and the drawings to the claims held allowable by the Board.

IV. On 18 March 2015 the Patent Proprietors submitted amended pages of the description and of the drawings.

T 0183/17 - Rule 116(2) EPC and absence at oral proceedings

Key points

• In this examination appeal, the applicant had filed a new Main Request one day before oral proceedings before the ED. The ED did not admit the request as not clearly allowable. The Board reviews this decision (as part of their discretionary decision under Article 12(4) RPBA to (not) admit the request in appeal). 
• The appellant also argued that when considering whether or not the amendments to the claims were "clearly allowable", it was not necessary for the amendments to resolve all minor issues. "These arguments [are] not persuasive because even if the examining division had been able to recognise the defects as being "minor", which is questionable, the fact that the applicant had chosen not to attend the oral proceedings meant that it would have involved a substantial procedural delay had the examining division postponed the oral proceedings to give the applicant an opportunity to remedy them. "
• As a comment, it does not seem very elegant to make the later absence at the oral proceedings a factor for admissibility of requests. In my opinion, admissibility of request must be decided on the basis of the state of the file at the date they are filed. Either the request is not admitted as not "clearly allowable", or the request is admitted and not allowed because of the minor issues. 
• Moreover, the Guidelines H-II 2.7.1. state that "clear allowability" means that "it must be immediately apparent to the examining division that the amendments successfully address the issues raised without giving rise to new ones". 

EPO T 0183/17 -  link

Reasons for the Decision

1. According to Article 114(2) EPC the EPO may disregard facts or evidence not filed in due time and according to Rule 116(2) EPC taken together with the third and fourth sentences of Rule 116(1) EPC to which it refers, new application documents (i.e. in the present case new sets of claims) which are presented after the final date fixed for making written submissions in preparation for oral proceedings need not be considered, unless they are admitted on the grounds that the subject of the proceedings has changed.

2. In the present case, the new main and three auxiliary requests were filed before the examining division on 27 June 2016 [one day before the oral proceedings of 28 June 2016 that the applicant did not attend], which was after the final date that had been fixed for making written submissions in preparation for oral proceedings. In considering whether the amendments were admissible under Rule 116(1) [and (2)] and Article 114(2) EPC, the examining division referred to Guidelines H-II, 2.7.1 and applied the principle that they should first consider whether the late-filed requests were allowable on a prima facie basis (see reasons for the decision, section I). The examining division applied this principle to each of the new requests and found that in each case the amendment was "clearly not allowable under Article 123(2) EPC" (see the conclusions reached at the end of each of the sub-sections A to D of section I of the reasons for the decision). In view of these findings the examining division exercised their discretion regarding these late-filed submissions and did not admit the main and three auxiliary requests filed on 27 June 2016.

3. On appeal the appellant has re-submitted the main and three auxiliary requests which were not admitted by the examining division.

4. According to Article 12(4) RPBA, the Board has the power to hold inadmissible requests which were not admitted in the first instance proceedings.

5. The case law regarding late submissions in general, independent of the preparation of oral proceedings governed by Rule 116 EPC, is summarised in the Case Law of the Boards of Appeal, Eighth Edition, section IV.E.4.3.3(a) under the headings "Filing of amended claims in appeal proceedings", "Ex parte appeal procedure", "Admission of requests already refused by the examining division".

There it is stated that it is the established jurisprudence of the boards of appeal that the power of the examining division to consent to amendments under Rule 137(3) EPC is a discretionary power. According to G 7/93 (OJ 1994, 775) the way in which the examining division should exercise its discretion to allow an amendment of an application must depend upon the circumstances of each individual case, and must also depend upon the stage of the pre-grant procedure which the application has reached. A board of appeal should only overrule the way in which a department of first instance has exercised its discretion if it comes to the conclusion either that the department of first instance, in its decision, has not exercised its discretion in accordance with the right principles or that it has exercised its discretion in an unreasonable way. The exercise of a discretionary power has to strike a balance between, in particular, the applicant's interest in obtaining adequate protection for his invention and the EPO's interest in bringing the examination to a close in an effective and speedy way. Moreover, the exercise of a discretionary power has to be reasoned, otherwise it would be arbitrary (T 246/08).

These considerations apply also when a board of appeal has to review the way in which an examining division has exercised its discretion under Rule 116(1) and (2) EPC in respect of the admission of amendments filed after the final date fixed for making written submissions in preparation for oral proceedings (see the last paragraph of the Case Law, section III.C.4.4).

6. In the present case the examining division applied the criterion of "clear allowability" set out in the Guidelines for Examination, H-II, 2.7.1, which is undoubtedly the right principle to have applied. Furthermore, when applying that criterion they gave an appropriate level of reasoning for the conclusion they reached, even if the conclusion under the "clear allowability" criterion should perhaps have been that the amendments were "not clearly allowable", rather than that they were "clearly not allowable".

7. The appellant argued that in coming to their conclusion the examining division had exercised their discretion unjustly because they had not taken into account that the expression "cable connection" in claim 1 was broad and could be construed either as being the "docking contact point" of the adaptor, as in claim 14, or as being some other unspecified connection. The Board considered these arguments to be of no relevance to the question at issue of whether the examining division had exercised their discretion in accordance with the right principles or had exercised their discretion in an unreasonable way.

8. The appellant also argued that when considering whether or not the amendments to the claims were "clearly allowable", it was not necessary for the amendments to resolve all minor issues. In the appellant's view it was sufficient that the main claims as amended provided a promising starting point and small issues of added subject-matter in a dependent claim, for example, could have been resolved after agreement had been reached on the main claims. These arguments were not persuasive because even if the examining division had been able to recognise the defects as being "minor", which is questionable, the fact that the applicant had chosen not to attend the oral proceedings meant that it would have involved a substantial procedural delay had the examining division postponed the oral proceedings to give the applicant an opportunity to remedy them. This would not have been in accordance with the need for procedural economy.

9. Taking all of these considerations into account the Board of Appeal came to the conclusion that they should not overrule the way in which the examining division exercised its discretion in this case and held the main and the three auxiliary requests that were re-filed on appeal to be inadmissible using the discretionary power afforded by Article 12(4) RPBA.

10. In the absence of an admissible request the appeal had to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.

T 0119/11 - 16 Years to refuse a business method

Key points

• PCT file in 1999, request for entry EP phase 18.05.2001, oral proceedings ED 27.05.2010, grounds appeal 02.12.2010,  oral proceedings of the Board 06.10.2017, written decision 25.01.2018.
• "As the application puts it, there is a need for an email system to track [] and store email messages, with other documents, in a database to insure that the email messages retained in the database may be the email messages an organization chooses to retain as their official records  [.] The invention stores what it calls an electronic tag that uniquely identifies an email (or other document). The tag is based on the user's profile and workstation. Based on the information in the tag, emails are monitored for compliance with the organization's policies."
• The Board applies the Comvik approach: "As claim 1 does not go beyond the definition of features that are strictly necessary to fulfil a non-technical requirement, the combination of features it defines would have been obvious for the technically-skilled person who has the task of fulfilling it."
• As a comment, perhaps the long pendency of the application is harmless (in view of the small chances of a patent ever being granted). On the other hand, the applicant has paid the renewal fees so there must have been some economic value in the possible monopoly on the claimed method.

EPO T 0119/11 - link

Reasons for the Decision

Background

1. The invention is concerned with emails written in the workplace. There may be legal requirements to retain certain emails, just as there may be personal or business interests in deleting them. Other emails should, for a variety of reasons, be deleted after a given period of time. Organisations need to manage the storage of emails to ensure that those that have to be kept are kept, and those that have to be deleted are deleted.

2. As the application puts it, there is a need for an email system to track, sort, index, manage, authenticate, purge and store email messages, with other documents, in a database to insure that the email messages retained in the database may be the email messages an organization chooses to retain as their official records versus unorganized messages that may have the potential to create a liability for the organization (published application, page 2, lines 15 - 19).

3. The invention stores what it calls an electronic tag that uniquely identifies an email (or other document). The tag is based on the user's profile and workstation. Based on the information in the tag, emails are monitored for compliance with the organization's policies.

T 2100/14 - The essentiality test still alive

Key points

• Board 3.2.03: "For the reasons detailed hereinafter, the board arrives at the same conclusion when applying the three-point essentiality test, namely that features A and B cannot be omitted in the independent claims (compared to PCT claim 1) without infringing Article 123(2) EPC"
• As a comment, see my earlier post about T 0046/15 about Board 3.2.04 no longer applying the essentiality test, following T 1852/13 of Board 3.2.05. 
• The Auxiliary Request is  not admitted. "First it is to be noted that the second auxiliary request is late-filed and that the appellant has neither indicated the amendments made to the claims nor explained where these amendments find support for their disclosure in the application as originally filed. [] These deficiencies alone could lead to the non-admittance of the second auxiliary request." 
• Furthermore, the AR corresponds to a request withdrawn before the ED. "If the board were to admit such a [previously withdrawn] request, it would be contrary to the main purpose of ex-parte appeal proceedings, which are primarily concerned with examining the contested decision [...]. [The] fact that the request was withdrawn before the issue of a reasoned decision on its merits by the examining division means that reinstating this request upon appeal would compel the board either to give a first ruling on the critical issues, [] or to remit the case to the department of first instance for further examination, which is clearly contrary to procedural economy. It is precisely with the purpose of forestalling these unsatisfactory options that Art. 12(4) RPBA provides the board with the discretionary power to hold inadmissible requests which could have been presented (and examined) (or were not admitted) in the first-instance proceedings."

EPO T 2100/14 -  link

Reasons for the Decision

1. Main request and first auxiliary request

Features A and B of claim 1 as filed or as published in WO-A-2007/006872 (WO):

A) a unit formed by at least a corrugated plate (10) of steel sheet mounted to be supported by steel support beams (14);
B) in which the corrugated plate (10) of steel sheet is mounted in the longitudinal direction of the balcony"

are omitted in claim 1 of both the main and the first auxiliary requests.

Corresponding features of independent method-claim 10 as filed/published have also been deleted in independent claim 10 of both the main and the auxiliary requests.

1.1 In its decision to refuse the application, the examining division arrived at the conclusion that the omission of features A and B in the independent device and method claims constituted a violation of Article 123(2) EPC by applying the essentiality test referred to in the EPO Guidelines H-V, 3.1.

1.2 For the reasons detailed hereinafter, the board arrives at the same conclusion when applying the three-point essentiality test, namely that features A and B cannot be omitted in the independent claims without infringing Article 123(2) EPC (see Case Law of the Boards of Appeal, 8th edition, 2016, II.E1.1.2.4, page 409).

T 0763/15 - Not admitting AR without debate

Key points

• The OD did not admit an auxiliary requests. However, in doing so the right to be heard was violated. This is a substantial procedural violation. 
" In the present case, the board cannot see any indication that the appellant was allowed to argue during the oral proceedings on the issue of admissibility of the auxiliary request 2 filed in writing on 5 November 2014. "
• For this reason alone [] the board comes to the conclusion that the patentee's right to be heard had been violated. Although an effective and efficient conduct of oral proceedings is subject to the discretionary power exercised by the chairman in oral proceedings with regard to specific issues, it must nevertheless guarantee that the fundamental procedural rights of each party in adversarial proceedings, i.e. the right to a fair and equal treatment, including the right to present comments in oral proceedings are respected (Articles 113(1) and 116 EPC).

EPO T 0763/15 -  link

3. Alleged procedural violations

3.1 The appellant alleges that its interests in defending its case had been seriously damaged in opposition proceedings in several respects (alleged procedural violations 1 to 3). Allegedly, the decision not to admit e.g. the auxiliary request 2 filed in writing on 5 November 2014 into the opposition proceedings was taken without giving the patentee the opportunity to argue on its admissibility (alleged procedural violation 1), thus violating the party's fundamental right to be heard.

3.2 According to the established jurisprudence, the right of any party for oral proceedings to be held on request and to present its case orally is absolute and, with respect to the party's right to be heard on its case, a more specific embodiment of the general principle enshrined in Article 113(1) EPC. Moreover, the parties' absolute right to be heard in oral proceedings, Articles 113(1) and 116(1) EPC, is not restricted to new and substantial arguments which have not yet been presented in writing (see R 3/10, Reasons 2.11).

T 2450/16 - No re-establishment

Key points

• The Board refuses a request for re-establishment in this examination appeal wherein no Notice of appeal was filed (the appeal fee was paid). The representative had delegated the filing of the appeal to an assistant, who forgot about the need to file a Notice of appeal. 
• " The board holds that, at least in the present case, the preparation of a notice of appeal by the representative's assistant []  cannot be considered to constitute a routine task that could rightfully be entrusted to her by a representative." 
• The representative submitted as argument that Online Filing (referred to as epoline®) was not particularly helpful. 
• "She was, however, confronted with completing this task in epoline®, which contained no clear indications concerning the initiation of an appeal procedure, apart from the payment of the appeal fee. In this respect the board notes that epoline® mainly deals with the electronic filing of documents with the EPO. In the board's understanding, it is not an electronic guide supposed to convey knowledge about the right document(s) to file in a given situation. Rather, the use of epoline® presupposes such knowledge. In other words: epoline® could by no means replace the need for the above-mentioned instructions from the representative." 
• I suppose that the real issue was that the assistant could (and did) book off the time limit on her own, without cross check, but the Board does  not comment on this. 

EPO T 2450/16 -  link

Summary of Facts and Submissions

I. The applicant requests re-instatement (re-establishment of rights) under Article 122 EPC in respect of the period for filing the notice of appeal against the decision of the examining division dated 22 June 2016 refusing European patent application No. 01 924 569.5.

II. The appeal fee was paid via epoline® on 18 August 2016. The grounds of appeal were filed via epoline® on 7 October 2016. On 13 October 2016 the EPO informed the applicant's representative by telephone that no notice of appeal had been filed.

[...]

Reasons for the Decision

Pursuant to Article 122(1) EPC,

an applicant for ... a European patent who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis the European Patent Office shall have his rights re-established upon request if the non-observance of this time limit has the direct consequence of causing ... the loss of any other right or means of redress.

The request for re-establishment of rights of an applicant with a professional representative acting on its behalf is only allowable if both the applicant itself and its representative have met the necessary standard of care (see T 1962/08, Reasons 5.1).

Whether or not these conditions, together with the concomitant requirements of the Implementing Regulations, are met and the request for re-establishment is to be granted (cf. Article 122(2) EPC) is the subject of the reasons for the present decision, which are given below.

J 0011/17 - PCT entry with RE but not FP

Key points

• This a Euro-PCT application with as applicant and inventor a person living in Bahrein. The applicant tried to carry out entry into the European phase himself, but he did not pay any fees.
• Only after quite some time, a professional representative (with office in Macedonia; possibly grandfathered) filed a request for re-establishment and paid the filing fee, search fee, designation fee and examination. However, the further processing fees were not paid. The FP fees were paid after the two month time limit for RE.
• Hence the Legal Board rejects the requested RE as inadmissible because it was filed late. The request is deemed to be filed when the omitted act was completed, i.e. the FP fees were paid as well. The applicant had some "unusual" argument about the FP fees being paid within the one year period for requesting RE, but to no avail. 
• It is of course positive that there are inventors and applicants from Bahrein, and representatives in Macedonia, but this does not seem to have been a particularly fruitful case. 
• Question: if the 31-months time limit expired 8 June 2015, can the EPO keep the third renewal fee paid on 21 September 2015? (as seems to be the case, according to the register?). In addition, there was a 2nd request for RE filed on 29 August 2017, relating to payment of the fourth renewal fee (the EPO sent out a communication about that fee, for some reason, see also Rule 514) EPC). Are any fees in connection with request to be refunded? (as may already been done, the documents tab in the online register is a mess for this application)

EPO J 0011/17 - link

Summary of Facts and Submissions

I. The appeal is directed against the decision of the Receiving Section dated 6 March 2017, in which the applicant's request dated 12 May 2016 for re-establishment into the time limit for further processing of International application PCT/IB 2013/054 458 was refused. The Receiving Section decided that the request for re-establishment was inadmissible for failure to pay the fee for further processing within the prescribed time limit.

II. The appellant lodged an appeal against this decision. The appellant requests that the decision of the Receiving Section be set aside and the request for re-establishment of rights be granted. No request for oral proceedings has been submitted.

III. With its communication dated 15 November 2017 the Board informed the appellant of its preliminary opinion that the appeal was admissible but not allowable. The Board regarded the request for re-establishment of rights to be inadmissible. The appellant replied by letter dated 27 November 2017.

IV. The appellant's first line of argument can be summarised as follows:

(a) The 31-month time limit for entry of the international application into the European phase expired on 8 June 2015. The time limit for requesting further processing expired on 24 September 2015.
(b) The removal of the cause of non-compliance with the latter time limit was the financial ability of the applicant to pay the EPO fees which it did not have until the filing of the request for re-establishment of rights on 12 May 2016. The only condition which was necessary to be fulfilled for filing a valid request for re-establishment of rights was that the applicant pays the fee for the request for re-establishment of rights at the moment of filing that request. That he had done.
(c) There is a distinction between the two-month period and the one year period referred to in Rule 136(1), first sentence, EPC. The former relates to the removal of the cause of non-compliance and is thus "subjective"; and it concerns one procedural action only. The latter is "objective" and concerns the plurality of payment obligations (in the present case payment of the EPO fees) deriving from the procedural action. Hence, the fee for further processing has to be paid only within one year of the expiry of the unobserved time limit.
(d) The fee for further processing was paid on 8 September 2016 and thus prior to the expiry, on 24 September 2016, of the period which the appellant regards as the relevant one, namely the period of one year from the unobserved time limit. The request for re-establishment of rights was thus admissible.

V. The appellant's second line of argument can be summarised as follows: The EPO had informed the appellant in its communication dated 14 July 2015 concerning the appointment of a professional representative that if the applicant did not appoint a European professional representative within two months of notification of the communication, the application would be refused. Of the three acts which the applicant had omitted (failure to pay the fees on entry into the European phase, non-appointment of a professional representative, failure to request further processing) it would be the earliest which would lead to a refusal of the application. If the EPO had correctly applied its own regulations it would have refused the application immediately after 24 September 2015 for failure to appoint a professional representative. There was thus no "space at all for bringing the EPO Decision dated 06.03.2017," and this decision of the Receiving Section should be set aside.

Reasons for the Decision

1. The appeal is admissible.

2. Rule 136(1), first sentence, EPC, provides that "Any request for re-establishment of rights under Article 122, paragraph 1, shall be filed in writing within two months of the removal of the cause of non-compliance with the period, but at the latest within one year of expiry of the unobserved time limit."

3. The period of one year is not an alternative to the two-month period as construed by the appellant. Instead, the provision refers to "but at the latest". According to the rule the request has to be filed within two months of the removal of the cause of non-compliance, and no request can be filed more than one year after expiry of the unobserved time limit.

4. The omitted act under Rule 136(2) EPC was to request further processing. Pursuant to Rule 135(1) EPC, further processing is requested by paying the fee for further processing; in addition, the omitted act under Rule 135(1) EPC (here payment of fees due on entry into the European phase) must be completed within the period of two months for making the request for re-establishment of rights (see Rule 136(2), second sentence, EPC). In the present case, the request for re-establishment was filed on 12 May 2016, but the fee for further processing was only paid on 8 September 2016. Thus, the requirement of Rule 136(2), second sentence, EPC is not fulfilled. The Receiving Section was thus correct in rejecting the request for re-establishment of rights as inadmissible.

5. The Board cannot see any basis for the appellant's argument that the one-year period referred to in Rule 136(1), first sentence, EPC relates, inter alia, to the payment of the fee for further processing and that this payment was thus made in due time. The ordinary meaning of Rule 136(1), first sentence, EPC in its context is clear, and is as set out in point 3 above.

6. The Board considers that this outcome is not changed by the appellant's arguments concerning its failure to appoint a professional representative. The appellant's failure to appoint a professional representative did not have the effect that the Receiving Section had to refrain from issuing a decision on the request for re-establishment of rights. Article 90(5) EPC provides that the European patent application "shall be refused" unless the deficiencies noted are remedied (or a different remedy is foreseen in the Convention). Thus, the act of refusing the application is a positive one by the EPO. This can be distinguished from the legal effect of deemed withdrawal, where no such act is required. As the EPO did not refuse the application at hand, but the application was deemed withdrawn due to the non-payment of the required fees, the request for re-establishment into the period for further processing was as such permissible, and the Receiving Section was able to decide on it.

Order

For these reasons it is decided that:

The appeal is dismissed.

T 0855/15 - The closest prior art

Key points

• In this examination appeal, the applicant argued that the Examining Division had not properly chosen the closest prior art document, because the used document would be remote from the invention. 
• The Board  notes that "if a piece of prior art is "too remote" from an invention, it should be possible to show that the invention is not obvious to a skilled person having regard to this piece of prior art"
• "Secondly, the board disagrees with the appellant's suggestion that it is relevant for the question of inventive step whether or not the "skilled person would [...] select" a piece of prior art "as a starting point to arrive at the invention" [] Article 56 EPC requires the assessment of whether an invention would be obvious to the skilled person "having regard to the state of the art". For this assessment, the deciding body will select one or more documents for consideration. However, no argument is required as to whether the skilled person would select a document. "
• As a comment, on the EQE it is important to take the right document as the closest prior art. 

EPO T 0855/15 - link

8. As regards the appellant's argument that the chosen "closest prior art" is so "remote" from the invention that the skilled person would not select it (see point 3 above), the board makes two additional observations.

8.1 Firstly, the board considers that the "remoteness" of a piece of prior art from the claimed invention does not, in itself, rule out an assessment of inventive step in view of that prior art. If a piece of prior art is "too remote" from an invention, it should be possible to show that the invention is not obvious to a skilled person having regard to this piece of prior art (see Article 56 EPC, and T 1742/12, point 9 of the reasons).

8.2 Secondly, the board disagrees with the appellant's suggestion that it is relevant for the question of inventive step whether or not the "skilled person would [...] select" a piece of prior art "as a starting point to arrive at the invention" (see the grounds of appeal, page 4, paragraph 3). Article 56 EPC requires the assessment of whether an invention would be obvious to the skilled person "having regard to the state of the art". For this assessment, the deciding body will select one or more documents for consideration. However, no argument is required as to whether the skilled person would select a document. In fact, the board considers that a consideration of what the skilled person would do, in particular whether the skilled person "would select" a document, in order "to arrive at the invention as claimed" would amount to hindsight reasoning, because the skilled person would have to be assumed to know the invention before an argument could be made as to what he would do in order "to arrive at" it.

Inventive step

9. The claims recite a software architecture defined in in terms of layers comprising "automation", "engine" and "platform" objects. These objects may be thought of as representing (i.e. modelling) a "plant", but no control of the plant seems to be implied by the claimed subject-matter. The modelling is not specific to a particular plant or type of plant or any specific "process control" and "manufacturing information" task in that context.

9.1 The same applies to the security model. The claims refer to a "set of security groups", each comprising "automation objects" having "attributes" with "security classifications", a "set of user roles", and an associated way of granting "access to an attribute of an object", but they fail to specify what the objects, attributes, accesses or roles are or how they may be "associated with a plant process" as the preamble of the claim indicates. As mentioned above, this hardware independence is intentional (see the description, page 6, lines 8-16, and point 3.3 above).

9.2 Thus the invention is not concerned with any specific industrial process - or control thereof - but rather with modelling or programming a control system (and its access control) in such a way that reconfigu­ration (i.e. re-programming) becomes simple (or "easily designed and altered for customized use", as the application itself puts it). The board considers it questionable whether this goal (i.e. simplicity or speed of design, (re-)configuration, or customisation) and its consequences (such as reduction of system idle time, see the description, page 2, lines 12-14) are plausibly achieved by the claimed system and, furthermore, how it could be established (e.g. quantified and measured) whether they are achieved. Moreover, the board follows its earlier jurisprudence, according to which providing a programming system does not solve a technical problem merely because it makes the programmer's task easier (see e.g. T 1630/11, points 6 to 8 of the reasons).

10. The board thus concludes that the claimed invention lacks an inventive step over the common general knowledge in the art because it does not solve a technical problem, Article 56 EPC 1973.

Order

For these reasons it is decided that:

1. The appeal is dismissed.

2. The request for reimbursement of the appeal fee is refused.

T 2101/14 - Unsubstantiated request not admitted

Key points

• In this examination appeal, the sole request ist not admitted.
• "One of the grounds for refusal was a failure to meet the requirements of Articles 52(1) EPC and 56 EPC 1973, a conclusion which the Board provisionally endorsed in the communication pursuant to Article 15(1) RPBA. At no point in the written procedure did the appellant provide a single argument why the subject-matter of claim 1 of the present request is considered to involve an inventive step. []  At the oral proceedings the appellant asked to be allowed to present, for the first time, the case on inventive step in relation to its present request. The question is therefore whether the conditions for admissibility of the request may be met by supplying the missing substantiation during the oral proceedings for the first time. "
• The applicant had pointed out that the request was based on a claim found allowable by the Examining Division. "[This fact] does not relieve the appellant of the responsibility to substantiate the request, nor does it justify the filing of such substantiation for the first time in oral proceedings."
• The claims were filed by the date for written submission, but without arguments, and are therefore deemed to be filed during the oral proceedings. 
• "Oral proceedings are not, however, intended to provide a means for an appellant to build the entire case on inventive step from scratch, especially where no good reason is given why these arguments were not previously submitted in writing."

EPO T 2101/14 - link

Reasons for the Decision

1. Admissibility of the appeal

1.1 Although the correctness of the appealed decision was not challenged in the statement of grounds of appeal, amended claims were filed, and reasons given why the subject-matter of the new claims was considered to involve an inventive step and to satisfy the requirements of Article 123(2) EPC (the grounds on which the application had been refused). The appeal is therefore considered to be sufficiently substantiated to satisfy the requirements of Article 108 EPC, third sentence (see Case Law of the Boards of Appeal, 8th Edition 2016, IV.E.2.6.5(b)).

1.2 The fact that, after the four month time limit set out in Article 108 EPC, the appellant withdrew the request to which the reasoning given in the statement of grounds applied has no bearing on the assessment of the admissibility of the appeal (see Case Law of the Boards of Appeal, 8th Edition 2016, IV.E.2.6.3)

1.3 The appeal is admissible.

2. Admissibility of the sole request

2.1 One of the grounds for refusal was a failure to meet the requirements of Articles 52(1) EPC and 56 EPC 1973, a conclusion which the Board provisionally endorsed in the communication pursuant to Article 15(1) RPBA. At no point in the written procedure did the appellant provide a single argument why the subject-matter of claim 1 of the present request is considered to involve an inventive step. The decision of the Examining Division was never challenged, nor was any written argument provided explaining why the amendments to claim 1 rendered the subject-matter inventive.

T 1578/13 - Not back to granted claims in appeal

Key points

• In this opposition appeal, the patentee's main request was the claims as granted with a correction of an obvious error. This request is not admissible under G 1/10 (and not allowable under Article 133(3) EPC). 
• The auxiliary request with the claims as granted is not admitted under Article 12(4) RPBA, as it should have been filed during the first instance proceedings. 

EPO T 1578/13 -  link

Entscheidungsgründe

Die Anträge wurden nach Weiterverfolgung des vormaligen Hauptantrags als Hilfsantrag 8, der zudem später zurückgenommen wurde, in der mündlichen Verhandlung vor der Beschwerdekammer nicht umnummeriert. Der Hilfsantrag 1 ist somit der höchstrangige Antrag der Beschwerdeführerin.

Hilfsantrag 1

1. Die Beschwerdeführerin beantragte die Aufrechterhaltung des Patents gemäß Hilfsantrag 1. Der Wortlaut des Anspruchs 1 des Hilfsantrags 1 enthält eine Änderung gegenüber dem Wortlaut des erteilten Patents, in dem der Begriff "Gasaustrittsgehäuse" in "Gaseintrittsgehäuse" geändert würde. Die Beschwerdeführerin brachte vor, dass dies eine Berichtigung eines offensichtlichen Fehlers in der erteilten Fassung des Streitpatents darstelle und bezog sich auf die Regeln 140 und 139 EPÜ.

2. Antrag auf Korrektur

Die beantragte Korrektur des Anspruchs 1 des Hilfsantrags 1 ist nicht zulässig.

2.1 Gemäß G1/10, kann Regel 140 EPÜ nicht zur Berichtigung des Wortlauts eines Patents herangezogen werden und somit ist ein Antrag des Patentinhabers auf eine solche Berichtigung zu jedem Zeitpunkt unzulässig, also auch nach Einleitung des Einspruchsverfahrens (G 1/10 ABI. EPA 2013, 194, Punkt 1 der Entscheidungsformel/ Punkt VII.2 in Verbindung mit den Punkten 9 und 11 der Entscheidungsgründe; siehe auch T 657/11, Punkte 3.2 und 3.3 der Entscheidungsgründe; T 2051/10, Punkt 2.1 der Entscheidungsgründe).

T 2536/16 - Wrong composition OD

Key points

• In this opposition appeal, the Board checked the Rule 71(3) signature page and noted that two members of the OD had also signed the Rule 71(3). Therefore, the OD had the wrong composition (Article 19(2) EPC). The impugned decision is set aside and the case is remitted.
• The Rule 71(3) was signed by a different second examiner than was stated in the database. 
• "As is evident from [the Rule 71(3) signatures page / EPO form 2035.4 ], the second examiner signed this document substituting for the second member originally foreseen whose pre-printed name on that form had been deleted and replaced by the hand-written name of the substitute examiner. Apparently, it had been overlooked to enter the change of the composition of the examining division into the EPO's data base. "
• "For the requirements of Article 19(2) EPC, however, what matters is that the participation of the first and second member of the opposition division in the proceedings for the grant of the opposed patent is established by their respective signatures on EPO form 2035.4. Therefore, the composition of the opposition division was contrary to Article 19(2), first sentence, EPC."
• The appeal took less than a year (from the Statement of grounds). 

EPO T 2536/16 - link
Summary of Facts and Submissions

IV. In its statement of grounds of appeal, the appellant (opponent) requested that the decision under appeal be set aside and that the European patent No. 1 390 750 be revoked.

V. With its letter of reply, the respondent (patentee) requested that the appeal be dismissed. It also filed six auxiliary requests.

VI. In a communication dated 5 September 2017, the board observed that two of the three members of the opposition division had taken part in the proceedings for grant of the patent to which the opposition related, contrary to Article 19(2), first sentence, EPC. The board noted that this constituted a substantial procedural violation which justified remittal of the case under Article 111(1) EPC and reimbursement of the appeal fee under Rule 103(1)(a) EPC. The parties were invited to comment and to indicate whether they maintained their requests for oral proceedings should the board remit the case to the opposition division and order reimbursement of the appeal fee.

Reasons for the Decision

1. The appeal is admissible.

2. Pursuant to Article 19(2), first sentence, EPC, an opposition division shall consist of three technically qualified examiners, at least two of whom shall not have taken part in the proceedings for grant of the patent to which the opposition relates.

T 0676/14 - Requesting decision state of the file

Key points

• During examination, a decision according to the state of the file can be requested.
• In this case, the applicant had complained in appeal that the Examining Division had not dealt with some of its arguments in the Communication forming the basis for the refusal.
• "The Board further notes that the appellant could still have raised its concerns about the communication with the Examining Division when it withdrew its request for oral proceedings and requested a decision according to the state of the file, but did not do so."
• It is not so clear that a request for a decision according to the state of the file can be combined with arguments. See e.g. T 1768/11, [3.3]. 

5. The appellant's criticism of the appealed decision

5.1 In the statement of grounds of appeal, the appellant criticised - under the heading "Insufficient reasoning of the examining division" - the Examining Division's communication of 26 August 2013, to which the appealed decision refers for the reasons for the refusal. The appellant argued, in particular, that the communication had not dealt with some of its arguments put forward in its letter of 18 April 2013.

5.2 The appellant did not submit that the Examining Division had committed a substantial procedural violation, nor did it request reimbursement of the appeal fee. Nevertheless, under Rule 103(1)(a) EPC the Board is to consider ex officio whether reimbursement is equitable by reason of a substantial procedural violation (cf. decision J 3/14 of 8 September 2014, reasons 8).

5.3 The Board finds that the reasons given by the Examining Division in the communication of 26 August 2013 are understandable, even if flawed. The communication also does address, under point 7, several of the appellant's arguments from the letter of 18 April 2013, which shows that the appellant's submissions were not completely ignored.

The Board further notes that the appellant could still have raised its concerns about the communication with the Examining Division when it withdrew its request for oral proceedings and requested a decision according to the state of the file, but did not do so.

5.4 The Board therefore considers that the Examining Division did not commit a substantial procedural violation which could, under the circumstances, justify reimbursement of the appeal fee.

T 1045/13 - Single patient studies not sufficient

Key points

• In this examination appeal, claim 1 is directed to a compound for use in a method of alleviating symptoms of psychological condistion selected from a group including depression and anxiety disorders.
• The application included some examples, but each with only a single patient (all females, at different ages) These do not make the therapeutic use plausible, according to the Board.
• "Each example relates to a single patient only, contrary to common practice which requires a certain number of patients to be tested under the same conditions in order to allow statistical analysis of the results. Also, in the absence of a control group, placebo effects cannot be excluded. To sum up, the appellant has chosen to rely solely on experimental evidence in support of the therapeutic treatment as claimed in claim 1. The experimental evidence on file fails however to provide evidence for the effects claimed. The examples do not cover the whole scope of the claim and do not provide evidence of therapeutic efficacy that meets scientific standards (statistically significant number of patients, control group). Effective treatment of the medical conditions under consideration has thus not been shown. Consequently, the board comes to the conclusion that the subject-matter of claim 1 is not sufficiently disclosed (Article 83 EPC)."
• The PCT application was drafted in US style. "The application as filed does not provide any indication of the principle underlying the relationship between the activity of the pharmaceutically active agent, i.e. the NGF, and the therapeutic effect, i.e. the alleviation of the symptoms of the psychological conditions claimed. The description does not provide any information on the mechanism of action of NGF. "

EPO T 1045/13 - link

Reasons for the Decision

[] 3. Sufficiency of disclosure

Claim 1 is a second medical use claim worded in accordance with Article 54(5) EPC. Attaining the claimed therapeutic effect is a functional feature of the claim. The application must thus disclose the suitability of the substance or composition for the therapeutic application claimed.

It will now be examined which therapeutic effect is defined by the wording of claim 1, and whether the evidence on file is sufficient to show that the claimed compound is suitable for said therapeutic application.

T 0578/14 - Communicating with party outside EPC

Key points

• In this examination appeal, the applicant was (at the time of filing the appeal) the inventor, i.e. a natural person from New Zealand. The applicant himself contacted the EPO to request an extension of time for filing the Statement of grounds, even though at that time a professional representatieve was appointed (but the applicant was unhappy with the representative). The EPO formalities officer explained that this was not possible. No Statement of grounds was filed in time.
• The decision is in substance that the Board refuses the request for re-establishment for filing the Statement of grounds. The applicant was not objectively unable to file meet the time limit for filing the Statement of grounds, the request for RE was filed late, and in any case due care had not been shown.
• In this case, the formalities officer had sent a letter directly to the applicant. This is allowable, according to the Board. "The board notes that there is nothing in the EPC which prevents the EPO, without such consent, from communicating with or notifying communications to parties not resident in an EPC contracting state. In particular, Article 133(2) EPC does not prevent the EPO from doing that.  []It goes without saying that, if a representative is appointed, the EPO has to keep him informed, e.g. by sending him a copy, as it did in the present case, of any communications it sends direct to the party." 
• Regarding whether the applicant was unable to file the Statement of grounds (due to his conflict with his then representative): " A party, however, cannot deliberately choose not to fulfil the conditions for a valid appeal, and then achieve an appellate review through the back door of a request for re-establishment of rights (see also decision T 413/91, point 4 of the Reasons). Thus, the board concludes that the "untenable" situation with the representative did not objectively prevent Mr [applicant] from instructing his former or a new representative to file a statement of grounds of appeal within the four-month period under Article 108 EPC. " 

EPO T 0578/14 -  link

3.5 The appellant challenges the point in time at which the authorisation of the representative terminated.

According to Rule 152(8) EPC, a representative is deemed to be authorised until the termination of his authorisation has been communicated to the EPO. This legal fiction means that, if or for as long as the termination of an authorisation is not communicated to the EPO, the authorisation remains effective vis-à-vis the EPO even though, for example, as between the party and its representative, the contract which they entered into has been dissolved or the party has - vis-à-vis the representative - revoked the authorisation that it gave him. For the sake of completeness, it is also pointed out that, in the case of a change of representative involving professional representatives, the provisions of Article 1(2) of the decision of the President also apply, i.e. usually either the termination of the authorisation of the previous representative is communicated to the EPO or the new representative files an individual authorisation (original and one copy) or a reference to a general authorisation already on file. It follows that, contrary to what the appellant submitted, it is not the EPO which dissolves a contract between a party to the proceedings before the EPO and its representative. The appellant is therefore correct in saying that a party has the right to terminate the contract with its representative and that the termination of such contract is governed by the national law applicable and not by the EPC. Of course, the same must apply if the representative wishes to terminate his contract with his client. However, in view of Rule 152(8) EPC and the decision of the President, the responsibility for informing the EPO about the termination of the contract between a party and its representative before the EPO lies with the represented party, irrespective of whether or not it has its residence in an EPC contracting state, or with its representative. It is only when the EPO receives such information that, depending on the content of the information, it might have to determine on the basis of the documents filed whether a contract between a party to the proceedings before the EPO and its representative has indeed been terminated. The board emphasises that, just like the appointment of a representative vis-à-vis the EPO and the filing of an authorisation as prescribed by Rule 152(1) EPC and the decision of the President, the communication about the termination of an authorisation of a representative vis-à-vis the EPO is of fundamental importance for establishing whether the EPO is dealing with the entitled representative.

T 0551/11 - Abstract idea at the EPO

Key points

• The invention relates to a software .
• The distinguishing feature of claim 1 is a step of displaying keywords or key phrases in rank order and adding suggested alternatives once they have been suggested a threshold number of times. 
• The Board: "The Board considers the claimed way of re-categorisation to be within the administrative, i.e. non-technical domain, which cannot involve an inventive technical contribution over the disclosure of D1. It is regarded as an abstract non-technical concept how to organise the way categories, keywords etc. are provided and used, which is not driven by technical considerations, but merely by abstract administrative considerations." 

EPO T 0551/11 -  link

Reasons for the Decision

Introductory remarks

1. The claimed invention is directed to a system and method for publishing content. Such content is categorised by the author assigning keywords or key phrases used for searching or navigating. Categories, keywords or key phrases can later on be re-categorised by other users and for this purpose are displayed in rank order. Depending on how often a re-categorisation has been suggested, it is replaced or added.

Main request

2. Article 56 EPC - Inventive step

2.1 The independent claims are directed to a mix of technical and non-technical features. Claim 1 is directed to a computer system which is technical per se. The Board also does not dispute that the corresponding method according to independent claim 14 appears in a technical context. The method can be considered to be performed by technical means, because it involves a computer with means for storing data and means for processing data, and, therefore, has technical character. Accordingly, the claimed subject-matter is an invention in the sense of Article 52(1) EPC (see T 258/03 "Auction method/HITACHI").

T 2501/11 - Proving publication date

Key points

• The Board finds that if a publication date of a prior art document (in this case, a MSc thesis) in an opposition procedure is disputed by the patentee and is not proven by the opponent, the document is to be disregarded.  
• The Board does not see a role for examination of its own motion in the opposition appeal procedure in these matters. 

Headnote

Wird eine Vorveröffentlichung einer Entgegenhaltung zulässigerweise bestritten, ohne dass die insoweit darlegungs- und beweispflichtige Partei auf dieses Bestreiten substantiiert reagiert, kann diese Entgegenhaltung von der Kammer nicht als Stand der Technik herangezogen werden, da im Einspruchsbeschwerdeverfahren auf Grund des Charakters als streitiges Verfahren der Beibringungsgrundsatz gilt und daher das Amtsermittlungsprinzip (Artikel 114(1) EPÜ) eingeschränkt ist.


EPO T 2501/11 -  link

Entscheidungsgründe

3.1 Die Beschwerdegegnerin [opponent] hat im Einspruchsverfahren gegen den abhängigen Anspruch 3 lediglich auf eine mangelnde Neuheit gegenüber D8 verwiesen (vgl. den Einspruchsschriftsatz, Seite 8, Absatz 2).[D8: "Description d'une route à partir d'une carte digitale et d'un GPS", Magali Lucet, Mémoire en vue de l'obtention du titre d'ingénieur, Institut des sciences de l'ingénieur, CUST, Université Blaise Pascal, Clermont Ferrand 2.] 

3.2 Von der Beschwerdeführerin [proprietor] wurde in der Replik auf die Einspruchsbegründung eine Vorveröffentlichung der D8 bestritten. Zwar trägt die Druckschrift D8 als Veröffentlichungsdatum die Angabe "JUIN 1997", es wurde jedoch geltend gemacht, dass eine allgemeine Zugänglichkeit erst im Jahre 2000 dokumentiert sei (siehe entsprechender Eingangsstempel datiert auf den 12. Mai 2000).