T 2056/13 - Copyright or secrecy

Key points

• In this opposition appeal, patentee submitted the creative argument that the copyright symbol in a prior art instruction manual in fact meant that the document was not publicly available. The Board does not accept the argument.
• " Denn Copyright-Vermerke implizieren grundsätzlich keine Geheimhaltungsverpflichtung, sondern beziehen sich auf das Verbot der Vervielfältigung und der Verbreitung unrechtmäßig hergestellter Exemplare des Werks oder von Auszügen desselben." 

EPO T 2056/13 -  link

Entscheidungsgründe

1. Stand der Technik

1.1 Das Handbuch E1 betrifft eine Bedienungsanleitung für eine Luftdüsenspinnmaschine der Firma Murata aus dem Jahr 1998, d.h. vor dem Prioritätstag vom 21. Oktober 2004. Dieses Handbuch weist im Einleitungsteil auf Seite A einen Copyright-Vermerk auf.

Dem Argument, wonach der Copyright-Vermerk darauf hindeute, dass das gesamte Handbuch einer Geheimhaltungsverpflichtung unterliege, die auch das Verbot umfasse, das Handbuch bzw. Teile daraus Dritten ohne ausdrückliche Genehmigung der Firma Murata zugänglich zu machen, kann die Kammer nicht beipflichten.

Denn Copyright-Vermerke implizieren grundsätzlich keine Geheimhaltungsverpflichtung, sondern beziehen sich auf das Verbot der Vervielfältigung und der Verbreitung unrechtmäßig hergestellter Exemplare des Werks oder von Auszügen desselben. Dass mit dem Vermerk keine Verpflichtung zur Geheimhaltung verbunden ist, ergibt sich im Übrigen auch aus dem vorletzten Absatz der Seite A der E1, wo die Möglichkeit des Weiterverkaufs und der Weitergabe des Handbuchs erwähnt ist.

1.2 Da die Schlussfolgerung der Einspruchsabteilung, wonach die E1 zum Stand der Technik gehöre, lediglich mit dem Hinweis auf den Copyright-Vermerk bestritten wurde, und die Beschwerdekammer - wie oben ausgeführt - dieser Argumentation nicht folgt, besteht für die Beschwerdekammer kein Grund von der Auffassung der Einspruchsabteilung abzuweichen. Die E1 gehört daher zum Stand der Technik nach Artikel 54 (2) EPÜ.

T 0510/13 - Late found document and search strategy

Key points

• In this opposition appeal, the opponent filed a further prior art document. The opponent gave as reason for admitting the document, that the document "could not be found earlier despite an extensive search conducted in preparation of the opposition against the patent in suit". In order to prove this, the appellant disclosed its search strategy.
• The Board does not accept the argument. "The board observes that the search strategy carried out by the appellant, [] was based exclusively on the combination of keywords that were introduced for search in the fields of: title, abstract and claims in the databases DEPATISnet and Espacenet. Such a strategy however, suffers from several deficiencies. Firstly, it relies on keywords in databases that do not provide any control of keywords. Secondly, the keywords were not searched in the full documents but only in their title, abstract and claims. Thirdly, the use of synonyms and truncations was apparently not contemplated. And lastly, the appellant did not perform any alternative search strategy independent from keywords, e.g. using patent classification symbols, in order to compensate the limitations of a strategy based exclusively on keywords." 
• Clearly, the Board members know how to search!

EPO T 0510/13 -  link

Reasons for the Decision

3.1 Reasons for late filing document (15)

According to the appellant, document (15) could not be found earlier despite an extensive search conducted in preparation of the opposition against the patent in suit. In order to prove this, the appellant disclosed its search strategy and submitted that even carrying out the search retroactively with the knowledge of document (15), it was very difficult to find the document (see letter dated 24 January 2014, page 2). As an additional hint at the difficulty in finding document (15), the appellant noted that the document had not been cited in the international search report.

The board observes that the search strategy carried out by the appellant, as outlined in its letter dated 24 January 2014, was based exclusively on the combination of keywords that were introduced for search in the fields of: title, abstract and claims in the databases DEPATISnet and Espacenet. Such a strategy however, suffers from several deficiencies. Firstly, it relies on keywords in databases that do not provide any control of keywords. Secondly, the keywords were not searched in the full documents but only in their title, abstract and claims. Thirdly, the use of synonyms and truncations was apparently not contemplated. And lastly, the appellant did not perform any alternative search strategy independent from keywords, e.g. using patent classification symbols, in order to compensate the limitations of a strategy based exclusively on keywords. For this reason, the board is not convinced that the appellant carried out a comprehensive search and that document (15) could not have been found. In addition, the appellant's remark that document (15) was not cited in the international search report does not prove that the document could not be found. This could simply mean that the International Searching Authority did not consider document (15) to be relevant.

It cannot therefore be concluded that document (15) could not have been filed in opposition.

T 2170/13 - Preamble of method claim

Key points

• In the present case, the Board follows the approach of T 1822/12 that the preamble of a method claim means "suitable for" . Hence, if a method claims recites a purpose of the method in the preamble, this feature can not provide novelty over a prior art method having all other features. 

EPO T 2170/13 - link

The final claimed feature is therefore implicitly disclosed in D1, and hence the subject-matter of claim 1 of the main request is not new within the meaning of Article 52(1) EPC and Article 54 EPC 1973.

4. Auxiliary Request

4.1 The auxiliary request was filed approximately one month before the oral proceedings. In response to a question from the Chairman, the opponent stated that it had no objection to this request being admitted into the proceedings, and hence the Board sees no reason not to admit it.

4.2 The sole issue to decide in relation to novelty is whether the re-drafting of claim 1 as a method claim, in particular having a first line reading "A method for neutralizing electrical charge on a work piece ...", alters the conclusion reached in the case of the main request.

4.3 In this respect, the findings in decision T 1822/12 appear to the Board to be particularly pertinent. In that case, claim 1 of the main request started as follows:

"A method for reducing acrylamide formation in thermally processed foods, said method comprising the steps of ..."

In arguing that the claimed subject-matter was novel, the appellant-proprietor acknowledged that the actual steps recited in the claim were known in the prior art, but cited the following passage from G 2/88 and G 6/88:

"A claim to the use of a known compound for a particular purpose, which is based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open to objection under Article 54(1) EPC provided that such technical feature has not previously been made available to the public" (G 2/88, Order, point (iii); G 6/88, Order).

The appellant argued that the provisions of G 2/88 and G 6/88 were general and were not linked to any specific claim category, and that novelty should therefore be acknowledged, since the cited prior art documents did not disclose the functional technical feature of reducing acrylamide.

4.4 The deciding Board did not agree, noting that the order in G 2/88 related "only to a use claim, namely to a claim for the new use of a known compound" (T 1822/12, Reasons, point 3.1.1, emphasis in the original). Under point 3.1.2, the Board stated the following:

"Furthermore the case law has constantly interpreted G 2/88 in a very restrictive manner, i.e. in a manner that only claims related to the use of a known compound for a particular purpose, based on a technical effect described in the patent, should be interpreted as including that technical effect as a functional technical feature, provided that such technical feature has not previously been made available to the public."

Numerous cases were cited in T 1822/12 in support of this restrictive approach (T 1343/04, points 2.1 and 2.2 of the reasons; T 304/08, section 3.3.2 of the reasons; T 1179/07, section 2.1.3 of the reasons; T 1049/99, section 8.5 of the reasons; T 2215/08, section 2.4.1 of the reasons and T 910/98, section 2.2.2 of the reasons).

The Board concluded (Reasons, point 3.1.3) that there was "no possibility to expand the ruling in G 2/88 and G 6/88 to a claim worded otherwise, namely a claim relating to a known method for a new purpose", and hence that the undisclosed purpose of reducing acrylamide formation could not be considered to be a distinguishing functional technical feature of the claim.

The wording of claim 1 had to be "construed as concerning a method 'suitable' for reducing acrylamide formation", and since it was not disputed that the prior art methods would be thus suitable, this feature did not confer novelty (Reasons, point 3.1.4).

4.5 The Board in the present case endorses this approach, and therefore interprets the opening wording of claim 1 to define a method suitable for neutralizing electrical charge on a work piece.

4.6 Document D1 discloses a particle beam device including a detector. Also disclosed, at least implicitly, is a method of operating the disclosed device (including the provision of the disclosed concrete features, the voltages to be applied, the pressure levels in the chamber, creation of gas cascades etc.).

The Board has already concluded that the detector of Fig. 4 of D1, when used for the disclosed purpose of detecting secondary electrons from the sample, would also have the effect of ejecting ions from the ionization chamber thereby neutralizing at least some of the electrical charge on the work piece. The method of operating the detector in D1 would therefore be suitable to provide the effect of neutralising the sample. In the light of the considerations set out above, neither the opening statement of purpose in claim 1 nor the final feature defining the effect establish novelty over document D1.

The remaining features of claim 1 of the auxiliary request are essentially the corresponding features of claim 1 of the main request, adapted to a method claim. The proprietor has not argued that these features further distinguish the claimed subject-matter over the prior art, and the Board judges them to be disclosed in D1.

4.7 The subject-matter of claim 1 of the auxiliary request is therefore not new within the meaning of Article 52(1) EPC and Article 54 EPC 1973.

5. Thus, in the absence of an allowable claim set, the patent must be revoked (Articles 101(2) and 101(3)(b) in conjunction with Article 111(1), second sentence, EPC).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

T 1922/17 - Decision according to the state of the file

Key points

• In this case, the ED had refused the application with a decision according to the state of the file, which decision referred to an earlier communication for the reasons. The Board finds this a procedureal violation, because the claims had been amended after the communication.
• " As the communication dated 2 November 2015 is not based on the latest request of the applicant, particularly with regard to the amended description filed on 4 November 2016, the reference to this communication cannot be accepted as sufficient reasoning underlying the appealed decision." 

EPO T 1922/17 - link

Reasons for the Decision

1. Necessity to provide adequate reasoning in a decision

1.1 Rule 111(2) EPC embodies the general principle of law that appealable decisions must be reasoned. It states inter alia: "Decisions of the European Patent Office which are open to appeal shall be reasoned". The function of appeal proceedings is to give a judicial decision upon the correctness of a separate earlier decision (G 9/91, OJ 1993, 408, reasons 18; T 1182/05, reasons 3). The reasoning given in a decision open to appeal has to enable appellants and the Boards of Appeal to examine whether the decision was justified or not. In other words, it is not up to the Board or the appellant to speculate as to what might be the intended meaning behind the reasoning. A reasoned decision meeting the requirements of Rule 111(2) EPC is accordingly also a prerequisite for the examination of the appeal (see also T 1182/05, reasons 3).

T 1103/15 - Transfer of priority and US state law

Key points

• In this opposition appeal, the question is whether the priority (of a US provisional) was transferred in time to the applicant. The patentee fails to show this. 
• The Board finds that the proprietor does not have the benefit of the doubt: "a person who claims he is a successor in title within the meaning of Article 87(1) EPC [] has to prove his entitlement where the validity of the claimed priority is at stake []. The Board can therefore not follow the appellant's argument that if there is uncertainty about the validity of a priority claim, the patent proprietor should enjoy the benefit of the doubt." Note that this may be a critical finding. Note furthermore that it applies to both facts and the content of national law, which are both to be evidenced before EPO. 
• US law would be applicable law: "The Board agrees with [patentee] that the applicable national law would then be US law, but notes that the [patentee] does not seem to be sure whether it is a question of federal law or state law." As a comment, the choice of US law does not seem entirely obvious to me. 
• "The main evidence the [patentee] has submitted to support its view is an extract of a judgement D16 from a UK court in which the court found that under English law a priority was validly claimed in the UK, having regard to US federal law and the law of the State of Georgia  whereby the principles of US law had been agreed upon by the parties" 
• " In the view of the Board, D16 does not qualify as suitable evidence to prove the relevant provisions or recognised operations of US law, be it federal or state law. If US state law were applicable, the board assumes it would be the law of Alabama. Therefore there is no convincing evidence on file to prove the appellant's assertion that The University of Alabama is successor in title to the applicants of the earlier application." 
• About evidence of national law in general before the Boards:"  If a party makes statements about conclusions to be drawn on the basis of the applicable national law, it has to file suitable evidence, for example by filing as documents adequate copies of such laws and/or as appropriate by filing as expert evidence the opinions of a suitably qualified lawyer in the relevant jurisdiction" 
• As a comment, what parties agree on (in a court case) regarding  national law is of course not proven in EPO procedures and not binding on the EPO, because EPO has examination of own motion. 

EPO T 1103/15 -  link

Reasons for the Decision

Main request

1. Priority claim

1.1 In its contested decision, the opposition division arrived at the conclusion that the priority US 326704 P of 3 October 2001 was not valid. D3, a document published on 17 April 2002, before the filing date of the patent in suit (3 October 2002), was therefore a document according to Article 54(2) EPC for the claimed subject matter and its content anticipated claims 1 and 15 of the main request (point 2.2.2.4 on page 15 of the decision).

1.2 In the statement of grounds of appeal the appellant did not contest that the main request lacked novelty over D3. The question that the Board had to answer was rather whether the right of priority had been validly claimed to determine whether D3 was a document according to Article 54(2) EPC or not.

1.3 According to board of appeal case law, a person who claims he is a successor in title within the meaning of Article 87(1) EPC and is therefore entitled to claim priority has to prove his entitlement where the validity of the claimed priority is at stake (T 205/14, Reasons Nr. 3.5; T 517/14, Reasons Nr. 2.6; T 577/11, Reasons Nr. 6.1; T 1201/14, Reasons Nr. 3.2.2.2). The Board can therefore not follow the appellant's argument that if there is uncertainty about the validity of a priority claim, the patent proprietor should enjoy the benefit of the doubt.

1.4 According to the appellant, the question whether the right to claim priority has been validly acquired by the applicant of the subsequent application is a matter of national law. This is also the position taken in several board of appeal decisions (T 205/14, Reasons Nr. 3.6.3; T 517/14, Reasons Nr. 2.7.3; T 1201/14, Reasons Nr. 3.1.2). The Board agrees with the appellant that the applicable national law would then be US law, but notes that the appellant does not seem to be sure whether it is a question of federal law or state law.

T 1255/11 - Claim for Alzheimer treatment plausible

Key points

• In this opposition appeal, the Board finds claim 1 to be plausible.
• Claim 1 is " Use of an effective amount of medium chain triglyceride for the preparation of a pharmaceutical composition for the treatment or prevention of loss of cognitive function caused by reduced neuronal metabolism in Alzheimer's disease,
  wherein said treatment or prevention comprises oral administration of a single dose of medium chain triglyceride to a patient such that the blood level of D-beta-hydroxybutyrate in the patient is raised to 1-10mM [] causing hyperketonemia in the patient resulting in ketone bodies being utilized for energy in the brain in the presence of glucose."
• The Board: " The application as filed thus provides a complete theoretical explanation, backed up by scientific literature, for the treatment of Alzheimer's disease by MCT. In the present case the presence of the claimed effect is plausible in view of this theoretical explanation.
  Since the effect has been made plausible by the theoretical background explanations provided in the application as filed, the appellant may provide post-published evidence."

EPO T 1255/11 - link

5. Sufficiency of disclosure

5.1 Treatment of disease

The application as filed provides information on various background issues that allow for a theoretical understanding of the biochemical processes that are said to underlie the claimed therapeutic treatment.

[...]

In sum, the description as filed explains that Alzheimer's disease is linked to a problem of glucose metabolism in the brain and that an alternative energy source for neurons are ketone bodies. It establishes that ketone bodies result from the metabolism of MCT and provides some indications that ketone bodies may improve cognitive dysfunction.

The application as filed thus provides a complete theoretical explanation, backed up by scientific literature, for the treatment of Alzheimer's disease by MCT. In the present case the presence of the claimed effect is plausible in view of this theoretical explanation.

Since the effect has been made plausible by the theoretical background explanations provided in the application as filed, the appellant may provide post-published evidence.

T 2500/12 - Plausibility strikes again (Alzheimer)

Key points

• In this examination appeal, a claim for a pharmaceutical composition "for use in the treatment, prevention or amelioration in an animal of Alzheimer's disease or other diseases characterized by amyloid deposits" was found to be insufficiently disclsoed. 
• The Board: "the question to be answered is whether or not either the application discloses that an immunogen containing the polyamino acid, defined in the claim, would be suitable (i.e. would plausibly be considered to be useful) for the treatment, prevention or amelioration in an animal, for example a human, patient of Alzheimer's disease [] (i.e. for the therapeutic use defined in the claim), or if the skilled person at the priority date would have known this." 
• " Even if it were accepted that it is at least plausible that the claimed constructs can elicit an immune response to Abeta, the board has seen no evidence in the application, that at the effective date, a direct and unambiguous link, for example, by means of an animal or in vitro model, had been established between the observed effect of eliciting anti-Abeta antibodies and the effective treatment of disease." 

EPO T 2500/12 - link

Reasons for the Decision

Main request - claim 1

Article 83 EPC - Disclosure of the invention

1. Article 83 EPC requires that the European patent application "disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art". In the case of a therapeutic use, it is established case law that the application must disclose the suitability of the product to be manufactured for the claimed therapeutic application, unless this was already known to the skilled person at the priority date. In this respect, showing a pharmaceutical effect in vitro may be sufficient if for the skilled person this observed effect directly and unambiguously reflects such a therapeutic application, or, if there is a clear and accepted relationship between the shown physiological activities and the disease (see Case Law of the Boards of Appeal of the European Patent Office, 8th edition, II.C.6.2 and decision T 609/02, reasons 9).

T 2275/15 - Unsubstantiated refusal

Key points

• In this examination appal, the  Board finds the refusal to be insufficiently reasoned.
• " The description is explicit about the central idea of the invention being that two terminal devices should be able to exchange software directly between them (see e.g. figure 5). Moreover, the applicant insisted several times during examination that this was the main difference from D1 [] . The examining division did not address this point [] until the decision, which, however, contains merely the cited passage.
• The passage of the ED was: " The applicant's arguments in favour of inventive step based on the difference between a client-server (as in D1) and a master-slave (allegedly as in claim 1) arrangement can not be agreed upon, because D1 discloses that the update already happens between terminals." 
• Back to the Board: " The board agrees with the [applicant] that the sentence is an unsubstantiated allegation. In the decision, the examining division did not refer to any specific passage in D1 which would have disclosed "that the update already happens between terminals"
• This forms a substantial procedural violation, according to the Board.

EPO T 2275/15 - link

Reasons for the Decision

The invention

1. The application addresses the problem of updating the software in a game device (see figure 1), preferably what is called a "multiplay" program (see page 17, paragraph 2), when an Internet connection or a suitable storage medium is not available (page 1, penultimate paragraph). The proposed solution is essentially to enable the game devices to exchange the required software directly with each other (see e.g. page 14, paragraph 3), be it with the game program itself (see e.g. page 17, paragraph 2), other application programs (page 31, paragraph 2) or "basic software" such as firmware (see page 1, penultimate paragraph; page 19, penultimate paragraph et seq.; page 26, paragraph 3 et seq.; page 33, paragraph 2).

The prior art

2. D1 relates to a system for installing software updates (or "patches") on computer terminals across a network with reduced demands on a human administrator (see page 4, lines 19-23, of the application as originally filed). The patches to be installed are stored on "package computers", the computers on which they are to be installed are referred to as "target computers". An "update server" is provided to mediate between the target and package computers (page 5, lines 4-6, and figure 2, no. 220), which may not be able to communicate directly with each other, e.g. due to a firewall (see page 5, lines 1-4, and figure 2, nos. 200 and 230; but see page 6, lines 11-17). On the target computers, the patch is controlled by a so-called update agent, which communicates with the update server and/or the package computers (see page 6, lines 11-21, and the paragraph bridging pages 12 and 13).

T 1567/17 - Immediate refusal

Key points

• In this examination appeal, the applicant filed amended claims under Rule 71(6) EPC after receiving a Rule 71(3) Communication. 
• The ED had considered the amendments to violate Article 123(2) EPC.
• " The applicant's remark in a response under Rule 71(6) EPC that an amended feature "can also be omitted if regarded as violating Article 123(2) EPC" cannot be construed as waiving its right to be heard and its right to a reasoned decision in case the application were to be refused. Rather, this remark merely intimates that the applicant would accept the issue of a new communication under Rule 71(3) EPC on the basis of the amended set of claims without said feature" 

EPO T 1567/17 - link

Reasons for the Decision

1. Admissibility of the appeal

1.1 In a situation such as the present case in which the request filed in the appeal proceedings does not expressly identify the subject of the appeal and the extent to which the decision is to be amended, as required by Rule 99(1)(c),(2) EPC, the latter can be ascertained from the appellant's overall submissions (see T 727/91, Reasons 1; T 273/92, Reasons 1).

1.2 On the one hand, the appellant stated in its notice of appeal that it contested the impugned decision as a whole. On the other hand, in its statement of grounds of appeal it defined its auxiliary request by appending the corresponding set of claims to the statement of grounds of appeal and by explaining that the term "continuous" in claims 1, 8, 11 and 16 was deleted, without expressly citing the original basis from which it had deleted said term. However, it is evident from the file that the feature "continuous bands" was first introduced by the appellant in the set of claims filed with letter of 22 February 2017 and that in the claims of the auxiliary request the word "continuous" has been deleted from the claims filed with the letter dated 22 February 2017.

1.3 Therefore, although the appellant did not explicitly state the content of its main request, it is clear that it requested the board to set the decision under appeal aside and to grant a patent on the basis of the documents of the European patent application to which the decision under appeal referred, in particular the set of claims 1 to 18 filed with letter of 22 February 2017.

1.4 Since the appeal also complies with the further requirements of Articles 106 to 108 and Rule 99 EPC, it is admissible.

2. Substantial procedural violation - violation of the right to be heard

2.1 After the examining division's communication under Rule 71(3) EPC, the appellant under Rule 71(6) EPC did not approve the communicated text and requested reasoned amendments to it. In this situation, if the examining division does not give its consent to the amendments requested, Rule 71(6), second half-sentence, EPC stipulates that "it shall resume the examination proceedings". This consequence is an embodiment of the fundamental principle of the right to be heard laid down in Article 113(1) EPC, according to which decisions of the EPO may only be based on grounds on which the parties concerned have had an opportunity to present their comments (see also T 1066/96, Reasons 2.2 and 3.2, regarding the previous provision in Rule 51(6) EPC 1973: "If the Examining Division does not consent to an amendment or correction requested under paragraph 5, it shall, before taking a decision, give the applicant an opportunity to submit, within a period to be specified, his observations ...").

T 1208/12 - Excluded plant variety

Key points

• The date of the decision at the oral proceedings is 07.02.2017, the decision was published more than a year later on 27.02.2018. 
• The Board decides that a claim for a hybrid plant seed produced by a cross of two types of Brassica plants, is directed to an excluded plant variety.
• The present Board: " For analysing the ruling in decision G 1/98, the board considers it however relevant to emphasise a guiding initial principle established by the Enlarged Board of Appeal in point 3.1 of the reasons for the decision, namely that: "Clearly, it is not the wording but the substance of a claim which is decisive in assessing the subject-matter to which the claim is directed. However, it does not follow that the subject-matter of a claim may be equated with the scope of a claim. In assessing the subject-matter of a claim, the underlying invention has to be identified. In this respect, it is relevant how generic or specific the claimed invention is" 

EPO T 1208/12 - link

Reasons for the Decision

1. The appeal is admissible.

The invention as claimed

2. The claimed invention (see section III) is a hybrid Brassica seed, and a plant grown therefrom, comprising a particular inheritable fertility restorer gene. The hybrid seed is further defined as resulting from a cross between a male parent plant and a female (male-sterile) parent plant.

[Claim 1 of the main request read:
"1. A hybrid seed comprising an inheritable and stable fertility restorer gene for ogura cytoplasmic male sterility, or hybrid plant thereof, produced by a cross between a plant obtained from seed deposited as Brassica napus olifiera 97SN-1650, 97SN-1651, 96FNW-1792-03 or 96FNW-1822-07 having the respective ATCC accession numbers 97838, 97839, 209001 or 209002 as a male parent and a second Brassica plant as a female parent, wherein the second Brassica plant has a glucosinolate level that is sufficiently low to ensure that the hybrid plant yields oilseeds having a total glucosinolate content of less than 30 mymol per gram dry weight."]

3. The male parent plant is defined as being obtained from seed from either of four particular (and deposited) Brassica napus olifiera varieties. The female parent plant is defined as being a Brassica plant having a glucosinolate level which is functionally defined, i.e. such a level that is sufficiently low to ensure that the hybrid plant yields oilseeds which have a total glucosinolate content of less than a certain defined (low) value (this value depending on the request under consideration, see section III).

T 0578/13 - Not admitting documents by OD

Key points

• In this opposition appeal, the OD had not admitted certain documents filed after the opposition period. The Board finds the OD's reasoning to be insufficiently reasoned. 
• " The Board further notes that the appellant's arguments concerning why it filed D4 and E21 to E34 after expiry of the opposition period and why they were prima facie relevant [,] were not addressed in the impugned decision. Ignoring those arguments infringes Article 113(1) EPC, as there is no indication that they were heard at all by the Opposition Division. This constitutes a further substantial procedural violation." 

EPO T 0578/13 -  link

3. Non-admission of E21 to E34 and D4 at first instance

3.1 In the first-instance proceedings the appellant argued that the subject-matter of claims 1 and 17 lacked novelty over its own prior uses of welded dispensers for packing guide wires, illustrated by E0 to E34. For example, E2 comprises the following drawing. FORMULA/TABLE/GRAPHIC

The appellant further relied on documents D1 to D4.

D4 and E21 to E34 were filed after expiry of the opposition period, with letter dated 21 September 2012. In that letter the appellant argued that the filing was in response to the respondent's filing of auxiliary requests and to the Opposition Division's preliminary opinion expressed in an annex to the summons to oral proceedings. The appellant reaffirmed this in the subsequent oral proceedings before the Opposition Division (minutes, point 4.2). More particularly, it argued that E21 to E34 served "only to give further documentation for the arguments and facts earlier submitted", i.e. to support evidence items E0 to E20. The Board notes that several items of evidence filed after expiry of the opposition period are solemn declarations by various customers of the appellant, confirming that they had bought the appellant's products constituting the objects of the alleged prior uses. Moreover, in the letter dated 21 September 2012 the appellant explained in detail (pages 4 to 20 and 23 to 26) why it considered that E21 to E34 and D4 were relevant to its case.

3.2 As far as the admissibility of D4 and E21 to E34 is concerned, in the impugned decision the Opposition Division merely stated the following (point 2 of the reasons):

"The Opposition Division notes that the additional documents introduced with letter of 21.09.2012 have been filed after the nine-month time limit mentioned in Article 99(1) EPC. As they are prima facie not considered more relevant than the documents presented earlier there is no reason to take them into account in the proceedings. Following Article 114(2) these documents - with the exception of the translations into an official language E7A-E11A, E14A-E16A, E18A - are not admitted therefore in the proceedings."

3.2.1 In the Board's view such a statement does not provide sufficient reasoning for not admitting the evidence concerned.

It is established jurisprudence that, when exercising its discretionary power to decide on the admissibility of late-filed evidence, a department of first instance should perform a prima facie analysis of its content. If, on that basis, the evidence is not considered relevant, then that department may decide not to admit it.

In order for that decision to be adequately reasoned, however, the reasons why there is no prima facie relevance should be explained. These are clearly absent in the impugned decision. It follows that the Opposition Division exercised its discretion in an unreasonable way, hence exceeding the proper bounds of its discretion.

This lack of reasoning amounts to a substantial procedural violation, as it contravenes Rule 111(2) EPC.

3.2.2 The Board further notes that the appellant's arguments concerning why it filed D4 and E21 to E34 after expiry of the opposition period and why they were prima facie relevant were not addressed in the impugned decision.

Ignoring those arguments infringes Article 113(1) EPC, as there is no indication that they were heard at all by the Opposition Division. This constitutes a further substantial procedural violation.

T 1814/12 - Decision according to the state of the file

Key points

• In this examination appeal, the applicant had requested a decision according to the state of the file. This was requested after the summons for oral proceedings and a telephone consultation. 
• The Board considers the decision to be insufficiently reasoned and finds this to be a substantial procedural violation.
• " [A] decision on the state of the file should be taken on the basis of facts and arguments already on the file in written form, which excludes the minutes of a telephone conversation unless the statements made orally in this telephone conversation were confirmed in a written communication. For this reason alone, the contested decision does not meet the requirements of Rule 111(2) EPC." 

EPO T 1814/12 - link

Reasons for the Decision

Admissibility of the appeal

1. As the appellant remedied the deficiency of the missing signature of an authorised person authenticating the statement of grounds of appeal in due time (Rule 50(3), second sentence, EPC), the appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

Deficiencies of the contested decision

2. According to Rule 111(2) EPC decisions of the European Patent Office which are open to appeal (including decisions "according to the state of the file") must be reasoned. This provision has been interpreted by the boards of appeal as requiring a reasoning which enables the appellant and the board to examine whether or not the decision was justified. The grounds upon which the decision is based and all decisive considerations in respect of the factual and legal aspects of the case must therefore be contained in the decision.

3. The contested decision is a decision on the state of the file. It is in a standard form and does not itself specify the grounds on which it is based; it simply refers to preceding communications where corresponding objections were raised (see Guidelines for Examination in the EPO (November 2017), C-V, 15.2). According to well-established case law of the boards of appeal, a decision drafted using this standard form complies with the requirement that a decision be reasoned pursuant to Rule 111(2) EPC only if certain conditions are fulfilled. In particular, the examining division must have fully expressed and reasoned its objections in the cited preceding communication or communications, taking into account all relevant arguments put forward by the applicant.

T 0611/15 - Withdrawing other requests before OD

Key points

• The appeal of patentee is not admissible, because at the end of the oral proceedings before the OD, he had withdrawn all other requests other than the one the OD allowed. Hence, he was not adversely affected. 
• The patentee contested that he had withdrawn the other requests. However, the minutes of the OD said so.
• "  In the absence of any request for correction of the minutes, the Board has to assume that these statements accurately reflect the state of the Proprietor's requests at the end of the oral proceedings before the opposition division." 

EPO T 0611/15 - link

Reasons for the Decision

1. Admissibility of the Appeals - Article 107 EPC

1.1 Proprietor's Appeal

1.1.1 Under Article 107 EPC, first sentence, parties to proceedings may appeal a decision only if they are adversely affected by it. If an appeal does not comply with this requirement the Board of Appeal shall reject it as inadmissible, Rule 101(1) EPC. In the present case the question has arisen whether the Proprietor was adversely affected by the contested decision.

1.1.2 In the contested decision it is stated in paragraph 16 of section I - Facts and submissions that (emphasis added):

"Oral Proceedings were held on 17.10.2014 in the absence of the opponent. At the oral proceedings the granted patent was revoked. The proprietors withdrew all the filed requests and submitted a single additional request for further consideration. The opposition division maintained the patent in amended form based on this request".

T 0274/16 - Consisting essentially of

Key points

• The Board recalls that according to established case law, "the expression "consisting essentially of" is to be interpreted as allowing the presence of amounts of other components in addition to the mandatory components, provided that the essential characteristics of the claimed composition are not materially affected by their presence". 

EPO T 0274/16 - link

1.2 According to the case law (see e.g. decision T 1730/09, which refers inter alia to T 759/91, T 522/91 and T 472/88), the expression "consisting essentially of" is to be interpreted as allowing the presence of amounts of other components in addition to the mandatory components, provided that the essential characteristics of the claimed composition are not materially affected by their presence (see Reasons 1.2.3). In particular, the latter passage contains the following statement: "the wording 'consisting essentially of' allows [...] that the composition of claim 1 [...] consists of the mandatory components listed in the claims and can contain additionally only other components which do not materially affect the essential [...] characteristics of the composition, e.g. minor amounts of impurities".

T 1761/12 - Interrelated features in the CPA

Key points

• From the headnote (informal translation): the argument of the opponent, that under the PSA does not foresee an assessment of the question whether or not the features of the closest prior art other than the distinguishing features would be maintained, is too formalistic.
  In particular, this proposed approach would deny the skilled person not only creativity, as is generally accepted, but also the ability to draw the consequences from the information that the prior directly provides.
  The problem-solution approach leads to an assessment of  what the skilled person would have undertaken to solve the at the outset defined objective technical problem, and only this one.
  Any additional reflections dealing subsequently with the relevance of the modifications which said analysis implies for the closest prior art [...], leads in fact to integrating into the initially defined objective technical problem elements of other problems to be solved [...]. Such an approach would therefore lead to an extension of the analysis beyond the framework defined by the PSA and must be rejected for this reason.
• In the present case, in the CPA document "O2", spikes were used with aluminium conductors (because of the oxide skin on Al). The distinguishing feature was using conductive ink instead of Al conductors. According to the Board, the skilled person would then also omit the spikes. In the patent, the spikes were present and this was therefore not obvious. The fact that in O2, the spikes had also a second function, is not relevant according to the Board. 

Headnote

La position défendue par l'intimée selon laquelle l'approche problème-solution développée par la jurisprudence des chambres de recours ne prévoit pas de s'interroger sur la nécessité de conserver ou non des caractéristiques non distinctives de l'état de la technique le plus proche apparait, trop formelle. En effet, au-delà du seul manque d'imagination généralement reconnu à l'homme du métier, cette approche semble également lui nier la capacité de tirer les conséquences d'une information que l'état de la technique lui procure directement. [...] L'approche problème-solution conduit à s'interroger sur ce que l'homme du métier aurait entrepris pour résoudre le problème technique objectif préalablement défini, et uniquement celui-ci. Toute réflexion complémentaire consistant à s'interroger, ensuite, sur la pertinence des modifications que cette analyse implique au niveau de l'état de la technique le plus proche, [...], conduit en réalité à intégrer au problème objectif initialement défini des éléments relevant d'autres problèmes à résoudre, [...]. Une telle approche conduirait donc à élargir l'analyse au-delà du cadre défini par l'approche problème solution et doit, pour cette raison, être écartée.

EPO T 1761/12 - link

Même si O2 souligne quel avantage supplémentaire la présence des pointes permet d'obtenir en termes de cohésion de la carte ainsi réalisée, (cf. O2a, paragraphe [0030]), cet effet ne saurait être pris en compte pour conclure au maintien des pointes de perçage. La position défendue par l'intimée, selon laquelle l'approche problème-solution développée par la jurisprudence des chambres de recours ne prévoit pas de s'interroger sur la nécessité de conserver ou non des caractéristiques non distinctives de l'état de la technique le plus proche apparait, à cet égard, trop formelle. En effet, au-delà du seul manque d'imagination généralement reconnu à l'homme du métier, cette approche semble également lui nier la capacité de tirer les conséquences d'une information que l'état de la technique lui procure directement. En l'occurrence, il est indiscutable que la présence de la couche d'oxyde et la nécessité de pointes pour la percer qui en résulte constituent un tout, découlant de l'emploi de conducteurs en aluminium. L'homme du métier aurait donc renoncé, dans la situation présente, à la présence des pointes, dès lors qu'il aurait décidé de renoncer à l'emploi des conducteurs en aluminium.

L'approche problème-solution conduit à s'interroger sur ce que l'homme du métier aurait entrepris pour résoudre le problème technique objectif préalablement défini, et uniquement celui-ci. Toute réflexion complémentaire consistant à s'interroger, ensuite, sur la pertinence des modifications que cette analyse implique au niveau de l'état de la technique le plus proche, comme en l'espèce la renonciation aux pointes de O2, conduit en réalité à intégrer au problème objectif initialement défini des éléments relevant d'autres problèmes à résoudre, comme ici, la nécessité de renforcer la cohésion mécanique de l'ensemble réalisé que permettent ces pointes. Une telle approche conduirait donc à élargir l'analyse au-delà du cadre défini par l'approche problème-solution et doit, pour cette raison, être écartée.

T 0916/15 - A123(2): No mind willing to understand

Key points

• According to this decision, the case law about reading patent applications with "a mind willing to understand" does not apply for Article 123(2) EPC.
• Compare e.g. T 2255/12 - link.

EPO T 0916/15 - link


1.3.1 According to established jurisprudence, under Article 123(2) EPC, an amendment to a claim can only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole application (cf. G 3/89, OJ EPO 1993, 117, points 1.3 and 3 of the Reasons, confirmed by G 2/10, OJ EPO 2012, 376, point 4.3 of the Reasons). 

In the board's view, however, the jurisprudence of the boards of appeal referring to "a mind willing to understand" does not apply for the purpose of assessing the allowability of amendments under Article 123(2) EPC, i.e. whether an amended feature of a claim is disclosed in the application as filed.
According to decision T 190/99, when interpreting a claim, the person skilled in the art should try, with synthetical propensity, i.e. building up rather than tearing down, to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent. The patent must be construed by a mind willing to understand, not a mind desirous of misunderstanding (see decision T 190/99, point 2.4 of the Reasons, and Case Law of the Boards of Appeal, 8th edition 2016, Chapters II.A.6.1 and II.E.2.3.3). 

It follows from this jurisprudence that the concept of "a mind willing to understand" applies where it is necessary to interpret a claim of a granted patent for the purposes of Article 123(3) EPC and Article 69 EPC. Accordingly, in the board's view, an interpretation of a claim of a granted patent which is illogical or which does not make sense should be ruled out.

This is, however, not the issue at stake in the present case where it has to be determined for the purposes of Article 123(2) EPC whether a person skilled in the art would derive directly and unambiguously, using common general knowledge, the subject-matter of the amended claim of the patent from the whole application as originally filed. Hence, in the board's view, the appellant's argument on this point must fail.

T 1666/14 - Binding effect of parent appeal

Key points

• For this examination appeal of a divisional, the Board had already decided for the parent application in opposition appeal to revoke the patent resulting from that parent application. Is this decision on the parent binding ( res iudicata) for the present appeal?
• The Board does not need to decide on the issue, because the current claims request are (in a relevant manner) different from the sole request decided on by the Board in the parent opposition appeal case.
• There was also an examination appeal in the parent case. However, that decision can have no binding effect on the present case, according to the Board, because of the later opposition appeal in the parent case. 

EPO T 1666/14 -  link

2. Zulässigkeit der Beschwerde - res iudicata

2.1 Die Prüfungsabteilung ist für ihre Entscheidung hinsichtlich der vorliegenden Teilanmeldung in puncto Klarheit und erfinderischer Tätigkeit von einer Rechtskraftwirkung der in Bezug auf die Stammanmeldung im Prüfungsbeschwerdeverfahren ergangenen Entscheidung T 514/08 ausgegangen, die noch zugunsten der dortigen Beschwerdeführerin ausfiel (vgl. Punkt 2.2.4, letzter Absatz der Entscheidungsgründe). 

Zu berücksichtigen ist jedoch, dass zwischenzeitlich im anschließenden Einspruchsbeschwerdeverfahren in Bezug auf die Stammanmeldung (T 936/13) die Entscheidung der Einspruchs­abteilung, das Patent zu widerrufen, bestätigt wurde (vgl. zur Prozessgeschichte näher oben im Sachverhalt Punkt II). Legte man die Möglichkeit der Rechtskraft­wirkung von Entscheidungen der Beschwerdekammer im Verfahren hinsichtlich der Stammanmeldung auch für hieraus erfolgte Teilanmeldungen zugrunde, stellt sich daher die Frage, ob und ggf. wie sich die beiden gerade genannten Kammer­entscheidungen im Prüfungs- und Einspruchsbeschwerdeverfahren bezüglich der Stammanmeldung auf das hiesige Prüfungsbeschwerde­verfahren für die Teilanmeldung auswirken.

T 2052/12 - Smart card repayment limit inventive

Key points

• The Board finds a claim inventive directed to a payment method. 
• The invention deals essentially with parking meters that can credit money on smart cards, in order to make repayments to the smart card. Such parking meters are stolen which were thus able to credit money " to any smart cards as wished" 
• In the invention, this is addressed (in essence) by storing a repayment limit on the smart card and accepting credits only up to that amount. The repayment limit is set equal to the (outstanding) debited amount of a debit (i.e. payment with the card).  The Board finds this technical and inventive. 

EPO T 2052/12 -  link

IV. The wording of independent claims 1 and 4 of the main request is as follows:

"1. A payment method (BV) executed by a communication facility (1, 2, N) and at least one data carrier (11, 12, K) for debiting a payment value unit (BW) from the data carrier (11, 12, K), in order to pay for a performed service, wherein the following steps are executed:
debit from a memory value unit (SW) stored in the data carrier (11, 12, K), of a debit value unit (AW) sufficient for payment for the maximum service to be performed, wherein a repayment limit (RL) stored in the data carrier (11, 12, K) is set, by the data carrier, to the amount of the debited debit value unit (AW);
calculation of a credit value unit (AWE) to be credited back, wherein the payment value unit (BW) to be paid for the actually performed service is subtracted from the debited debit value unit (AW);
check, by the data carrier (11, 12, K), whether the credit value unit (AWE) to be credited does not exceed the stored repayment limit (RL), wherein only when it is detected that the credit value unit (AWE) to be credited does not exceed the stored repayment limit (RL), the credit value unit (AWE) is credited by adding the credit value unit (AWE) to the memory value unit (SW) stored in the data carrier (11, 12, K), wherein after the crediting of the credit value unit (AWE) to the data carrier (11, 12, K) the repayment limit (RL) stored in the data carrier (11, 12, K) is reduced by at least the credited credit value unit (AWE), and wherein before the crediting of the credit value unit (AWE) to the data carrier (11, 12, K), key information (SI1, SI2) output by the communication facility (1, 2, N) and identifying the communication facility's credit authorization is checked by the data carrier (11, 12, K), and wherein the communication facility (1, 2, 8, N) is authorized to credit the credit value unit (AWE) up to at most the value of a maximum credit limit (ML) if the communication facility (8) has a first credit authorization, and wherein the communication facility (1, 2, N) is authorized to credit the credit value unit (AWE) up to at most the value of the repayment limit (RL) stored in the data carrier (11, 12, K) if the communication facility (1, 2, N) has a second credit authorization."

T 0447/13 - Illness and oral proceedings

Headnote
For the purposes of deciding whether to grant a request for postponement of oral proceedings on grounds of illness, the reference to "serious illness" in the Guidelines means an illness which is sufficiently serious to prevent the representative travelling to oral proceedings and presenting the case on the appointed day (Reasons, point 5.3).

Where a request for postponement of oral proceedings is refused on the ground that the request was not sufficiently substantiated, it is incumbent upon the Examining Division to explain why it considers the substantiation insufficient. In other words, it should state in clear terms what, in its opinion, should have been submitted or explained, but was not (Reasons, point 6.4).

Key point

• "On 5 February 2013 (the day before the scheduled oral proceedings) the appellant filed electronically a letter headed "URGENT - REGARDING ORAL PROCEEDINGS" and stating the following:"As discussed by telephone today with the Chairman of the Examining Division, the representative on this case has been take [sic] ill and is not able to attend the EPO for the Oral Proceedings scheduled for 6 February 2013 (tomorrow). Regrettably, we ask for the Oral Proceedings to be postponed. Please let us know the new date for the Oral Proceedings."
• The Board finds that the ED refused the requested postponement of the oral proceedings in an unreasonable way, and that this constituted a substantial procedural violation. The decision is set aside and the appeal fee is refunded.
• Note that the second bullet of the headnote seems to allow the ED to give the explanation in the written decision after the oral proceedings (see 6.5). I wonder if the Board means that the written decision is insufficiently reasoned, or that the applicant's right to be heard regarding the request for postponement, involves being informed for the reasons for not postponing the oral proceedings before the refusal decision is given. Note that there is no hard rule that the refusal decision must be taken at the oral proceedings - the ED could have held the oral proceedings, and then continued the procedure in writing to give the applicant the opportunity to provide evidence of the illness (and if proven, hold second oral proceedings). 
• The Board's decision is somewhat difficult to follow, because the ED had in fact sent a Communication maintaining the date for oral proceedings, including reasons. One of the reasons was " Nor was the demand accompanied by a substantially substantiated written statement indicating the reasons." I think that requiring "a substantially substantiated written statement indicating the reasons" is arguably the statement "in clear terms what, in its opinion, should have been submitted or explained" . 

EPO T 0447/13 -  link

Summary of Facts and Submissions

I. The appeal is against the decision of the Examining Division refusing European patent application No. 08 153 680 on the grounds that the claimed subject-matter did not meet the requirements of Article 123(2) EPC and did not involve an inventive step within the meaning of Articles 52(1) and 56 EPC.

II. In the statement of grounds of appeal the appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the main request filed with the letter of 4 January 2013 or the first auxiliary request filed with the statement of grounds of appeal.

Furthermore, a refund of the appeal fee was requested under Rule 103 EPC as the Examining Division was believed to have "committed a substantial procedural violation contrary to Article 113(1) EPC".

III. The procedural history of the case before the department of first instance, insofar as it is relevant for the present decision, is as follows:

(1) The applicant (now the appellant) was summoned to oral proceedings before the Examining Division to be held on 6 February 2013. An accompanying communication set out the main issues to be discussed: inadmissible extension of subject-matter (Article 123(2) EPC), lack of clarity (Article 84 EPC) and lack of inventive step (Articles 52(1) and 56 EPC). The inventive step argument was essentially that starting from document D2 (US 2006/082569 A1) as closest prior art, it would be obvious to the skilled person to add features from D1 (US 2004/027515 A1), thereby arriving at the claimed invention.

(2) With a letter dated 4 January 2013 the applicant filed a new main request, and provided arguments that the new request met the requirements of Articles 123(2) and 84 EPC. Furthermore, the applicant indicated its agreement with the Examining Division that D2 was the closest prior art, but argued that the combination of D2 and D1 would not lead to the claimed invention.

T 2501/11 - Beibringungsgrundsatz

Key points

• The headnote (informal translation): If the publication date of a citation is contested, and the party having the burden of proof does not react to this contestation in a substantiated way, then the Board may not consider the citation as part of the state of the art, because in opposition appeal proceedings the "principle that it is for parties to substantiate their own case"(Beibringungsgrundsatz) applies, in view of the inter parties character of the proceedings, and because the principle of examination of own motion by the Board is accordingly restricted.  
• Suggestions for a better translation of " Beibringungsgrundsatz"  are welcome. I don't like "principle of party presentation"  suggested elsewhere. A better alternative seems "burden of production", but that seems to be a bit particular to US law. 

EPO T 2501/11 -  link

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 (vgl. Punkt 3 der Entscheidungsgründe).



Entscheidungsgründe

3.1 Die Beschwerdegegnerin hat im Einspruchsverfahren gegen den abhängigen Anspruch 3 lediglich auf eine mangelnde Neuheit gegenüber D8 verwiesen (vgl. den Einspruchsschriftsatz, Seite 8, Absatz 2).

3.2 Von der Beschwerdeführerin 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).

Die Beschwerdegegnerin hat im Beschwerdeverfahren nicht zu diesem Einwand Stellung genommen. Für diese Frage ist die Beschwerdegegnerin darlegungs- und beweispflichtig. Daher kann die behauptete, aber streitige Vorveröffentlichung von D8 im Beschwerdeverfahren jedenfalls nicht zugunsten der Beschwerdegegnerin als bewiesen unterstellt werden.

3.3 Die Kammer hat im Anhang zur Ladung zwar eine vorläufige Einschätzung der Relevanz von D8 gegeben, jedoch kann die D8 unter den gegebenen Umständen 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.

3.4 Damit überwindet der geltende Hauptantrag die Einwände der angefochtenen Entscheidung, welche zu dem hinzugefügten Merkmal auch keine Gründe angeführt hat.

R 0004/17 - Successful petition for review

Key points

• This is the sixth eight successful petition for review. 
• The petitioner (respondent in appeal) submitted that it had only learned about the appeal with the appeal decision. The petitioner submitted that it had not received the EPO's Communication about the Notice of appeal, Statement of grounds, and a further communication about a letter of the appellant (with some supporting evidence from their docketing system). The EPO has no proof that the letters at issue had "reached its destination" (Rule 126(2) EPC). 
• Hence the right to be heard is violated. The appeal decision is set aside.
• It could have been hoped for that after R 0007/09, the Boards would not issue decision without contacting the non-responding party, e.g. the register making a phone call to the first instance representative. 
• The successful petitions are now: R 4/17 , R 3/15, R 2/14 , R 15/11, R 3/10, R 7/09 , R 21/11 and R 16/13

EPO R 0004/17 - link

Summary of Facts and Submissions

I. The Opposition Division rejected the opposition against the patent in suit and maintained the patent as granted.

II. The Opponent appealed and requested that the decision of the Opposition Division be set aside and that the patent be revoked. The appeal case was assigned to Board of Appeal 3.3.03 with the case number T 1277/12.

III. Under cover of a registered letter dated 11 June 2012 the Board of Appeal sent the notice of appeal to the Respondent-Proprietor. Under cover of a registered letter dated 7 August 2012 the statement of the grounds of appeal was sent to the Respondent-Proprietor. The Board of Appeal sent a further letter of the Opponent-Appellant to the Respondent-Proprietor under cover of a registered letter dated 23 August 2012. These three registered letters were all sent without advice of delivery. No reply to any of these letters was filed by the Respondent-Proprietor.

VI. The Board of Appeal neither issued a communication nor summoned the parties to oral proceedings before it. In the light of the lack of response from the Respondent-Proprietor, the Board of Appeal considered itself to be in a position to issue a decision revoking the patent without the need to hold oral proceedings.

V. The decision of Board of Appeal 3.3.03 in case T 1277/12 was sent to the parties under cover of a registered letter with advice of delivery dated 12 April 2017. It is this decision that is the subject of the petition for review.

VI. The Respondent-Proprietor, (henceforth the “Petitioner”), filed a petition for review of decision T 1277/12. The basis for this petition is that, in the Petitioner’s view, a fundamental violation of its right to be heard had taken place – Article 112a(2)(c) EPC and Article 113(1) EPC.

VII. The Petitioner argued that it had no record of ever having received the letters referred to in point III above and that it had no knowledge of the existence of the appeal until it received the decision in the appeal case (see point V above). As a consequence of this the Petitioner was unable to exercise its right to be heard and it had been obviously impossible for it to raise this objection during the appeal proceedings, Rule 106 EPC. Thus the Petitioner was not given the opportunity to be heard in those proceedings, contrary to Article 113(1) EPC, so that the requirement of Article 112a(2)(c) EPC was met.