T 2189/14 - Something you can do late

Key points

• " A party may, at any time, argue against the other party's case by engaging with that party's arguments, for example by finding flaws in the logic. In the present case however, the respondent's submissions go far beyond that. they constitute a fresh case, and are clearly late." (emphasis added).  

EPO T 2189/14 -  link

Reasons for the Decision

1. In the course of the oral proceedings, the respondent argued that feature A - one of the differentiating features between the invention and D2 - had the technical effect that the gears could be used as part of a modular system. The appellant submitted that this line of argument should not be admitted into the proceedings, as it amounted to a fresh case, was made far too late in the proceedings and the appellant did not have sufficient time to prepare a counter-argument.

The respondent did not make any written submissions in the appeal proceedings which had commenced in November 2014. This has the procedural consequence that the appeal proceedings are based only on the notice of appeal, the statement of grounds of appeal and the Board's communication (Art. 12(1) RPBA).

For the first time at the oral proceedings, the respondent presented a line of argument as to the technical effect of an alleged distinguishing feature between the invention and the prior art; by doing so they effectively presented their own case as an alternative to the appellant's. A party may, at any time, argue against the other party's case by engaging with that party's arguments, for example by finding flaws in the logic. In the present case however, the respondent's submissions go far beyond that. they constitute a fresh case, and are clearly late.

The Board sees no justification for admitting them into the proceedings. The respondent gave no reasons as to why it had presented its case only at the oral proceedings before the Board. The appellant had no time to consider the line of argument and considering it solely during an interruption of the oral proceedings appears in the circumstances insufficient. Therefore, the Board decided not to admit the respondent's line of argument into the proceedings.

T 2245/12 - Why consult D2?

Key points

• In this examination appeal, the Board sets aside the refusal as being insufficiently reasoned.
• "Section 11 [of the decision of the ED] prima facie provides arguments why the subject-matter of claim 1 of the main request is not inventive, as required by Article 56 EPC. The board can however detect no logical chain in the reasoning." 
• " In section 11.5, [the ED] introduce document D2. The reasoning is apparently that the skilled person would consider [D2] because it "has already in the title an indication that a person should be included in the architecture" [] and because 'D1 and D2 are also both Philips patent applications'. There is however no explanation why a skilled person would look for prior art where a person is included in the architecture, nor why the fact that the applicant is the same for both D1 and D2 is relevant." 
• The lack of reasoning is a substantial procedural violation.

EPO T 2245/12 - link

Reasons for the Decision

1. The admissibility of the appeal

The appeal is admissible.

2. No reasoned decision; Rule 111(2) EPC

2.1 According to Rule 111(2) EPC, the decisions of the European Patent Office 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 taken by a first instance department (see inter alia T 34/90 (OJ EPO 1992, 454), headnote I, and G 9/91 (OJ EPO 1993, 408), reasons 18, for the inter partes case). A reasoned decision issued by the first instance department meeting the requirements of Rule 111(2) EPC is accordingly a prerequisite for the examination of the appeal.

2.2 Section 11 of the grounds for the appealed decision prima facie provides arguments why the subject-matter of claim 1 of the main request is not inventive, as required by Article 56 EPC. The board can however detect no logical chain in the reasoning.

2.3 Section 11.2 lists the differences between the subject-matter of claim 1 and the disclosure of D1:

[....]

2.4 Section 11.3 states that these differences have the technical effect that when a user leaves a home-domain, the device is not able to use the user-licenses anymore.
ISection 11.4 then concludes that the problem to be solved is how to prevent a user from losing rights he or she paid for. Such would however be a problem caused by the listed differences, rather than one solved by it, as would be required in the context of the "problem and solution" approach, which should in principle be used for the assessment of inventive step at the European Patent Office.

T 0591/17 - Decision state of the file

Key points

• Another "decision according to the state of the file", another substantial procedural violation. 
• The present application was filed in 2003, and is remitted back to the ED. The age of the case " does not constitute a special reason for not remitting the case", taking into account that the applicant is not in a hurry. 
• The refusal of the ED is a form referring to a Communication of 4 March 2016. That communication in turn "refers to the communication of 22 March 2005 and the telephone conversation of 27 July 2015. In each of these instances, a different set of claims was before the examining division. It is, thus, not clear to what extent the reasons in the earlier communication and telephone conversation still applied to the claims on file when the decision was taken and to what extent they were overcome by the appellant's arguments put forward in the meantime." 
• The refusal was based on lack of inventive step over D1 with D9. "As regards D9, the communication refers to three entire pages and a complete figure of D9 to show that all the "security" features of claim 1 were known from that document. The communication does not, however, define the " security features" [and therefore does neither] state which features the examining division considered to be disclosed in D9. [] Also the broad brush reference to large parts of D9 is an obstacle to determining which features of claim 1 the examining division considered to be known from D9 and why. " 
• The refusal is therefore insufficiently reasoned and this is a substantial procedural violation. 

EPO T 0591/17 -  link

Reasons for the Decision

1. Rule 111(2) EPC provides that decisions of the EPO which are open to appeal shall be reasoned. The decision must contain, in logical sequence, those arguments which justify the tenor. All facts, evidence and arguments which are essential to the decision must be discussed in detail (see, for instance, T 278/00, point 2 of the reasons, and T 897/03, points 2 and 3 of the reasons).

2. For its reasons, the decision under appeal refers to the communication dated 4 March 2016. It is established jurisprudence of the boards of appeal that such decisions are in principle accepted, but that a decision "by reference" is only reasoned within the meaning of Rule 111(2) EPC if the communication referred to itself contains the required reasons (see, for instance, T 963/02, point 2.1 of the reasons).

3. The communication referred to states that the then claims lacked inventive step both in view of D1 and D2 and in view of D9.

3.1 As regards D1 and D2, the communication itself refers to the communication of 22 March 2005 and the telephone conversation of 27 July 2015. In each of these instances, a different set of claims was before the examining division. It is, thus, not clear to what extent the reasons in the earlier communication and telephone conversation still applied to the claims on file when the decision was taken and to what extent they were overcome by the appellant's arguments put forward in the meantime. The examining division appears to concede this by stating in the communication of 4 March 2016 that only "similar" reasoning applied to the claims pending at the time, without however explaining to what extent the earlier reasoning still applied and to what extent it had to be adapted.

T 1307/15 - What lacks inventive step?

Key points

• " The board concludes that the only distinguishing feature in question must be considered to lack inventive step over the prior art D2 and D7, Article 56 EPC." 
• I am nitpicking, but inventive step is about the subject-matter as claimed, i.e. the combination of features. Not about individual features of a claim. The Board could have said e.g. that the distinguishing feature does not provide for an inventive step over D2 and D7. 

EPO T 1307/15 -  link

18. The board concludes that the only distinguishing fea­ture in question must be considered to lack inven­tive step over the prior art D2 and D7, Article 56 EPC.

T 2340/12 - Experimental results and "space energy"

Key point

• In this examination appeal, the title of the application is "A space energy implosion unit and energy amplification unit using the same". 
• For this case, I will just refer to the EPO headnote shown below.
• As a bit of context, the Examining Division said in the Communication of 06.11.2010, point 2.3, that the applicant tries to prove the existence of a "torsion field"  and its medical properties with a single scientific paper as evidence, "torsion field" being essentially synonymous with "space energy" in the application at issue. D3 cited by the ED was an article titled "Pseudoscience. How does it threaten science and the public?".

EPO headnote
The filing of experimental results is not to be seen as an obligation resulting from the EPC imposed on the applicant but, in contrast, as a right, recognised by the practice and the case law of the boards of appeal, providing the applicant with the opportunity to convince the examining division or board of appeal that it erred in its initial findings.

Claim 1 at issue

"1. A torsion field implosion unit comprising:

• a planar structure (1) having a regular pentagonal shape;
• a cubic structure (2) which is installed to be separated from an upper portion of the planar structure (1) and has a regular pentagonal pyramid shape; and
• a separation structure (3) which separates the planar structure (1) and the cubic structure (2) from each other and has a smaller area than areas of the planar structure (1) and the cubic structure (2)."

EPO T 2340/12 - link

3. Main Request - Sufficiency of disclosure

3.1 It is, firstly, observed that the board does not understand how the torsion field or space energy are to be measured. In particular, it is not straightforward for the skilled person to identify which devices or systems could possibly be used for such measurements. Similarly, in the description (cf. paragraph [97]) reference is made to the frequency of the radiated space energy. In the absence of direct measurements of the torsion field or space energy, the board does not understand how the frequency of the radiated space energy could actually be measured.

[...] 

3.4 The appellant contested the findings of the examining division regarding the absence of proof of the effects achieved by the claimed devices. It was emphasised, in this respect, that the EPC does not contain any requirements for such experimental evidence to be provided. The appellant further questioned the competence of the examining division to require such evidence.

J 0017/16 - Request under Rule 49.2.a PCT

Key points

• The Legal Board decides on an appeal against a refusal by EPO as dO of a request filed with entry into the European phase for reinstatement of priority under Rule 49ter.2.a.i PCT. 
• The Legal Board refuses the request for lack of due care. The Board applies the case law as developed for re-establishment under Art. 121 EPC 122 EPC (of course, 26.04.2018).

EPO J 0017/16 - link

Sachverhalt und Anträge

I. Die am 18. April 2016 eingegangene und am 3. Juni 2016 begründete Beschwerde richtet sich gegen die Entscheidung der Eingangsstelle vom 22. Februar 2016, mit der der Antrag der Anmelderin auf Wiederherstellung des Prioritätsrechts zurückgewiesen wurde.

Gegenstand des Verfahrens ist die PCT-Anmeldung PCT/YYYY/YYYYY, eingereicht am 25. März 2014. Die in Anspruch genommene Priorität ist diejenige der deutschen Anmeldung DE ZZ ZZZ ZZZ, eingereicht am 13. Februar 2013.

Mit Bescheid vom 10. Juli 2014 hat das Internationale Büro (IB) als Anmeldeamt entschieden, das Prioritätsrecht im Hinblick auf das Merkmal der Unabsichtlichkeit wiederherzustellen. Gleichzeitig hat es festgestellt, dass die Wiederherstellung des Prioritätsrechts nicht auch deshalb erfolgen kann, weil das Versäumnis, die internationale Anmeldung innerhalb der Prioritätsfrist einzureichen ,,trotz Beachtung der nach den gegebenen Umständen gebotenen Sorgfalt" unterblieben ist

(Regel 26bis.3 a) i) PCT). Mit Eintritt in die europäische Phase hat die Beschwerdeführerin unter dem Datum des 3. August 2015 einen Antrag auf Wiederherstellung des Prioritätsrechts nach Regel 49ter.2 PCT beim Europäischen Patentamt als Bestimmungsamt eingereicht. Über diesen Antrag hat das Amt mit der angefochtenen Entscheidung vom 22. Februar 2016 entschieden. Dabei ist es zu dem Ergebnis gelangt, dass Wiederherstellung nicht gewährt werden kann, weil die Frist unter Heranziehung der unter Artikel 122 (1) EPÜ entwickelten Grundsätze nicht trotz Beobachtung aller nach den gegebenen Umständen gebotenen Sorgfalt versäumt wurde.

Die Beschwerde wurde von der Beschwerdeführerin am 18. April 2016 unter gleichzeitiger Einzahlung der Beschwerdegebühr eingelegt und mit Schriftsatz vom 3. Juni 2016 begründet.

[]

Entscheidungsgründe

1. Die zulässige ? das heißt insbesondere form- und fristgerecht eingelegte ? Beschwerde ist begründet soweit sie auf Wiederherstellung des Prioritätsrechts sowie auf Ausschluss der Anlage X zum Schriftsatz der Beschwerdeführerin vom 8. November 2017 von der Akteneinsicht gerichtet ist. Im Übrigen ? im Hinblick auf den Antrag auf Rückzahlung der Beschwerdegebühr ? ist sie unbegründet.

T 0660/14 - Undisclosed disclaimer and technical contribution

Key points

• The proprietor submitted that an amended claim complied with Article 123(2) EPC because "the disclaimed feature/features provided no technical contribution to the claimed device, and had no real meaning apart from excluding an incorrect interpretation of claim 1, such that the requirements for disclaimers to be allowed under Article 123(2) EPC as mentioned in G1/16 were fulfilled."
• The present Board does not analyze whether the undisclosed disclaimer was justified based on e.g. an Article 54(3) EPC prior right.
• Rather the Board examines whether the disclaimer provides a technical contribution. "Contrary to the proprietor's contention that the excluded features had no real meaning apart from excluding an incorrect interpretation of claim 1, [] the pivotable arrangement [] is of a technical nature, not least through the disclosure of the ergonomic benefits for the user [].. With the above pivotable arrangement of the axes providing a technical contribution, so too must the disclaiming of this arrangement as well." 
• " This finding is furthermore confirmed by considering whether merely a quantitative change to the original technical teaching has occurred or indeed whether a qualitative change has resulted from the introduction of the undisclosed disclaimers "

EPO T 0660/14 - link

Claim 1 of auxiliary request 4 further reads as claim 1 of auxiliary request 1 with the following features appended:

"wherein the operating member (41) and the control member (40) are arranged to be pivotable about non-common offset axes along said brake operating path, wherein the operating member and the control member are not pivotable commonly about either of said offset axes."

Reasons for the Decision

5. Auxiliary request 4

5.1 Admittance (Article 13(1) Rules of Procedure of the Boards of Appeal, RPBA)

5.1.1 This request was filed during the oral proceedings before the Board and thus represents an amendment to the proprietor's complete case (Article 12(2) RPBA). Under Article 13(1) EPC such amendment to a party's case may be admitted and considered at the Board's discretion (Article 13(1) RPBA), such discretion being exercised inter alia in view of the need for procedural economy. As is established case law of the Boards of Appeal, such procedural economy implies that amended requests should at least be prima facie allowable in order to be admitted.

5.1.2 As a first basis for claim 1, the proprietor suggested a combination of claims 1, 2 and 7 together with paragraphs [0012], [0013] and [0041] of the description as originally filed. This is however not accepted, as not one of these sections of the filed application discloses either:

- the operating member and the control member being arranged to be pivotable about non-common offset axes along said brake operating path; or

- the operating member and the control member not being pivotable commonly about either of said offset axes.

Whilst claim 7 discloses the option of pivoting about offset axes, paragraph [0041], which is alleged to provide the basis for these 'non-common offset axes', discloses solely the distinct wording that these two axes are 'different but parallel'. At least on a prima facie basis therefore, the added features are not directly and unambiguously disclosed to the skilled reader.

5.1.3 As regards the proprietor's alternative basis for the subject-matter of claim 1 meeting the requirement of Article 123(2) EPC, that the subject-matter of claim 1 includes an undisclosed disclaimer, this is also not accepted. 

[The proprietor's argument is that: " An alternative basis could be found by considering the alleged undisclosed features as either one or two undisclosed disclaimers. The disclaimed feature/features provided no technical contribution to the claimed device, and had no real meaning apart from excluding an incorrect interpretation of claim 1, such that the requirements for disclaimers to be allowed under Article 123(2) EPC as mentioned in G1/16 were fulfilled." ]

According to the Enlarged Board of Appeal decision G1/16 (see e.g. Headnote), to be allowable under Article 123(2) EPC, the introduction of an undisclosed disclaimer may not provide a technical contribution to the subject-matter disclosed in the application as filed. In particular it may not become relevant for the assessment of inventive step (G 1/16 Reasons, point 49.1).

T 2046/14 - No surprising development

Key points

• This is a straightforward case of not admitting requests in appeal. But still instructive.
• The ninth request is filed after the boards negative conclusion on higher ranking request. 
• " Independently of [whether AR-9 overcomes] the objections, the Board considers that a piecemeal filing of auxiliary request(s) in a case where the relevant objections were known from the beginning of the appeal proceedings neither satisfies the requirements of Article 12(2) RPBA, according to which the appellant should submit a complete case in its statement of grounds of appeal, nor satisfies the requirements of due process (efficient conduct of the proceedings) and the need for economy of the proceedings (Article 13(1) RPBA). 
• The Board also does not admit AR-10 to AR-12, filed with the Statement of grounds.
• " The appellant has not justified why those requests were only filed at the present stage of the proceedings. Besides, it was not shown that there had been any surprising development of the case which could justify the filing of those requests only with the statement of grounds of appeal. Therefore, there is no apparent reason which could justify why the appellant has not submitted those requests already in the first instance proceedings." 

EPO  T 2046/14 - link

Ninth auxiliary request

7. Admittance

7.1 The respondents requested that the ninth auxiliary request be not admitted into the proceedings.

7.2 Since the ninth auxiliary request was filed during the oral proceedings before the Board, its admittance into the proceedings underlies inter alia the stipulations of Article 13(1) RPBA.

7.3 According to the case law, it is a matter for each party to submit all facts, evidence, arguments and requests relevant for the enforcement or defence of his rights as early and completely as possible, in particular in inter partes proceedings in order to act fairly towards the other party and, more generally, to ensure due and swift conduct of the proceedings (Case Law, supra, IV.E.4.1.2 and 4.1.4).

T 1423/13 - Legitimate expectations protected

Key points

• In a Communication, the ED had said that " the next office action will be the summons to oral proceedings" if no allowable set of claims was presented. The applicant filed amended claims. The ED then refused the application, without oral proceedings. These were not requested by the applicant.
• The Board: "[The] statement by the Examining Division was a source of legitimate expectation for the Applicant. In the present case, the violation of this principle led to the decision to refuse the application, which came as a surprise to the Applicant." 
• "Having given that impression [that oral proceedings would be held], the Examining Division, by issuing the decision to refuse the application without summoning the Applicant to oral proceedings, took the Applicant by surprise, thereby depriving it of a further opportunity to present arguments or its final fall back positions. The applicant was thus denied its right to be heard."

EPO T 1423/13 - link

Reasons for the Decision

1. The present decision only concerns the question whether the refusal of the application was the consequence of a substantial procedural violation warranting the remittal of the case and the reimbursement of the appeal fee.

2. Procedural violation

2.1 According to Article 116(1) EPC, "Oral proceedings shall take place either at the instance of the European Patent Office if it considers this to be expedient or at the request of any party to the proceedings" (emphasis added by the Board).

2.2 For the Board, the wording of the statement of the Examining Division in its communication dated 11 May 2012 that "... in case no allowable set of claims is presented, the next office action will be the summons to oral proceedings ..." (emphasis added by the Board) is perfectly clear per se. It unambiguously implies that the Examining Division considered an oral hearing "at the instance of the EPO" to be expedient under the conditions expressly identified, i.e. "in case no allowable set of claims is presented".

2.3 Between the issuance of said communication and of the decision to refuse the application, the Examining Division neither withdrew nor rectified said statement, e.g. in order to inform or warn the Applicant that its application might be refused even without holding oral proceedings, as previously deemed expedient if no allowable claims were filed.

T 1833/14 - Commercially available but not anticipated

Key points

• In this opposition appeal about a public prior use, the Board deals what I call the "Coca Cola" question: does a product that is commercially available and that falls within the claim, take away novelty of the claim, if the recipe for that commercial product is not known (e.g. is Coca Cola still novel under Article 54 EPC?)
• " In the Board's view, those passages of G 1/92 also imply that a product put on the market is considered not to have been made available to the public within the meaning of Article 54(2) EPC if the skilled person had no means of establishing the composition or the internal structure of the product or was not able to reproduce it, in spite of the product being publicly available before the priority/filing date of the patent."
• The Board also does not admit a document D14: "Considering that the appellant argued that D14 was well known to the parties involved in the current proceedings because it was also cited in the appeal of the parallel case T 1766/14 [], there can be no excuse for not having filed said document before. The fact that the document is known by the parties and the Board from separate appeal proceedings is not a valid reason to justify its submission at such a late stage and, to the contrary, even speaks against admitting it into the proceedings." 
• 2019.10.02: typo's corrected. The decision is added in the GL 2019 G-IV, 7.2.1.

EPO T 1833/14 -  link

Reasons for the Decision

Main request (patent as granted)

1. Novelty

1.1 The sole novelty objection put forward in appeal by the appellant is against granted claim 1 in view of the alleged public prior use in respect of product Rigidex®P450xHP60.

1.2 Although all the concerns identified in the Board's communication (see section IX above) regarding the relationship between the documents relied upon by the appellant (sections 6.2.1, (a) to (e)) and/or the nature of the product disclosed in each of those documents (sections 6.2.2, (a) to (d)) were not removed by the appellant's arguments, it is not necessary for the Board to deal with those issues in details in view of the conclusion drawn in sections 1.3 to 1.9 below.

1.3 According to G 1/92 (see the headnote), one of the conditions for a product to belong to the state of the art is that it can be reproduced by the skilled person. In section 1.4 of the reasons it is in particular indicated that: "An essential purpose of any technical teaching is to enable the person skilled in the art to manufacture or use a given product by applying such teaching. Where such teaching results from a product put on the market, the person skilled in the art will have to rely on his general technical knowledge to gather all information enabling him to prepare the said product. Where it is possible for the skilled person to discover the composition or the internal structure of the product and to reproduce it without undue burden, then both the product and its composition or internal structure become state of the art" (emphasis by the Board).

1.4 In the Board's view, those passages of G 1/92 also imply that a product put on the market is considered not to have been made available to the public within the meaning of Article 54(2) EPC if the skilled person had no means of establishing the composition or the internal structure of the product or was not able to reproduce it, in spite of the product being publicly available before the priority/filing date of the patent.

1.5 In the present case, independently of whether a sample of Rigidex®P450xHP60 was publicly available before the filing date of the patent in suit and whether it fulfilled each of the features specified in granted claim 1, a condition to be fulfilled is therefore that the skilled person knew how to prepare said product without undue burden.

1.6 In that respect, it is generally known in the field of polymers and it was not contested by the appellant that the nature of the catalyst system, the type of reacting system and the process conditions significantly affect the properties of the produced polymer and of any product derived from it. Indeed, in the polymer field, in which products and compositions are often defined by means of parameters, the requirements of sufficiency of disclosure is analysed with particular care and is considered to be met in such cases if the application or the patent, when necessary supported by the common general knowledge, discloses the method of preparation of the polymers (in particular by means of the catalyst system, the type of reacting system and the process conditions) which results in products and compositions with the required parameters. The same criteria must therefore apply to the reproducibility without undue burden of a product on the market.

Considering that it was neither shown by the appellant that any information in that respect was available to the public before the filing date of the patent in suit for the product under scrutiny, nor that such information belonged to common general knowledge, it is concluded that the mere disposal of a sample of Rigidex®P450xHP60 was not sufficient for the skilled person to be able to prepare it.

It is further noted that in its notice of opposition (section on sufficiency of disclosure) the appellant [opponent] argued that the combination of parameters defined in granted claim 1 could only be obtained using a specific catalyst system, which is in line with the above conclusion that without knowing among others which catalyst system was used for preparing Rigidex®P450xHP60, the skilled person would not be in a position to prepare said product without undue burden.

1.7 In its letter of 12 October 2017 (page 5: heading "6.3") the appellant [opponent] argued that it would not have been difficult for the skilled person to prepare a composition having the features of the public prior use product which were specified in claim 1. However, this is not the issue at stake. Rather, in order for the product to be state of the art, the question is whether or not the skilled person would have been in a position to prepare the product as such, i.e. a sample identical to Rigidex®P450xHP60 in all its properties (not only those specified in claim 1, but exhibiting e.g. also the same properties as indicated in D2a). It was however not shown by the appellant that this was the case. To the contrary, the appellant stated in the above identified passage of its letter dated 12 October 2017 (see last full paragraph) that "what may be more difficult (if the catalyst used for the original product is not known) is obtaining the same mechanical properties as the Rigidex product".

1.8 During the oral proceedings before the Board the appellant argued that Rigidex®P450xHP60 was very similar to the products prepared in D6 and that the skilled person could adapt the teaching of D6 in order to prepare a composition according to granted claim 1. However, there is no evidence on file that the specific product supporting the objection of public prior use, namely Rigidex®P450xHP60, was prepared according to the teaching of D6. There is also no evidence on file that a product prepared according to D6 may show the same combination of properties as Rigidex®P450xHP60 (see e.g. D2a). Therefore, the appellant's argument does not convince.

1.9 During the oral proceedings before the Board the appellant submitted that it would not be reasonable to consider that a product falling under granted claim 1 which was in the public's hands before the filing date of the patent in suit could be held not to anticipate the subject-matter of said patent.

However, this is the conclusion reached in view of the condition which is derivable from decision G 1/92 (as explained in sections 1.3 and 1.4 above), namely that in order to be part of the prior art pursuant to Article 54(2) EPC, a public prior use must also amount to an enabling disclosure. A similar conclusion was already reached e.g. in T 977/93 (OJ EPO 2001, 84: sections 3, 4, 11 and 13 of the reasons), T 370/02 (sections 8.6 to 8.8 of the reasons), T 2045/09 (sections 29, 31 and 32-38 of the reasons) and T 23/11 (sections 2.1 to 2.5 of the reasons). The same line of argumentation was also adopted in T 301/94 (sections 3.3 to 3.5 of the reasons), albeit the conclusion in that case was that the alleged public prior use was part of the prior art because it could be reproduced without undue burden. Therefore, the appellant's argument is not persuasive.

1.10 In view of the above, it cannot be concluded that the skilled person was able to reproduce the product Rigidex®P450xHP60 without undue burden. Under those circumstances, a sample of Rigidex®P450xHP60 does not form part of the prior art pursuant to Article 54(2) EPC and cannot anticipate the subject-matter of the granted claims.

1.11 For those reasons, the appellant's sole objection pursuant to Article 54 EPC against granted claim 1 is rejected.

[...]

Admittance of the late-filed document D14

3. After the communication of the Board setting out its preliminary view of the case had been received, the appellant submitted with letter of 12 October 2017 the new document D14. Considering that the filing of that document represents an amendment to a party's case pursuant to Article 13(1) RPBA, the admission to the proceedings of D14 is subject to the Board's discretion (Article 13(1) RPBA) and underlies the additional stipulations of Article 13(3) RPBA.

3.1 Regarding the late-filing, it was not contested by the appellant that that document was available to the public and could have been retrieved earlier.

The appellant did not justify why D14 was only submitted at such a late stage. Considering that the appellant argued that D14 was well known to the parties involved in the current proceedings because it was also cited in the appeal of the parallel case T 1766/14 (see section II above), there can be no excuse for not having filed said document before. The fact that the document is known by the parties and the Board from separate appeal proceedings is not a valid reason to justify its submission at such a late stage and, to the contrary, even speaks against admitting it into the proceedings.

Also, it was not shown that any surprising development of the case had occurred, which could have justified the filing of D14 in response thereto.

3.2 There is no doubt that lack of novelty does not immediately appears from the document as such, as the appellant argues why the missing features (Mz(XCS) in particular) should be implicitly disclosed and should have been provided by the respondent (who was under no obligation to do so).

3.3 The fact that in the parallel case T 1766/14 (see section II above) the document was cited in the preliminary opinion of the Board for its relevance on either sufficiency of disclosure or lack of novelty (see sections 6.1.1.b and 7.2 of the Board's communication dated 18 July 2017 in T 1766/14) also does not speak in favour of the admittance of the document. Firstly the facts in both cases are different, e.g. the missing feature is not the same (Mz/Mw in T 1766/14). Secondly also the objections related to the document are different, as in T 1766/14 D14 (referred to as D10 therein) is pertinent also to sufficiency of disclosure. This means that, should D14 be admitted to the proceedings, a new and possibly complicated issue related to sufficiency of disclosure could have had to be dealt with for the first time in appeal (the findings on sufficiency of disclosure in the decision under appeal were never disputed by the appellant in the current appeal proceedings).

3.4 In view of the above, the admission to the proceedings of D14 would raise new issues, which would require to provide sufficient time for the respondent to prepare an appropriate line of defense. This, however, runs counter to the need for procedural economy. Besides, it makes no doubt that those new issues could not reasonably be expected to be dealt with by the respondent or the Board without adjournment of the oral proceedings.

3.5 For those reasons, the Board does not admit D14 to the proceedings pursuant to Articles 13(1) and (3) RPBA. | |

T 1471/14 - From product claim to use claim: extension

Key points

• The Board finds the following amendment of granted claim, from a product to a use, to violate Article 123(3) EPC, because the scope of protection is extended:
  " Use of a [deleted: A] liquid [deleted: human milk fortifier] composition comprising from 15% to 45% by weight of protein [] as a human milk fortifier for providing nutrition to preterm infants, wherein in use [deleted: wherein] the liquid composition is [deleted: intended to be] added to human milk in a volume-volume ratio of from 1:3 to 1:9."
• The Board considers that the amended claim " by way of Article 64(2) EPC, covers the fortified human milk directly obtained by the claimed use. [The proprietor] argued that in view of claim 1 as granted the scope of protection had not been extended. [] The board acknowledges that claim 1 as granted covers a liquid human milk fortifier composition and its use. However, its scope by no means extends to the product obtained by this use, since, even though covering a use, claim 1 itself is not a use claim." 

EPO T 1471/14 -  link

4. Amendments - Article 123(3) EPC

4.1 Claim 1 of the first auxiliary request differs from claim 1 of the main request in that the claim has been reworded as a use claim, namely as a use "as a human milk fortifier for providing nutrition to preterm infants, wherein in use the liquid composition is added to human milk in a volume-volume ratio of from 1:3 to 1:9".

4.2 As set out in T 401/95 (point 4.3.2 of the reasons), there are two different categories of use claims, namely

(a) the use of a physical entity to achieve an effect, and

(b) the use of a physical entity to produce a product.

A use claim of the latter category (b) is to be considered as a process claim comprising physical steps for producing the product using the physical entity. Pursuant to Article 64(2) EPC, the product insofar as it is directly obtained by that process, is also protected. Hence, the product, when obtained by that process for producing the product, is within the scope of protection conferred by that type of use claim (see decisions G 2/88, point 5.1 of the reasons and T 282/09, point 2.3 of the reasons).

T 0239/16 - Clinical trial document kills patent

Key points

• The Board decides that a patent for a second medical use lacks inventive step over D55, the patient consent form of the clinical trial.
• " In view of the fact that D55 was handed out to people who were encouraged to discuss its contents with anyone, the board comes to the conclusion that the contents of D55 have been made available to persons neither being bound by any confidentiality agreement nor being in a special relationship to the study sponsor who are thus to be classified as members of the public." The physician involved with the trial had declared that he hald told the patients " that, before signing the form, they should openly discuss the treatment referred to in the document with anyone, including their family and family doctor. " (document D57, filed by Opponent 5 on 01.06.2015,  from litigation in Australia).
• D55 discloses all features of claim 1, except the feature that the treatment is effective. However, that feature does not provide for inventive step.
• " The set-up of the clinical study of D55 thus creates an expectation of success for the treatment of osteoporosis with zoledronic acid administered once yearly. That expectation is not diminished by any disclosure of the prior art [the Board reviewed the cited documents in its decision]. A person skilled in the art would therefore follow a dosage regimen as disclosed in D55 for the once-yearly study arm when aiming at an effective treatment of osteoporosis and would thus arrive at the subject-matter of the independent claims of the main request." 
• In the preliminary opinion, also priority was discussed, and the Rapporteur had raised the issue whether the EPO is competent to examine the validity of transfer of priority. This was followed by submissions of the party about priority, including a legal opinion of Prof. Strauss. This issue is not discussed anymore in the present decision. 
• The parent patent EP1296689 has been subject of the NL Supreme Court decision ECLI:NL:HR:2017:692. The patent familiy was subject of litigation in numerous countries.

EPO T 0239/16 -  link

4. Public availability of document (55)

It was disputed amongst the parties whether document (55) formed part of the state of the art pursuant to Article 54(2) EPC.

Document (55) is entitled "Information for the patient concerning the study 42446 02 041". It consists of six pages numbered 1/6 to 6/6. In the introductory lines the following is stated: "Dear Madam, We would like to ask you to read the following information so that you understand the study you are asked to participate in and so that you may decide whether or not to participate... You were diagnosed with a reduced density of the bone. The medical term for this is Osteoporosis." Pages 1/6 to 3/6 give information about the objective of the study, explain the set-up of the study including details of the treatment to be given, provide information on possible benefits, risks and discomforts, and discuss contra-indications. Page 4/6 relates to other, alternative treatments, insurance conditions and confidentiality arrangements concerning patients' medical data. In the last paragraph of page 4/6 actual participation in the study is addressed. Page 5/6 relates to the information provided to the patient's general physician. The last paragraph on page 5/6 reads: "Thereafter, you must decide whether or not you would like to participate in the study. If you decide to participate, you shall be asked to sign the next page. You shall receive a photocopy of this or a second, signed copy." Finally, page 6/6 can be summarised as representing the patient consent form, comprising statements of the patient and the physician and their signatures.

From the information that is directly obtainable from document (55) it can thus be derived that it was addressed to a number of patients suffering from osteoporosis who were asked to participate in study 42446 02 041.

T 1719/13 - Adding dependent claim in appeal

Key points

• In this opposition appeal, the Board does not admit an AR wherein a dependent claim was added. The Board argues that the request could have been filed before the OD. The Board also notes that " this request amounts to an attempt to tidy up the claim set found allowable by the opposition division" and that " the opposition proceedings may not be used to tidy up the patent by adding one or more dependent claims" (under Rule 80). 
• This applies also in appeal: "By the same token, the board considers the addition of one or more dependent claims in appeal proceedings to a claim request held allowable by the opposition division to be an attempt to tidy up the allowable claim request and thus not admissible under Article 12(4) RPBA." The Board add that this rule is "independent of the admissibility of the amendments in question under Rule 80 EPC". The amendments at issue were in fact allowable under Rule 80. However, according to the Board, "for admissibility under Article 12(4) RPBA, compliance with Rule 80 EPC is not decisive".
• Hence, the Board looks first to the case law about how the OD must apply Rule 80, and then transfer this to Article 12(4) RPBA. As a comment, the Board does this while at the same time holding that "under Article 12(4) RPBA, compliance with Rule 80 EPC is not decisive". As a further comment, the Board in this case furthermore does not at all identify any moment during the first instance procedure at which the patentee should have filed the new requests, whereas that is the basic criterium of Article 12(4) RPBA. (edited to improve clarity of this bullet).

EPO T 1719/13 -  link

3. Auxiliary request I - admissibility

3.1 This request corresponds to auxiliary request I found allowable by the opposition division, except for the addition of dependent claim 5 (corresponding to claim 6 as originally filed).

3.2 It is undisputed that a request including present dependent claim 5 could have been filed in the proceedings before the opposition division. The admittance of this request into the proceedings was thus at the board's discretion (Article 12(4) RPBA).

3.3 In its grounds of appeal, appellant 1 argued only that this amendment had been carried out in order to "establish the identical dependency of the claims as existing in the PCT application". And at the oral proceedings it refrained from commenting on the admissibility of this request under Article 12(4) RPBA.

3.4 The board finds that there is no convincing reason to admit this request into the proceedings. The independent claims of this request are identical to those of the request held allowable by the opposition division, and therefore the inclusion of an additional dependent claim cannot be considered either a legitimate reaction to the impugned decision or a legitimate attempt to defend the patent in view of objections newly raised by the opponent (appellant 2) in its grounds of appeal. Rather, this request amounts to an attempt to tidy up the claim set found allowable by the opposition division.

3.5 It is consistent case law that the opposition proceedings may not be used to tidy up the patent by adding one or more dependent claims; such an addition is normally inadmissible under Rule 80 EPC (see for instance T 993/07, reasons 1.4 et seq.).

By the same token, the board considers the addition of one or more dependent claims in appeal proceedings to a claim request held allowable by the opposition division to be an attempt to tidy up the allowable claim request and thus not admissible under Article 12(4) RPBA.

3.6 For the sake of completeness, the board observes that this finding is independent of the admissibility of the amendments in question under Rule 80 EPC. In fact, as in the present case, it could be argued that the addition of dependent claim 5 along with making claim 3 dependent on claim 1 only and making claim 4 dependent on claim 3 only (instead of being dependent on "any preceding claim" as in their granted version) was occasioned by the ground for opposition set out in Article 100(c) EPC, because the dependency of claim 3 on claim 2 as granted and of claim 4 on claim 3 as granted was objected to by the opponent in its opposition brief (see item IX.1 thereof), and the features of the now added dependent claim 5 are those of granted claim 2. Put differently, with respect to the granted set of claims the inclusion of claim 5 could be considered not merely an addition of a dependent claim but the result of the redrafting of claims 3 and 4 occasioned by the ground for opposition set forth in Article 100(c) EPC. But, as stated above, for admissibility under Article 12(4) RPBA, compliance with Rule 80 EPC is not decisive.

3.7 For the above reasons, the board did not admit auxiliary request I into the proceedings.

4. Auxiliary request II - admissibility

4.1 It is uncontested that this request corresponds to the request held allowable by the opposition division. It therefore amounts to requesting the dismissal of appellant 2's appeal.

4.2 Appellant 2 objects to its admission because appellant 1 had not stated in its written submissions that this request corresponded to the one held allowable by the opposition division, nor was this readily apparent from appellant 1's written submissions. Therefore, Article 12(2) RPBA was not complied with. Moreover, this request did not overcome the objections raised by appellant 2.

4.3 The board notes that this request was filed with the notice of appeal. Therefore, the only legal basis for rejecting it as inadmissible would be Article 12(4) RPBA; but it was held by the opposition division to comply with the requirements of the EPC. It was the subject of the impugned interlocutory decision and evidently was not rejected as inadmissible by the opposition division. The proprietor did not fail to present it in the first-instance proceedings, having in fact filed it in the proceedings before the opposition division (cf. Article 12(4), first half-sentence, RPBA). The request also relates to the case under appeal and meets the requirements of Article 12(2) RPBA (cf. Article 12(4), second half-sentence, RPBA).

4.4 The requirements of Article 12(2) RPBA do not include the necessity to indicate in the grounds of appeal or in the reply thereto whether claim requests submitted in appeal proceedings have already been submitted in the first-instance proceedings. The board therefore fails to see why auxiliary request II could be held inadmissible solely on the basis of this provision.

Moreover, the board also holds that Article 12(2) RPBA is complied with because, by re-filing the request held allowable by the opposition division, appellant clearly and concisely requests (as an auxiliary request) in its notice of appeal that the impugned decision be upheld, i.e. that the appeal of appellant 2 be dismissed. That the opposing party, i.e. appellant 2, is allegedly unable to determine whether present auxiliary request II corresponds to the request held allowable by the opposition division is of no relevance because, on an objective basis, a comparison of the two claim requests reveals that they are identical. This is also confirmed by the fact that the board had no difficulty in identifying auxiliary request II as corresponding to the request held allowable by the opposition division (cf. the board's communication pursuant to Article 15(1) RPBA, point 6.1).

4.5 The question of whether this request fails to comply with the substantive requirements of the EPC, as submitted by appellant 2, is immaterial for the issue of its admittance.

4.6 For the above reasons, the board saw no reason not to admit auxiliary request II.

T 1452/16 - Novel parameter and old products

Key points

• This opposition case is about prior use of a chemical composition. The claim uses a novel parameter. Opponents had old samples re-analysed to measure the novel parameter. 
• The Board, in general, about the standards of evidence: "In this context, it has to be pointed out, however, that even though these different concepts as to the level of proof have developed in the case law of the boards [i.e. "up to the hilt"  and " balance of probabilities", they have in common that a judgement is to be made on the basis of application of the principle of free evaluation of evidence (cf. [G 1/12, r. 31]). The board therefore takes the view that what matters is whether or not the deciding body, here the board, is - having regard to all evidence and arguments put forward by the parties - convinced that the alleged facts, e.g. a public prior use, had indeed occurred. Hence, even if the present case falls into the category of "balance of probabilities", the board did not merely form its opinion on the basis of whether the alleged facts were just slightly more likely to have occurred than not, but on the basis of whether it was convinced that they had occurred." 
• About patents allegedly claiming old products with describing them with some novel parameter, and the burden of proof: " However, by [the patentee] using a parameter [in claim 1] which had not been used in the prior art, the burden is on the patentee to prove that the prior art does not fall within the terms of the claim. Rather than the patent proprietor, it was the opponents that were at a disadvantage in the present case, since they were only prompted to test the available enzymes for the claimed ratio once this was used as a characterising parameter in the patent: were it not for the existence of stored samples [], it would have been virtually impossible for the opponents to test that ratio in samples available before the priority date." 
• The appeal procedure was accelerated in view of national (court) proceedings. Notices of appeal filed 27.06.2016, statement of grounds 08.09.2016, replies to appeal 24.01.2017, summons 07.02.2017 (!), oral proceedings scheduled 19-21.09.2017. So a bit more than a year from statement to grounds to final revocation of patent. 

EPO T 1452/16 -  link

Reasons for the Decision

1. The appeals are admissible.

2. With its notice of appeal and statement of grounds of appeal, appellant III requested acceleration of the appeal proceedings, in view of pending national proceedings. On the basis of the documentary evidence subsequently submitted by appellant III and in the absence of any objections to this request by any of the other parties, the board decided to accelerate the present proceedings.

3. Appellant III had requested, in its written submissions and again at the oral proceedings, that the board should first deal with the ground for opposition under Article 100(b) EPC before turning to the grounds under Article 100(a) EPC because the board's decision on insufficiency would have an impact on the discussion of novelty and inventive step.

The board notes that there is no right of a party to have oral proceedings conducted by the board in a particular manner. It is up to the board to decide what points are to be addressed during the oral proceedings, and in which order. In this respect the board is guided by Article 15(6) RPBA, which stipulates that the board must ensure that, as a general rule, each case is ready for decision at the conclusion of the oral proceedings. Self-evidently, the board is, pursuant to Article 113(1) EPC, under the obligation to give the parties the opportunity to present their comments on all the grounds or evidence on which it will base its final decision. The various grounds for opposition under Article 100(a) to (c) EPC which might be prejudicial to the maintenance of a granted patent are separate ones, and the board considered it most appropriate to start the discussion at the oral proceedings with the topic of the alleged public prior use concerning the product Amano lactase.

4. Main request

[Claim 1 of the MR is claim 1 as granted, see XII, and reads:
"1. Process to produce a dairy product which comprises using a preparation of a neutral lactase from Kluyveromyces which comprises less than 30 units arylsulfatase activity per Neutral Lactase Unit (NLU) of lactase activity."]

Novelty over the alleged public prior use of "Lactase Y Amano L"

4.1 Several lactase preparations from Kluyveromyces, and in particular from K. lactis, were known and available at the priority date (patent, paragraphs [0008] and [0023]; D1), K. lactis being the major commercial source of lactase, according to D1 (page 1769, left column, lines 1 to 3: beta-galactosidase is lactase; see patent, paragraph [0003]). These lactases were known to be neutral and intracellularly produced (patent, paragraph [0008]), but there was no information at the priority date as to the presence of arylsulfatase in these preparations, let alone concerning the ratio of arylsulfatase activity (ASU) and lactase activity (NLU).

Opposition Division in T 0844/18 - Crispr patent (priority)

Key points

• The appeal in the case of the Crispr/CAS patent EP 2771468 has file number T 0844/18 and is pending [note: decision now issued]. EP '468 was revoked by the OD for lack novelty caused by invalid priority (from a US provisional) 
• The OD's written decision of 26.03.2018 is available here. 
• The relevant facts are that the US provisional(s) were filed with the inventors as applicants. The PCT application was filed by research institutes as employers. However for some of the inventors named in the US provisional, neither that inventor nor his employer was a (co-)applicant of the PCT application, and there was no transfer of priority right from the inventor to the PCT applicants. The question is whether this makes the priority invalid.
• The OD does not deviate from EPO's established practice and considers the priority invalid, thereby rejecting three main arguments of patentee.
• According to the OD, the EPO is competent to examine the validity of priority, also concerning entitlement to priority. The patentee had challenged this competence of the EPO.
• Furthermore the PCT application must be filed by all applicants of the US provisional (or their successors in title), not by one or more of them, to validly claim priority. The patentee had challenged this based on A87 using "any person".
• And finally, the question of who is an "applicant" of a US provisional for the purpose of Article 87 EPC is not determined by US national law. Patentee had invoked US law and had submitted that under US national law, the inventors that were omitted as applicant of the PCT application were properly disregarded as "applicant" of the US provisional under US law, because they had not contributed to the invention of the PCT application. 

• EPO T 0844/18  (EPO T 844/18) - The OD's written decision of 26.03.2018 is available here. The file is here.

Note 13.09.2019: the interested reader may also follow T2360/19 ; EP14170383; also about a Crispr patent and priority. Written decision OD of 28.08.2019 that priority was invalid.

T 1897/17 - Appeal deemed not filed, or inadmissible

Key points

• In this case, the Notice of appeal was filed late (and the appeal fee was paid together with the Notice. The Board refuses the request for RE. For the RE case, the Board notes: "there is no need to examine if the accident of Mr von M.'s son and the resulting needs of his daughter - with the consequence that Mr von M. left the office immediately - could be considered a further issue in the context of all due care taken. " 
• The present Board decides that the consequence is that the appeal is rejected as inadmissible (and not deemed not filed, so no refund of the appeal fee).
• " The board does not concur with the majority interpretation in decisions of the Boards of Appeal that an appeal is 'deemed not to have been filed', if the notice of appeal or the payment of the appeal fee were received outside the two-month time limit of Art. 108 EPC" 
• The Board acknowledges that this point was referred to the Enlarged Board in G 1/14 (T 1553/13) and G 2/14 (T 2017/12). However, in neither cases did the Enlarged Board decide on the issue. The present Board notes that subsequently, T 1325/15 and T 2406/16 followed the majority view, based on R 4/15 finding that a petition for review is in such cases deemed not filed.
• The present Board maintains that the sanction is that the appeal is inadmissible.
• " Consequently, R. 101 (1) EPC and R. 77 (1) EPC can be seen as the implementing provisions envisaged by the travaux préparatoires (as cited in T 2017/12 "Ob in der Ausführungsordnung zu diesem Abkommen eine entsprechende Bestimmung aufgenommen werden soll, wird später zu entscheiden sein."), confirming and supplementing the (ordinary) meaning of Art. 108 EPC, second sentence and Art. 99 (1) EPC, second sentence respectively, by explicitly stating the procedural consequence arising from the late-filing of the respective fee, i.e. to reject the appeal or opposition as inadmissible. The travaux préparatoires do not cover Art. 112a EPC as this article was only introduced into the EPC 2000." 
• The present Board is also not persuaded by R 4/15, because R 4/15 " 'did not elaborate on the reasons for why late payment of the fee for petition for review should result in the pe­ti­tion for review being deemed not to have been filed, as opposed to being found inadmissible" .
• The present Board does  not refer questions to the Enlarged Board, which I believe the Board could have done of own motion. Update 02.07.2018: the President did refer a point of law to the Enlarged Board in view of T1897/17, pending as referral G1/18.

EPO T 1897/17 -  link

Reasons for the Decision

1. An applicant can be reinstated into the time limit of filing a notice of appeal if the applicant was unable to ob­serve this time limit despite all due care requi­red by the circumstances having been taken (Art. 122 (1) in con­junc­tion with Art. 108 EPC).

2. It not only rests with the appellant to exercise all due care, but with all persons acting on its behalf. Notably, also an appellant's professional represen­tative including the representative's assistants have to exercise all due care. All of these persons' acts are finally attributed to the appellant (Case Law III.E.5.5). All due care by the representative includes, among other duties, the reasonable instruc­tion and continuous supervision of assistants (Case Law III.E.5.5.4.(a) and (b)).

3. Based on the appellant's assertion of the facts, which are supported by the documentary evidence, all persons in the patent attorney's firm involved in the present case wor­ked under the guidance and super­vision of a qua­lified European Patent Attorney. No circumstances have come to light which could cast any doubt on the re­liability of any of these persons, in particular on Mr von M., the person res­ponsible for the prepa­ra­tion of the notice of appeal in the case at hand.

4. In accordance with established case law, one of the criteria to establish whether "all due care required by the circumstances" has been taken, is that the repre­sentative must be able to communicate effectively with his or her client. Specifically, to exercise due care, a professional representative that has been instructed to file an appeal, has to take all necessary measures to obtain any additional instructions needed to dis­charge his or her duty (Case Law III.E.5.5.2(a)). In addition thereto, the representative has to commence work on a file reasonably clear of a deadline, to be sure to complete all necessary steps in good time (Case Law III.E.5.5.2(d)).

5. In the present case, neither of these criteria have been satisfied.

T 0198/16 - Debit order and RE

Key points

• The Board decides that the following is not a debit order, or sufficient to effect payment with (non-automatic) debiting: a remark in the Notice of appeal that "The appeal fee is paid via the enclosed EPO form 1010." (where no such form is enclosed). 
• The Board:  "Equalling the intention to pay to a payment is detached from the reality of business transactions and is therefore unacceptable. The long standing case law of the boards of appeal on this matter can therefore not be followed. " 
• The Board: " An intention to make a payment remains a (mere) intention and not a payment, no matter whether or not the EPO has access to sufficient funds of the person or entity intending to pay which would, as a matter of fact, make it possible for the EPO to avail itself of those funds. The reason is that the EPO is simply not entitled to do so under its own rules." As a comment, this argument does not convince me: a formally valid debit order neither is a payment (e.g. consider insufficient funds). And the sentence in a Notice of appeal is not an intention (a mental state of the payer), but a communication of that intention to the EPO. A further question is what the "rules" are: the text of the ADA, or the interpretation thereof in the established case law?
• I wonder if the phrase "and a debit order is auxiliary herewith given" would have saved the applicant in this case. 

As a comment, note that the current text of the ADA in any case requires that a debit order is in XML, which excludes PDF, according to the wording of ADA 5.1.2. 

• The second topic is re-establishment.
• The Board has an extensive analysis of what the date is of removal of the cause of non-compliance, for the starting of the 2 month period for filing the RE request. 
• The Board considers that the current case law under which the date of removal of the cause of non-compliance is the date when party should have discovered the error, wherein "should"  means a party showing due care in the entire period after the missing the time limit and the date of removal of the cause of non-compliance. The reason is that this case law doubles the "due care" requirement.
• The Board: " The above shows that the current practice of applying the due-care requirement in the context of removal of the cause of non-compliance with a period within the meaning of Rule 136(1) EPC, may well be seen as extending the meaning of the due-care requirement []. This approach to the "removal" criterion, which cannot be based on the letter of the law, is therefore doubtful."
• However, the Board does not answer how the date of removal of non-compliance needs to be decided, because it does not allow the request for RE in any case. The Board assumes that the RE request was timely filed in favour of the applicant (even though if late filed, the RE fee was reimbursed, according to the present Board citing R4/15). 
• About the allowability of the request for RE: "Different from an isolated mistake made by an assistant, a mistake made by a representative, whether isolated or not, is not excusable" (citing R 18/13, par 19, which is in fact restricted to time limit monitoring).
• The request for RE is refused as due care was not shown.
• The appeal is deemed to have not been filed and the appeal fee is reimbursed. 
• For some reason, the Board deals with the debit order issue in a quote from the preliminary opinion, giving two paragraphs "3.2"  in the same decision. 

EPO T 0198/16 - link


EPO Headnote
1. The intention to authorise debiting of the deposit account does NOT already allow the EPO to act on such authorisation and carry out such intent where the EPO, under the deposit account system, already holds such money in trust (deviation in particular from T 1265/10, at point 15), (see point 3.4.3 of the quotation from the summons under point 1 of the Reasons).

2. A representative must give express and clear instructions to an assistant to the effect that the appeal fee has to be paid. It is not enough to rely on the assistant's deducing the duty to file the payment form from the notice of appeal, which includes the sentence: "The appeal fee is paid via the enclosed EPO form 1010."

Reasons for the Decision

1. Main request for a communication confirming timely payment of the appeal fee

As to this point, the appellant's submissions made in the reply to the annex and during the oral proceedings did not make the board deviate from its preliminary opinion as comprehensively expressed in the annex, section C. Legal assessment, point 3, up to the side note in point 3.4.3 starting with the clause "As an aside ...", with the exception of two paragraphs of the quoted section of point 3.4.1 that are struck through. The corresponding text is set forth verbatim below. (As for the two struck-through paragraphs, see the explanation following the quotation.)

[beginning of quotation]

"3. Whether the appeal is deemed not to have been filed for failure to pay the appeal fee within the time limit for filing an appeal

3.1 The issue

The notice of appeal against the decision of the examining division of 19 October 2015 was received on 24 December 2015 and, therefore, within the two-month appeal period set out in Article 108, first sentence, EPC, which expired on 4 January 2016 (see Rules 126(2) and 134(1) EPC). Pursuant to Article 108, second sentence, EPC, however, 'Notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid'.

The question is whether, in the circumstances of the present case, the sentence 'The appeal fee is paid via the enclosed EPO form 1010' (the form had not been enclosed) in the notice of appeal must be considered to constitute a valid order for payment of the appeal fee by debit from a deposit account with the EPO. If so, the appeal fee would have been paid on 24 December 2015, and the appeal would be deemed to have been filed on that day (subject to the account containing sufficient funds). Otherwise, in the absence of any payment received within the time limit that expired on 4 January 2016, the appeal would be deemed not to have been filed, as indicated in the Registry's communication of 19 April 2016.