T 2342/14 - Remittal and preliminary opinion

Key points

• The OD had revoked the patent for added subject-matter only. Four years later, the Board finds the (amended) claims to comply with Art. 123(2) EPC and remits the case. The opponent had objected that this would not be procedurally compliant.
• " However, should the board decide on key issues for the first time at the appeal stage it would have the consequence that a party loses a review instance." 
• " The board has taken note of the statement in the summons to oral proceedings before the OD that the "opposition division is thus of the preliminary opinion that the subject-matter of claim 1 is new and inventive". However, in the absence of any reasoning, it can only be speculated as to why the opposition division reached this conclusion, which is in any case of a provisional nature." 
• I think that this is correct, but it does not seem very positive that the opposition procedure arrives at novelty and inventive step after 5 years of proceedings. None of the instances was particularly slow in this case: the OD took its decision within one year, the Boar took about 3.5 years from the Statement of grounds. But with a new OD decision after remittal and a further appeal, the opposition may very well take more than 10 years in total. 

EPO T 2342/14 -  link

Summary of Facts and Submissions

I. The appeal lies from the decision of the opposition division to revoke European Patent No. 1 829 625. In its decision the opposition division held that the subject-matter of granted claims 1 and 2 comprised added subject-matter (Articles 100(c) and 123(2) EPC).

Reasons for the Decision

6. Remittal to the opposition division (Article 111(1) EPC)

6.1 During the oral proceedings the respondent [opponent] inferred that a continuation of the case before the opposition division would not be procedurally efficient. However, should the board decide on key issues for the first time at the appeal stage it would have the consequence that a party loses a review instance.

6.2 In the present case, the only grounds for opposition considered in the decision under appeal and which the board therefore considered in the present decision were those of Article 100(b) and (c) EPC. The board has taken note of the statement in the summons to oral proceedings before the opposition division that the claimed method of the patent as granted did not appear to be disclosed in the prior art cited by the respondent and that the "opposition division is thus of the preliminary opinion that the subject-matter of claim 1 is new and inventive". However, in the absence of any reasoning, it can only be speculated as to why the opposition division reached this conclusion, which is in any case of a provisional nature.

6.3 Given these circumstances, the board considers that remittal of the case to the opposition division for further prosecution is the most appropriate course of action (Article 111(1) EPC).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division for further prosecution on the basis of the claim of auxiliary request 2 filed at the oral proceedings before the board.

T 2090/14 - The structure of Art.111

Key points

• In this examination appeal, "lack of novelty [over] D2 was the sole reason given in the decision under appeal for the refusal of the application. In the board's judgement (see above), the subject-matter of the claims of the main request is not anticipated by the disclosure of document D2." 
• The Board then concludes: "Pursuant to Article 111(1) EPC, following the examination as to the allowability of the appeal, the board will decide on the appeal, and in that respect it may either exercise any power within the competence of the department which was responsible for the decision or remit the case for further prosecution." The Board remits the case because the ED had not dealt with inventive step.
• I like this decision, because it clarifies that in principle there are two phases under Article 111(1), a first phase of review whether the impugned decision is correct. If yes, the appeal is dismissed, if no, the second phase is applicable. In the second phase the Board can examine whether the patent application meets the requirements of the EPC for the first time in appeal and it can also remit the case (the same for opposition appeals, of course). 
• Art. 111(1) EPC reads: "Following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal. The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution." 
• In my view, this also means that any auxiliary request considered in the first stage, must be admissible under Art. 12(4) RPBA, whereas that provision should be less relevant in the second stage.

EPO T 2090/14 - link

Allowability of the appeal

11. Lack of novelty vis-à-vis the disclosure of document D2 was the sole reason given in the decision under appeal for the refusal of the application. In the board's judgement (see above), the subject-matter of the claims of the main request is not anticipated by the disclosure of document D2.

12. The appeal is thus found to be allowable.

Remittal (Article 111(1) EPC)

13. Pursuant to Article 111(1) EPC, following the examination as to the allowability of the appeal, the board will decide on the appeal, and in that respect it may either exercise any power within the competence of the department which was responsible for the decision or remit the case for further prosecution.

14. Since the examining division has not dealt with inventive step and as the appellant has requested remittal, the board decides to remit the case to the examining division for further prosecution, thereby giving the appellant the opportunity to have its case heard by two instances.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division for further prosecution on the basis of the set of claims of the main request filed during the oral proceedings on 22 June 2018.

T 0115/13 - Review of first instance

Key points

• The Board does  not admit AR-2 which was filed with the Statement of grounds in this opposition appeal. Patentee submitted that the request was in response to document that opponent had filed very late during the first instance proceedings.
• The Board: "opponent 1's very late-filed documents had in fact not been used at all in the reasoning for the opposition division's decision. The board fails to see how a request which is filed by the appellant with the statement of grounds of appeal as a reaction to documents filed by the other party but which were not found relevant for the appealed decision can serve as a means to redress the appealed decision. Hence, the board makes use of its discretionary power under Article 12(4) RPBA and decides not to admit the second auxiliary request into the proceedings." 
• Hence, the Board does not at all consider whether the features added in AR-2 would perhaps also be prima facie successful in overcoming the inventive step objection against the Main Request.
• The Board also points out that: "Appeal proceedings are intended to review the correctness of first-instance decisions, not to continue examination by other means." 
• Of course, this point will be emphasized in the upcoming new RPBA (based on the consultation about the draft). But how strictly can this be applied to a Statement of grounds filed in 2013 (and hence to first instance proceedings even earlier)?

EPO T 0115/13 - link

7. Second auxiliary request - admissibility

7.1 Appeal proceedings are intended to review the correctness of first-instance decisions, not to continue examination by other means. Thus, pursuant to Article 12(4) RPBA, it is at the discretion of the boards of appeal to admit requests which could have been presented in the proceedings before the examining or opposition division, account being taken of the circumstances of the particular case and of the parties' arguments.

7.2 The second auxiliary request was filed as the first auxiliary request with the statement of grounds of appeal. In this request, claim 1 contains amendments that had not been submitted in any of the requests filed during the first-instance proceedings.

7.3 According to the appellant, the amendments in the first auxiliary request were made as a response to opponent 1's very late-filed documents D26 to D30. The opponents objected to this request's admission on the ground that it introduced subject-matter which had never been examined by the opposition division and its admission might therefore require remittal of the case to the department of first instance.

7.4 The board notes that opponent 1's very late-filed documents had in fact not been used at all in the reasoning for the opposition division's decision. The board fails to see how a request which is filed by the appellant with the statement of grounds of appeal as a reaction to documents filed by the other party but which were not found relevant for the appealed decision can serve as a means to redress the appealed decision. Hence, the board makes use of its discretionary power under Article 12(4) RPBA and decides not to admit the second auxiliary request into the proceedings.

T 2145/11 - No res iudicata parent

Key points

• The opponent alleges that patentee's appeal is not admissible, because the patent results from a divisional application and the Board had already decided on the parent. The opponent invokes T 51/08 holding that : " Subject matter on which a final decision has been taken by a board of appeal in the parent application becomes res iudicata and cannot be pursued in the divisional application." 
• The Board finds that T 51/08 does not apply because the subject matter of the present claims is different from that of the parent. The appeal is admissible.

EPO T 2145/11 -  link

1. Zulässigkeit der Beschwerde

1.1 Die Einsprechende bestritt unter Hinweis auf die Entscheidung T 0051/08 die Zulässigkeit der Beschwerde, mit der Begründung, dass über den Gegenstand des Patents durch die Entscheidung in dem Stammpatent bereits abschließend entschieden worden sei und die Kammer aufgrund der res judicata Wirkung hierüber nicht erneut entscheiden dürfte.

In der Entscheidung T 0051/08 hatte die Beschwerdekammer die Beschwerde gegen die Zurückweisung der Teilanmeldung als unzulässig angesehen, weil in der Stammanmeldung bereits über denselben Gegenstand entschieden worden war. In diesem Fall waren jedoch die Ansprüche identisch. Im vorliegenden Fall hingegen weisen die Ansprüche des Hauptantrags des Streitpatents mehrere Unterschiede gegenüber dem Gegenstand der Ansprüche auf, über die in T 1586/06 befunden worden war. So unterscheiden sie sich von Letzteren allein schon dadurch, dass sie einen Disclaimer enthalten und auf die Verwendung von staubförmigen Magnesiumstearat bei der Herstellung von einem Multidosis-Trockenpulverinhalator zur Verbesserung der Beständigkeit der Trockenpulver-Formulierung gegen Feuchtigkeit gerichtet sind. Des Weiteren darf die Menge an Magnesiumstearat gemäß den Ansprüchen des Hauptantrags ausschließlich 0,4 bis 1 Gewichtsprozent bezogen auf die Trockenpulver-Formulierung betragen.

1.2 Folglich liegt nach Überzeugung der Kammer im vorliegenden Fall keine res judicata vor. Da die Beschwerde den weiteren Zulässigkeitsvoraussetzungen genügt (Regel 101 EPÜ), ist die Beschwerde zulässig.

T 1914/12 - Late arguments to be admitted

Key points

• In this opposition appeal, an argument was made for the first time with a letter during the appeal procedure. The question is whether the argument is admissible. In the preliminary opinion, the Board had indicated that the argument would be not admitted under Article 13(1) RPBA.
• The Board's decision clearly makes a case, was given publication code [B] by the Board and goes against the presently predominant case law. Yet, the decision does not entirely convince me. The decision was also summarized on the DeltaPatents blog (here), at the Patent my French blog (here) and in French here.
• The Board notes that Art. 114(2) gives the power to disregards "fact or evidence" which are not submitted in due time, and further notes that Article 114(1) refers to "facts, evidence and arguments" in the English version (the German and French versions of Article 114 are silent about 'arguments'). 
• As indicated in T1621/09, point 22, it is established case law that new arguments can be submitted at any stage of the first instance proceedings, and can not be disregarded as late because Art. 114(2) gives no power to disregard arguments (see also point 33, first sentence; and e.g. recently  T 2238/15). The Board in T1621/09 then finds that late arguments can be disregarded under Art. 13(1) RPBA as amended in 2003 (point 34).
• The present Board recapitulates T 1069/08 and T1621/09, in which it was held that the phrase "Any amendment to a party's case after it has filed its grounds of appeal or reply" in Art. 13(1) RPBA includes new arguments because Article 12(2) prescribes that the Statement of grounds "shall contain a party's complete case" and should specify expressly "all the facts, arguments and evidence relied on". The present Board finds that these decisions do not comply with Article 114(2) EPC, in particular, because the interpretation in T1621/09 "ignores the fact that Article 114(2) EPC does not justify such discretion, as the previous case-law has repeatedly stated" (point 7.2.3).
• In T 1621/09, it was held that (now) Article 13 RPBA as introduced in 2003 gives the Boards the power hold inadmissible late arguments. Regarding the travaux of the provision (which I believe are not publicly available), the Board in T 1621/09 recalls that in the explanatory notes to the proposal as sent to the AC, reference was made to an amendment to a party's case "whether relating to facts, evidence or requests", whereas in the explanatory notes to the earlier proposal sent to the Presidium of the Boards, reference was made to amendments of a party's case as filed, "whether relating to facts, evidence, arguments or requests", i.e "arguments" was omitted from the explanatory notes for the AC. From T1621/09, par 33: "the change in the wording between the [explantory documents] indicates perhaps that new arguments alone were not considered to be the subject matter of amendment, although the extended wording ("whether relating to facts, evidence or requests") is in fact not limiting and was not repeated in the accompanying draft text and is not found in the present rule." 
• The present Board concludes that this change in the explantory document "seems to express the intent of the Presidium" (point 7.2.1). The Board also concludes that the RPBA also can not give powers to the Board that they do not have under the EPC.
• The Board concludes that it does not have the power to hold the argument inadmissible, such that the allegedly further distinguishing feature must be considered. The Board remits the case.
• In this opposition case, the opponent had bought the patent during the appeal stage, after the OD had revoked the patent (and registered itself as patentee) and had withdrawn the opposition; and only then as patentee had filed an extensive letter including the new argument at issue. I assume that there is therefore no one unhappy with the patent pending for some more years simply because the patentee came up with an argument about some further distinguishing feature (mention of the grant 20.05.2009; decision OD 09.07.2012). 
• The decision appears a bit problematic in that parties may often be able to come up with new arguments, forcing a remittal under this decision. Justice delayed is justice denied.
• In my view, Art. 177(1)  EPC forbids deriving too much from one language version of the EPC, because the three text are "equally authentic". From a brief study of the travaux of Art. 114, the terminology is already interesting in the Haertel draft of 1961, where the French precursor of Art. 114 does refer to arguments (IV/5569/61-F). A study in more detail goes beyond this blog post. For instance, why are the "requests" present in the French and German version of Art. 114(1) EPC but not in the English version? For how to deal with discrepancies in equally authentic language versions, it is useful to turn to EU case law: "the need for a uniform interpretation of  those versions requires, in the case of divergence between them, that the provision in question be interpreted by reference to the purpose and general scheme of the  rules of which it forms part" (ECLI:EU:C:1996:404, par. 28; see also this EU law handbook). Addendum 27.06.201: see also G4/19 referring to Art. 33 VLCT.
• I wonder if the cited preparatory documents are publicly available?

Addendum 05.04.2020:

T1621/09 r.37(b) stated that “To the extent that the decision of the Enlarged Board in G 4/92 deals with the general admissibility of new arguments, it must be taken to have been modified in accordance with (a) above by the Rules of Procedure of the Boards of Appeal introduced with effect from 1 May 2003.” Buhler in Singer/Stauder/Luginbuhl 8th ed. Art.114 fn.69 adds that because the explanation of the EPC by the EBA is on the same level as the EPC (Articles) in the hierarchy of norms, a different rule can only be achieved by an amendment of the EPC if (for the present issue of late-filed arguments) Article 114(2) provides an exhaustive rule. 

In G4/92, “The [Enlarged] Board referred to Articles 114(1) and (2) EPC and the possibility of the opposition division or Board of Appeal examining late-filed facts or evidence, but concluded that the other party must be given the opportunity to comment on such material, and a decision may therefore not be based on facts or evidence put forward for the first time during oral proceedings when the other party is absent. As to the admissibility of new arguments during oral proceedings at which the other party is not present, the Board said: "... the requirements of Article 113(1) EPC have been satisfied even if a party who has chosen not to appear consequently did not have the opportunity to comment on them during oral proceedings, insofar as such new arguments do not change the grounds on which the decision is based. In principle, new arguments do not constitute new grounds or evidence, but are reasons based on the facts and evidence which have already been put forward."” (quote from T1621/09 r.19)

Furthermore, Article 114(2) was interpreted in T122/84 r.11 (about the conflict between the examination of own motion, and the power to disregard late-filed facts and evidence): “However, a solution seen as not conflicting with the principle of examination by the Office of its own motion was that of leaving the department concerned to decide whether facts or evidence not submitted in due time should be examined instead of ruling out that possibility - an alternative also considered. In adopting this solution it was assumed that sparing use would be made of the option of disregarding facts or evidence, whose purpose was to prevent the parties from improperly dragging out opposition proceedings (see BR/12/69, loc. cit.).” (cited by Singer/Stauder/Luginbuhl 8th ed. Art.114 rdn.46.

Addendum 29.06.2020
" The RPBA can help in clarifying and interpreting the EPC but they cannot confer on the boards any powers that the EPC does not give them (T 1914/12, citing Art. 23 RPBA in this context)." (CLBA VII.1.4)

r.7.2.3: "Selon la présente chambre, le RPCR, s'il peut préciser et interpréter les dispositions de la CBE, ne saurait conférer aux chambres de recours des pouvoirs que la CBE ne leur donne pas."

EPO T 1914/12 -  link

EPO Headnote
The Boards of Appeal do not have a discretion as to the admissibility of late arguments based on facts already in the proceedings (decision departing from T 1621/09) (translation)

Les chambres de recours ne disposent pas d'un pouvoir d'appréciation quant à la recevabilité d'arguments tardifs qui se fondent sur des faits qui sont déjà dans la procédure (décision s'écartant de T 1621/09)

[Text in French of the decision can be found on the EPO website]

T 1627b/09 - After successful petition

Key points

• This is a second decision in this case, after the successful petition for Review R2/14 setting aside the first decision T 1627/09 of 10 October 2013 dismissing the patentee's appeal against the OD's decision revoking the patent (of 14.06.2009), mention of the grant of 14.02.2017.
• In R 2/14 (decision issued 29.06.2016), the Enlarged Board had held (after finding a violation of Art. 113(1) EPC), that  "No request for replacement of the members of the board under Rule 108(3), second sentence, EPC has been made by the petitioner, nor does the Enlarged Board see any reason to deviate from the general principle that the proceedings are re-opened before the board of appeal responsible under the business distribution scheme".
• The two Board members taking part in the decision of 10 October 2013 and still being in function, now gave a notice of self-recusation. "They held that, if they remained as members of the board, they would have to decide for a second time on the same issues. In order to avoid a potential perception of bias, they requested to step out of the board and to be replaced by their alternates." These notices are not part of the public file, but seem to be given in November 2017. 
• The Board, in alternate composition, accepts the notices of self-recusation and decides that the chair and legal member are replaced by their alternates.
• " For a notice of self-recusation under Article 24(2) EPC to be accepted, it is therefore not necessary - as is the case for objections raised under Article 24(3) EPC, first sentence - to establish an actual partiality. It is sufficient that an appearance of partiality is at least arguable in the circumstances of the case" 

T 1627b/09 - link

Reasons for the Decision

1. Members of a board of appeal may not take part in a case in which they have any personal interest, or if they have previously been involved as representatives of one of the parties, or if they participated in the decision under appeal (Article 24(1) EPC). If, for one of these reasons, or for any other reason, a member of a Board of Appeal considers that he/she should not take part in an appeal, he/she shall inform the Board accordingly (Article 24(2) EPC).

2. In view of the notices of self-recusation of the chair and the legal member who formed part of the board in decision T 1627/09 of 10 October 2013, the present board, in which the members concerned have been replaced by their alternates, has to decide on the action to be taken (Article 24(4) EPC).

T 1399/13 - Disclaimer that is broader but clear

Key points

• In this opposition-appeal, a disclaimer is added to claim 1 in order to make the claim novel over four examples that are given in D8 an Art. 54(3) document. 
• The Board first considers that " that disclaimer is not only concise, it is also specific, since it ultimately discloses polymerization processes performed at one temperature only (57°C), involving one monomer (VCM) and concerning specific organic peroxides." The opponent argues that the four examples in D8 include more features, such that the disclaimer excludes more than necessary.
• The Board finds the disclaimer to be acceptable: " there are situations in which, while fulfilment of the condition taken in a strictly literal way would not be possible, a definition of the disclaimed subject-matter which satisfies the requirements of Article 84 EPC and fulfils the purpose of the condition (i.e. to avoid an arbitrary reshaping of the claims) may be achievable. In other words, a disclaimer removing more than strictly necessary to restore novelty would not be in contradiction with the spirit of G 1/03, if it were required to satisfy Article 84 EPC and it did not lead to an arbitrary reshaping of the claims."

3. Disclaimer

3.1 Claim 1 of auxiliary request 1 is defined by a disclaimer referring to a step of radio frequency dielectric heating and a disclaimer meant to exclude four examples of D8. While the first disclaimer was present in claim 1 of the application as originally filed, the second disclaimer is intended to exclude the examples of D8, a document according to Article 54(3) EPC (see point 1. above).

3.2 The disclaimer made in view of the examples of D8 in claim 1 of auxiliary request 1 essentially defines the type of polymerization (suspension), its temperature (57°C), the presence of a specific protective colloid (1000 ppm of polyvinyl alcohol) and the metering of specific peroxides in the course of the polymerization process which contains two parts, a first part (i) intended to disclaim example 1 as well as its comparison example reported in Table 1 of D8 and a second part (ii) intended to disclaim example 2 and its comparison example as reported in Table 2 of the same document.

T 0182/14 - Postponement oral proceedings

Key points

• The Board had refused a request for postponement of the oral proceedings.
• According the Notice in OJ 2007 SE 3, p. 115, a request for postponement "should indicate why another representative cannot stand in for the one unable to attend". The patent attorney at issue had stated that the other attorneys in his firm were not mechanical engineers like he was. 
• The Board is not convinced. " Die Kammer merkt diesbezüglich an, dass in der Kanzlei, für die der verhinderte Vertreter tätig ist, laut Internetauftritt wenigstens sieben Patentanwälte der Fachrichtung Maschinenbau beschäftigt sind, zu deren Basiswissen Verbindungsarten gehören sollten." 
• I suppose this is an example of the Board examining facts of own motion under Article 114 EPC.

EPO T 0182/14 -  link

Entscheidungsgründe

1. Antrag auf Verlegung der mündlichen Verhandlung

1.1 Eine mündliche Verhandlung vor den Beschwerdekammern kann nach Artikel 15 (2) VOBK auf einen schriftlichen und begründeten Antrag hin nach dem Ermessen der Kammer ausnahmsweise verlegt werden, wobei der Antrag so früh wie möglich zu stellen ist.

Bei der Ausübung ihres Ermessens berücksichtigte die Kammer zudem die Mitteilung des Vizepräsidenten der Generaldirektion 3 des Europäischen Patentamts vom 16. Juli 2007 über mündliche Verhand­lungen vor den Beschwerdekammern des EPA (ABl. EPA 2007, Sonderausgabe Nr. 3, 115, nachstehend: "Mitteilung").

T 2321/15 - Problem invention accepted

Key points

• The Board accepts inventive step based on a problem invention.
•  "Consequently, the Board considers that the problem posed by the contested patent [the presence of air pockets in the freeze dried porous microspheres, and the resulting difficulties in rehydrating the particles] is an unrecognized problem in D4 [the closest prior art]."  
• " The discovery of a yet unrecognised problem may give rise to patentable subject-matter in spite of the fact that the claimed solution is retrospectively trivial and in itself obvious ("problem inventions"). The question regarding the inventive step, in relation to the modification of the process of D4, is not whether the skilled man could have added a sealing and storage step under vacuum, but whether he would have done so in expectation of some improvement or advantage. " 
• " Since the process disclosed in D4 appears to be satisfactory, the addition of a further process step would have appeared superfluous, wasteful and devoid of any technical effect. In view of the recognition that a sealing and storage step under vacuum has a substantial proven effect, the outcome was not predictable and the claimed modification involves an inventive step on this basis. "

EPO T 2321/15 - link

3. Main request - Article 56 EPC

3.1 The invention relates to methods for formulating easily rehydratable dried pharmaceutical compositions made from swelling particles, which are used as chemo-embolic compositions. One problem with freeze drying gels, such as porous microspheres is that air pockets develop within the microspheres as the water is removed during the drying process, which is problematic when the dry beads are rehydrated.

3.2 The closest prior art is D4, which discloses the preparation of PVA porous microspheres comprising an active agent for embolization, by a method involving a freeze-drying step (see pages 8-9 and examples 23-26). This document does not disclose a sealing step under vacuum, but mentions that "the vials can be sealed, in situ, under a protective atmosphere if required" (see page 10, lines 8-9). Examples 25 and 26 of D4 mentions the rehydration of microspheres.

T 1823/16 - (II) Cross check when docketing, and RE

Key points

• In this RE case, the time limits for filing the Notice of appeal and the Statements of grounds were both missed, because the due dates were not docketed by "the assistent" who worked in the large in house IP department of the applicant. This was an isolated mistake. The question is whether there was " normally satisfactory system" , in particular whether the required cross check was in place. In the case at hand, there was no cross check at the initial stage of docketing them, only for the correctness of docketed due dates.. 
• " In the Board's view, a cross-check to be effective has to be introduced at an earlier stage, i.e. at the data entry phase, because if a mistake happens at that point the case will not be flagged at all. "
•  " Clearly, the data entry at that stage is of utmost importance, because if not properly done, the case will completely disappear. Thus a cross-check at that stage is essential." 
• The appeal is rejected as inadmissible. The decision was taken on 28.06.2018, i.e. after the referral in G 1/18 (received on 07.06.2018), the Board however does not comment on that. The Board merely notes that " both the notice of appeal, as well as the statement setting out the grounds of appeal were not filed in due time, the appeal is inadmissible". However, G 1/18 uses and/or, i.e. also asks if the appeal is deemed not filed if both the Notice of appeal and the appeal fee are late. The late filing of the  Statement of grounds can not make the appeal "deemed filed" (but inadmissible) in my view. 
• This is the second post about  T 1823/16. 

EPO  T 1823/16 -  link

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division refusing European patent application No. 09779319.4 pursuant to Article 97(2) EPC. The decision was handed over to the postal service provider on 10 December 2015. Both the notice of appeal and the statement setting out the grounds of appeal were filed on 28 June 2016, together with a request for re-establishment of rights. The fee for re-establishment and the appeal fee were paid on the same day.

[...]

Reasons for the Decision

Thus the request for re-establishment of rights is admissible.

3. According to Article 122(1) EPC, an applicant shall have his rights re-established if he has sufficiently demonstrated that in spite of all due care required by the circumstances having been taken, he was unable to observe the time limit. When an applicant is represented by a professional representative, a request for re-establishment cannot be acceded to unless the representative himself can show that he has taken the due care required of an applicant (J 5/80, OJ EPO 1981, 343, Headnote 1). An isolated mistake by an assistant that happens in a normally satisfactory system is excusable. Where a large number of dates has to be monitored at any given time, it is normally expected that at least one effective cross-check is built into the system in order to be satisfactory. The cross-check must be independent of the person responsible for monitoring time limits. (cf. Case Law of the Boards of Appeal of the European Patent Office, 8th edition 2016, III.E.5.4 and 5.4.4).

T 1823/16 - (I) How many RE fees?

Key points

• The applicant failed to file both the Notice of appeal and the Statement of grounds in time and requested in RE for both. The isolated mistake was a failure to docket the refusal decision. One fee for RE was paid. Is that correct.
•  The Board decides that one fee as enough in this case.  
• " Only one re-establishment fee was paid, although the time limit for filing the notice and the time limit for filing the statement of grounds of appeal were missed. However, the non-observance of both time limits is intrinsically linked to the same hindrance. Both periods are triggered by the same event, i.e. the notification of the decision, and the hindrance to complying with them is based on one unitary factual basis i.e. that the time limits were not noted in the monitoring system." 

• I highlight this decision, because the GL E-VIII, 3.1.3. were changed in 2017 by adding: "In such cases, the number of unobserved time limits, each resulting in the application being deemed withdrawn and requiring a request for further processing, determines the number of requests for re-establishment and the corresponding number of fees for re-establishment." The GL were also amended by adding an example that if the time limit for entry into the European phase (Rule 159) with FP is missed, 5 FP fees are to be paid and 5 RE-fees (for filing the translation, paying the filing fee, the designation fee, the search fee, and the request for examination + the examination fee. I find that reasoning of the Guidelines not very convincing. This decision contradicts it, it in my view, at least for the case that the time limit(s) (of R159 with FP) are missed due to a single hindrance / due to  one unitary factual basis  (e.g. a single car accident). 

EPO T 1823/16 - link

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division refusing European patent application No. 09779319.4 pursuant to Article 97(2) EPC. The decision was handed over to the postal service provider on 10 December 2015. Both the notice of appeal and the statement setting out the grounds of appeal were filed on 28 June 2016, together with a request for re-establishment of rights. The fee for re-establishment and the appeal fee were paid on the same day.

[...]

Reasons for the Decision

1. According to Article 108 EPC, the notice of appeal shall be filed within two months, and the statement setting out the grounds of appeal shall be filed within four months of notification of the decision. These time limits expired on 22 February 2016 and 20 April 2016, respectively (Rules 126(2), 131(2) and (4), 134(1) EPC). Since, both the notice of appeal and the statement setting out the grounds of appeal were only received on 28 June 2016 and thus outside the relevant time limits, the appeal is inadmissible (Rule 101(1) EPC), unless the request for re-establishment of rights can be allowed.

2. According to Rule 136(1) EPC, a request for re-establishment of rights must be filed within two months of the removal of the cause of non-compliance. The cause of non-compliance was removed on 2 May 2016, when the appellant's representatives received a communication from the EPO regarding the refund of the 8th renewal fee. The request for re-establishment of rights was filed on 28 June 2016. The fee for re-establishment was was paid on the same day.

Only one re-establishment fee was paid, although the time limit for filing the notice and the time limit for filing the statement of grounds of appeal were missed. However, the non-observance of both time limits is intrinsically linked to the same hindrance. Both periods are triggered by the same event, i.e. the notification of the decision, and the hindrance to complying with them is based on one unitary factual basis i.e. that the time limits were not noted in the monitoring system. Re-establishment in respect of both periods has to be examined together and the result will inevitably be the same. In this situation, the Board considers one re-establishment fee to be sufficient (following the approach taken in T 832/99 of 17 September 2004 and J 17/16 of 28 June 2017). The omitted acts, i.e. filing the notice and the grounds of appeal and paying the appeal fee were completed at the same time.

Thus the request for re-establishment of rights is admissible.

T 0598/98 - Opposition and lapse

Key points

• In recent decision T 1403/16 the Board said that: " the decision on whether or not to continue the opposition proceedings under Rule 84(1) EPC lies within the opposition division's discretion" . 
• I was a bit surprised by this, because to me it seems weird that if the opponent requests continuation, the OD can decide at their discretion to terminate the proceedings.
• Both the Benkard book (2nd, art. 99, nr. 62) and the Singer/Stauder (5th ed. Art. 101 nr. 70) say that the decision is a discretionary one, Singer referring to T 598/98. Therefore, today's post is about that decision.
• The T 598/98 decision is in German, so I give the German text of Rule 84(1) first:  "ist das Patent in allen diesen Staaten erloschen, so kann das Einspruchsverfahren fortgesetzt werden, wenn der Einsprechende dies innerhalb von zwei Monaten ... beantragt". 
• The Board takes "kann"  is indicating that continuation is optional, not as indicating that the Opponent's request is a requirement for continuation (if it indicates a requirement, continuation can still be mandatory if the requirement is fulfilled).
• The Board "Die Entscheidung, das Verfahren entweder einzustellen oder fortzusetzen, liegt somit nach dem Wortlaut der Vorschrift auch dann im Ermessen der Einspruchsabteilung, wenn der Einsprechende die Fortsetzung des Verfahrens beantragt hat." 
• This result is still weird taking into account that under Article 99(3) EPC 1973, " an opposition may be filed even if the European patent has been surrendered or has lapsed for all the designated States." The EPC gives you a right to file opposition, but whether the OD actually considers the opposition in substance is at the OD's discretion under T 598/98.
• To cite the Travaux Préparatoires, Rule 60, M/PR/1, point 94, point 2284, the idea of Rule 60 is "to recognise an opponent's right to have opposition proceedings continued where a European patent had been surrendered or had lapsed while opposition proceedings were still in progress" (emphasis added). From the proposal (M/14, p. 102) leading to the text: "if any party interested is granted the right to institute proceedings against a European patent which has been surrendered or which has lapsed for all the designated States, it would logically be necessary to grant the opponent the right to have the opposition proceedings continued where the European patent is surrendered or lapses whilst the proceedings are taking place" (emphasis added; also referenced in T598/98).
• This understanding was confirmed in T740/15: the Board deduces "from the Travaux Préparatoires that in the presence of a valid request of the opponent to continue the opposition proceedings [], the scope of Rule 60(1) EPC (now Rule 84(1) EPC) was intended to limit the discretion of the opposition division to the continuation of the opposition proceedings. The opposition division had therefore in the circumstances of the present case no other discretion than to continue the opposition proceedings." For some reason, T 598/98 is still in CLBA IV.C.4.1.2.a whereas T 740/15 is in CLBA IV.C.4.1.2. 
• Perhaps it is no coincidence that T 598/98 is in German. From T 598/98: "Im deutschen Patentrecht wird die Auffassung vertreten, daß das Erlöschen des Patents zur Erledigung des Einspruchsverfahrens [i.e. for the DPMA] in der Hauptsache führt. Das Einspruchsverfahren wird nur fortgeführt, wenn der Einsprechende ein schutzwürdiges Interesse an dem rückwirkenden Widerruf des ex nunc erloschenen Patent dartun kann" (See also Benkar, loc. cit.)
• The Board decides in T 598/98 that it must take into account "procedural economy" in view of the duration and number of other appeal cases pending before it. In my view, where the legislator so clearly wishes to give the opponent a right (even if the wording of the provision is not unambiguous), work load of the Board can not be a factor.
• Finally, the Patentee can terminate the substantive opposition proceedings at any time by disapproving the text / requesting revocation. The fact that the Patentee does not do so, indicates that there is commercial value in the patent, confirming that the opposition is not meaningless.
• The Guidelines state in GL D-VII 5.1 that " the opposition proceedings must be continued at the request of the opponent filed within two months after the date on which the opposition division informed the opponent of the surrender or lapse" (emphasis added). The Guidelines also state that " If, in the case of a request for continuation of the proceedings, the patent proprietor has renounced before the competent authorities in the designated states all rights conferred by the patent with ab initio and universal effect, or if no request for continuation has been received within the time limit, the opposition proceedings will be closed. The decision to close the proceedings will be communicated to the parties." This of course is contradictory: what if the Patentee alleges that he has renounced ab initio and with universal effect, but the opponent requests continuation? In that case it would be convenient if the Patentee would disapprove the text in opposition, leading to revocation of the patent by the OD, which should not change anything for Patentee if the patent was indeed renounced entirely, ab initio, and with universal effect.

EPO T 598/98 -  link

EPO Headnote

1. Das Bestehen eines Rechtsschutzinteresses der Einsprechenden an einem rückwirkenden Widerruf des Patents ist eines der Elemente, die für die Entscheidung der Kammer über Einstellung oder Fortsetzung des Einspruchsbeschwerdeverfahrens gemäß Regel 60 (1) EPÜ eine Rolle spielen können.

2. Das allgemeine Interesse an einer zentralen Feststellung über die Patentwürdigkeit einer in einem Patent beanspruchten Erfindung rechtfertigt es jedenfalls dann, ein Verfahren nach Erlöschen des Patents gemäß Regel 60 (1) EPÜ noch bis zum Erlaß einer Endentscheidung fortzusetzen, wenn die Sache im Zeitpunkt des Erlöschens im wesentlichen entscheidungsreif ist, und es auch im Hinblick auf den Bestand des Patents einen Unterschied im Ergebnis ausmacht, ob eine Sachentscheidung getroffen oder das Verfahren bloß eingestellt wird (hier: Widerruf des Patents durch die Kammer nach Zurückweisung des Einspruchs durch die Einspruchsabteilung).

Entscheidungsgründe

1. Fortsetzung des Verfahrens (Regel 60 (1) EPÜ)

T 1403/16 - Termination of opposition

Key points

• In this opposition case, the EPO had sent a Communication under Rule 84(1) EPC to the opponent, informing him that the patent had lapsed (or was surrendered) in all designated States and setting a period of 2 months for requesting continuation of the opposition. The Opponent had requested continuation, but only after expiry of the period. The opponent had filed the request with a request for re-establishment of rights. The OD decides that the RE request is inadmissible, and that the opposition proceedings are discontinued.
• The Board considers that in this case, RE is not available, because the condition of Article 122 EPC, that  "the non-observance of this time limit has the direct consequence of causing [...] the loss of any other right..." is not met. 
• The Board (1) "In opposition proceedings, in the event of a failure to reply in due time to a communication from the opposition division, there is no loss of rights which occurs automatically by operation of law. The board observes that the legal situation is different in the proceedings up to grant, where failing to reply to a communication in due time leads to a loss of rights by operation of law (application deemed withdrawn; see for example Article 94(3) and (4) EPC)." 
• The Board (2) then considers that a failure to reply to a Communication of the OD under Article 101(1) EPC "does not have any direct legal effect within the meaning of Article 122(1) EPC". The  Board then reasons that "This conclusion equally applies to the time limit under Rule 84(1) EPC." The Board further adds that "A discontinuation of the opposition proceedings under Rule 84(1) EPC generally requires an appealable decision by the opposition division. Hence, non-compliance with the two-month time limit under Rule 84(1) EPC does not directly cause a loss of rights."
• The Board then explains that (3) "If an opponent requests that the opposition proceedings be continued, but does so only after expiry of the two-month time limit under Rule 84(1) EPC, it is up to the opposition division to consider that request - by application of Article 114 EPC - and to decide on whether or not to continue them. If, where appropriate, the opposition division takes a decision to discontinue the proceedings, this decision is open to appeal."
• The Board then (4) states that: "In the light of the above, the decision under appeal is based on an inaccurate assessment of the legal situation underlying the case in hand. In consequence, the board judges that the opposition division's decision has to be set aside and the case remitted in order for the opposition division to decide on whether or not to continue the opposition proceedings under Rule 84(1) EPC, provided that the appellant confirms that it wants them to be continued."
• As a comment to point (1), for the formalities examination during grant (Rule 58), the consequence is generally a refusal under Article 90(5) EPC. 
• As a comment to point (2), issuing an (appealable) decision to discontinue the appeal under Rule 84 EPC is established practice at the EPO (see e.g. T 740/15, r. 3) and was in fact issued in this case on 06.04.2016. Under point V(iii), the Board notes that such decision was indeed taken by the OD in this case; simultaneously with the decision rejecting the RE request as inadmissible.
• As a comment to point (3),  the decision is not very clear at this point ("if the OD takes a decision") about whether the Board takes into account that the OD had actually already issued such appealable decision. Possibly, the Board implicitly assumes here that the OD has not already taken the decision to discontinue the proceedings (which is normally done shortly after expiration of the 2 months  time limit, but with some delay for the possibility of requests filed by paper mail under Rule 133(1) EPC). If such decision to discontinue has already been taken, in my view filing the request later does not help (appeal is possible, and may reopen the possibility to file the request by analogy to J18/08).
• As a comment to point 4, possibly the Board expresses here that the OD's decision to discontinue fails to give reasons on whether to admit the request under Article 114 (lack of reasoning would be a substantial procedural violation, but the Board is silent about that). Also possible is that the Board here only thinks of the decision on the RE request as the "decision under appeal'. 
• The Board's decision furthermore includes the remark that: "Rather, the decision on whether or not to continue the opposition proceedings under Rule 84(1) EPC lies within the opposition division's discretion."
• As a comment, This suggest that the OD may decide to discontinue at its discretion even if the opponent requests continuation. That, surprisingly for me, is indeed what old case law suggests  (T598/98)  but seems a rather weird result. The easy case, of  no request, leaves no discretion to continue (T 329/88). 
• The Board's decision makes sense at least for the following point: if the sanction on not replying in time is a decision, the decision is taken ex nunc, i.e. based on an examination of the file as it stands on the date of taking the decision, and the decision must take into account a late response at least consider whether to admit the late filed response under Article 114 EPC.

EPO T 1403/16 -  link

Rule 84(1) 

If the European patent has been surrendered in all the designated Contracting States or has lapsed in all those States, the opposition proceedings may be continued at the request of the opponent filed within two months of a communication from the European Patent Office informing him of the surrender or lapse.

Summary of Facts and Submissions

I. The present appeal lies against the decision of the opposition division of 6 April 2016 concerning the discontinuation of the opposition proceedings under Rule 84(1) EPC.

J 0001/18 - Remedying deficiency in appeal

Key points

• If a formal deficiency is not corrected after a Rule 58 invitation, the application is refused under Article 90(5) EPC. J18/08 indicates that the remedy can still be corrected in appeal (e.g. by appointing a professional representative where obligatory); see CLB IV.A.6. 
• In this case, formal drawings were not filed in time after the Rule 58 invitation. Interlocutory revision was granted by the Receiving Section, but the request for reimbursement of the appeal fee was not allowed. The Legal Board therefore needs to decide on the reimbursement.
• The applicant had requested the reimbursement, because the correct drawings had been submitted  six weeks before the Receiving Section had issued the refusal decision (but after expiration of the Rule 58 time limit). 
• The Legal Board holds that because the drawings were not filed in the Rule 58 time limit, the Receiving Section "was entitled to refuse the application". According to the Board, "the Receiving Section was not obliged to refrain from a refusal decision only because, after the deadline, the defect had been remedied by the submission of new drawings."  (in machine translation).
• In contradistinction, J 18/08 held that "if the application is refused under Art. 90(5) EPC the deficiency on which the decision is based can be corrected at the appeal stage"  and that such Art. 90(5) refusal is different "from the situation where the non-observance of a time limit automatically leads to the application being deemed to be withdrawn. In such a case the legal consequence automatically ensues when an act required within a specific time limit is not performed, without any decision to be taken concerning the refusal of the application" 
• A possible way to try to reconcile J1/18 with J18/08 is to take into account T1403/16 . In that decision, the Board held that a response under Rule 84 (1) EPC filed after expiry of the time limit, but before the decision to discontinue the opposition proceedings is taken, must at least be considered for admissibility under Article 114(2) EPC in the decision to discontinue (or not) the opposition. Perhaps the Legal Board in J1/18 tries to say that the Receiving Section could disregard the filed drawings under Article 114 EPC because they were filed late (they could also consider the drawings). Of course, this decision under Article 114 whether or not to consider the late filed drawings must be reasoned under Rule 111(2). 

EPO J 0001/18 - link

Entscheidungsgründe

1. Die Beschwerde ist zulässig.

2. Der Beschwerde wurde abgeholfen, aber dem Antrag auf Rückzahlung der Beschwerdegebühr wurde nicht stattgegeben, sondern die Angelegenheit wurde der Beschwerdekammer gemäß Regel 103 Absatz 3 Satz 2 EPÜ vorgelegt. Die vorliegende Entscheidung betrifft daher allein die Rückzahlung der Beschwerdegebühr.

T 2248/16 - Correction B1 publication

Key points

• In this appeal, the applicant appeals against the grant because of errors in the B1 publication of the patent specification.
• The appeal is inadmissible. The Boar explains that the legally relevant text of the decision to grant is that of the "Druckexemplar" , which was correct. Therefore the applicant is not adversely affected (Art. 107 EPC).
• The Board also explains that according to established practice of the EPO, a corrected republication of the patent can be requested from the formalities officer of the examining division (GL C-V, 10; also H-VI, 4._) 
• The patent attorney doing the appeal works at a reputable German firm, so probably more goes on here. The mention of the grant was originally published in the EP Bulletin on 13.04.2016; but was canceled (Bulletin 2016/27, page 1529). A divisional application was filed, according to the "Event history" most likely on 24.06 but was not published. The appeal against the grant of course allows to delay the filing of any translations with the national patent offices after grant, and also allows to benefit from the EPO renewal fees for longer.

EPO  T 2248/16 - link

Sachverhalt und Anträge

I. Nach Prüfung der europäischen Patentanmeldung Nr. 11007225.3 (im Folgenden: "Anmeldung") hat die Prüfungsabteilung entschieden, ein Patent mit den Unterlagen zu erteilen, die in der gemäß Regel 71 (3) EPÜ ergangenen Mitteilung vom 26. Oktober 2015 aufgeführt sind.

II. Der Hinweis auf die Erteilung wurde im Europäischen Patentblatt Nr. 2016/15 vom 13. April 2016 bekanntgemacht; gleichzeitig erfolgte die Veröffentlichung der Patentschrift (EP 2 426 423 B1) in elektronischer Form auf dem Publikationsserver des EPA.

III. Gegen die Entscheidung der Prüfungsabteilung über die Erteilung des Patents wendet sich die Patentinhaberin (im Folgenden: Beschwerdeführerin) mit ihrer Beschwerde.

Entscheidungsgründe

1. Die Beschwerdeführerin hat ihr Beschwerdebegehren damit begründet, dass die veröffentlichte Patentschrift nicht mit der erteilten, von ihr genehmigten Fassung des Patents übereinstimme. Dies betreffe die in der folgenden Tabelle aufgezeigten Textstellen in Patentanspruch 1 und in der Beschreibung. Die Beschwerdeführerin macht insbesondere unter Berufung auf die Entscheidung der Großen Beschwerdekammer G 1/10 vom 23. Juli 2012 (ABl. 2013, 194) geltend, sie sei durch die aufgezeigten Abweichungen der Patentschrift von der erteilten Fassung beschwert und die Beschwerde sei der einzige gangbare Weg und die einzige Möglichkeit, diese Abweichungen zu berichtigen.

2. Die Kammer kann sich dem Vorbringen der Beschwerdeführerin nicht anschließen:

2.1 Nach Artikel 107 EPÜ sind alle Verfahrensbeteiligten berechtigt, Beschwerde zu erheben, die durch eine Entscheidung beschwert sind. Eine Beschwer im Sinne des Artikel 107 EPÜ liegt vor, wenn die Entscheidung hinter dem Begehren des Verfahrensbeteiligten zum Zeitpunkt der Entscheidungsfindung zurückbleibt.

EPO Guidelines 2018 Changes

See also my detailed overview of the changes in the EPO Guidelines (with more comments).
(via Google Drive, you can print it, download it and edit it e.g. in MS Word).

EPO plain overview of all changes: https://www.epo.org/law-practice/legal-texts/html/guidelines2018/e/m.htm

Substantive new changes (according to EPO)

GL part with link	EPO Summary	Key sentence (added by this blogger)
F‑IV, 4.13	Clarifications regarding interpretation of claims comprising expressions like "Apparatus for ...", "Method for ...	in the case of a "method of manufacture", i.e. a claim directed to a method for manufacturing a product, the fact that the method results in the product is to be treated as an integral method step (this was unclear in the GL2017).
F‑IV, 4.14 F‑IV, 4.14.1 F‑IV, 4.14.2	New section clarifying interpretation of claims defined by reference to (use with) another entity	For a claim for "a cylinder head for an engine”: the cylinder head must be suitable to be mounted in the engine described in the claim, but the features of the engine do not limit the subject-matter of the claim per se
F‑IV, 4.21	Clarified how the terms “comprising”, “consisting of” and “consisting essentially of” are construed in a claim	Regarding Art. 123(2), "comprising" does not provide per se an implicit basis for either "consisting of" or "consisting essentially of"
F‑IV, 4.4	Clarified practice regarding the use of general statements, "spirit of invention”, claim-like clauses	claim-like clauses appended at the end of the description must also be deleted prior to grant
F‑IV, 4.6.1 F‑IV, 4.6.2	New sections explaining how relative terms need to be construed and when an objection of clarity may be raised	if a relative term (such as “ thin”) is used by the applicant as the only feature to distinguish the subject-matter of a claim from the prior art, the use of this term is objected to under Art. 84 unless the term has a well-recognised meaning in the particular art, e.g. "high-frequency" in relation to an amplifier. in most cases, a relative term is simply not limiting the extension of the subject-matter of a claim.
F‑IV, 4.7.1 F‑IV, 4.7.2	New sections explaining how the term “about” and similar terms need to be construed and when an objection of clarity may be raised	If no error margins are specified in the application, the expression "about 200 °C" is interpreted as having the same round-off as "200 °C". When terms such as "substantially" or "approximately" are applied to a structural unit of an apparatus (e.g. "a tray plate with a substantially circular circumference"), the expression containing the term "substantially" or "approximately" will be interpreted as a technical feature being produced within the technical tolerance of the method used to manufacture it
F‑IV, 4.9	Reorganized section so to indicate how optional features need to be construed and when an objection of clarity may be raised	Optional features, i.e. features preceded by expressions such as "preferably", "for example", "such as" or "more particularly" are allowed if they do not introduce ambiguity. the wording "the solution is heated up to between 65 and 85 °C, particularly to 90 °C" does not fulfil the requirements of Art. 84 because the temperature after the term "particularly" contradicts the range before it.
F‑IV, 4.12 G‑II, 5.2 G‑II, 5.3	Clarified practice that if a technical feature of a claimed plant or animal might be the result of either a technical intervention or of an essentially biological process, a disclaimer is necessary to delimit the claimed subject matter to the technically produced product	If a technical feature of a claimed plant or animal, e.g. a single nucleotide exchange in the genome, might be the result of either a technical intervention (e.g. directed mutagenesis) or an essentially biological process (a natural allele), a disclaimer is necessary
H‑V, 3.1	Clarified practice regarding replacement or removal of features from a claim (“essentiality test”)	The three-step test is maintained, but the GL add that: even if the above criteria are met, the division must still ensure that the amendment by replacing or removing a feature from a claim satisfies the requirements of Art. 123(2) as they also have been set out in G 3/89 and G 11/91, referred to in G 2/10 as "the gold standard"
H‑V, 4.1	Amended in view of G 1/16	The undisclosed disclaimer (which inevitably quantitatively reduces the original technical teaching) may not qualitatively change the original technical teaching in the sense that the applicant's or patent proprietor's position with regard to other requirements for patentability is improved.

Further changes (minor according to EPO, important in my view)