T 2282/17 - Form refusal, 10 procedural violations

Key points

• Yet another refusal with Form 2061, yet another substantial procedural violation. The Board identifies 10 procedural violations (no reasoned decision, and not replying to the applicant's arguments on various matters).
• The form refers to 3 earlier Communications, but not all objections were clearly pursued by the ED up to the last Communication.  "It is therefore left to the appellant and to the Board to speculate whether any of the objections above, not pursued up to the third and last communication, are considered by the examining division to be reasons prejudicial to the granting of the patent." This is the 1st procedural violation.
• The second procedural violation concerns the argument of the application that D7 was a US design patent, and hence is not the first application in the sense of the Paris Convention (design patents are not industrial property rights under the Paris Convention) as held in  J15/80, such that the claimed priority was valid. 
• "The examining division did not comment on the arguments presented by the appellant in its first reply, in either its second or third communication. In particular, there is on file no counter-argument of the examining division with regard to the relevance of decision J 15/80 to the present case or to the appellant's argument that some features of claim 1 cannot be derived from D7. The absence of any indication that the arguments put forward by the appellant have been considered constitutes a violation of Article 113(1) EPC."
• The third procedural violation is that the ED did not reply to the applicant's arguments that D2 was not novelty destroying for claim 1. This a violation of the right to be heard, because the objection is effectively maintained in the refusal with Form 2061. 
• The fourth procedural violation is that the ED did not reply to the applicant's arguments that D2 was not novelty destroying for claim 7. This a violation of the right to be heard.
• The fifth procedural violation is that the ED did not reply to the applicant's arguments that claim 5 was clear. This a violation of the right to be heard.
• The sixth procedural violation is that the ED "failed to indicate in the communication wherein D1 or D3 these features could be found" for the inventive step rejection. This is a violation of Rule 111(2) EPC.
• The Board identifies a further seventh procedural deficiency. The ED did not give reasons " why the absence in claim 1 of such features causes the subject-matter of the claim to extend beyond the content of the application as filed" thereby violation Rule 11(2) EPC.
• " Moreover, by not providing detailed counter-arguments with respect to the appellant's argument that claim 1 represents an allowable limitation of originally filed claim 24"  the ED violated the right to be heard. This is the 8th procedural violation.
• The ninth procedural violation concerns the dependent claims. " As for independent claim 1, in its reasoning the examining division fails to specifically indicate the features which are actually disclosed in combination with the features of dependent claims 2 to 4 and whose absence from the dependent claims gives rise to an unallowable intermediate generalisation, and to give reasons why this should be the case." 
• The 10th procedural violation is that "Furthermore, the examining division does not provide detailed counter-arguments to the appellant's argument that because claims 2, 3 and 4 were formulated with features taken from the example [they ad basis in the application as filed]". This violates the right to be heard.

X. The examining division issued the impugned decision in a standard form. The decision refers to the first, second and third communications. The full text of the grounds of the decision reads as follow:

"In the communication(s) dated 09.09.2016, 22.03.2016, 09.07.2015 the applicant was informed that the application does not meet the requirements of the European Patent Convention. The applicant was also informed of the reasons therein.
The applicant filed no comments or amendments in reply to the latest communication but requested a decision according to the state of the file by a letter received in due time on 08.03.2017.
The application must therefore be refused."

Reasons for the Decision

2. The appellant submits that a standard decision form for issuing a decision on the state of the file which refers to several communications and leaves it up to the Board to construct the applicable reasons by "mosaicing" various arguments from the file, or which leaves it in doubt which argument applies to which claim version, does not meet the "reasoned" requirement of Rule 111(2) EPC.

Visser's Annotated EPC 2018 edition

Yesterday the new Visser was delivered, with my name on the cover as well. I've contributed to the chapters on opposition, appeals, RFees and PCT. As you can see below, I am quite proud of it.

For the readers of this weblog, I would like to emphasize that writing for the Visser book involves much more thorough editing and a significantly higher level of proofreading and double checking. I estimate that each sentence/paragraph in the book takes me about as much time as writing a week's worth of blog posts. (In addition, I've only recently added a decent spell checker to my web browser so hopefully, things will improve for this weblog).

Visser's Annotated Patent Convention (2018 edition) is published by Kluwer and can be ordered here and here. 

T 0658/12 - Diverging requests before the Examining Division

Key points

• In this examination appeal for a software invention, the Board judges that the ED had applied the Comvik approach to easily. The ED had put some features in the business specification which were in fact technical according to the Board.  The features at issue concern the authentication and identification of computers. 
• However, this is not a substantial procedural violation. "The COMVIK-approach may have been incorrectly applied, but this is a substantive issue, only involving judgement. Thus, the decision is reasoned in the sense of Rule 111(2) EPC." 
• The applicant had also argued that the ED's decision to not admit the 2nd AR into the procedure was a substantial procedural violation. The Board does not agree.
• " The examining division exercised its discretion under Rule 137(3) EPC by using the following criteria: the timing of the request (one week before the oral proceedings), the divergence of the request and the prima facie unallowability of the request for lack of inventive step." 
• " Contrary to the appellant's arguments, the Board takes the view that divergence of a request is a factor which may be taken into account in the exercise of discretion under Rule 137(3) EPC. Amendments which do not increasingly limit the subject-matter of the independent claims of a main request in the same direction of a single inventive idea may be contrary to the EPO's interest to bring the proceedings to a close." 

EPO T 0658/12 -  link

Main request

2. Interpretation of independent claim 1

The Board agrees with the appellant's argument that the subject-matter of claim 1 involves at least some technical features which are not regarded as notorious knowledge of the skilled person.

2.1 Apart from business related aspects of order processing the claimed subject-matter also involves aspects concerning authentication and identification of users at different entities of the claimed system. The Board considers the latter to contribute to the technical character of claim 1 so that they cannot be regarded as being part of the non-technical requirement merely to be implemented by the technical skilled person.

T 0674/17 - Switching of invention

Key points

• In this examination appeal, the amendment of claim 1 overcomes the Art. 123(2) objections, but " it nevertheless amounts to the presentation of a fresh case." 
• The EPO as ISA had identified two inventions, one with 'porous starch'  the other with 'pre-gelatinized starch' .
• " Upon entry into the European phase, [] the appellant/applicant maintained a set of claims wherein the subject-matter of the sole independent claim 1 was limited to pregelatinized starch as a mandatory feature. The set of claims no longer referred to porous starch, let alone agglomerated porous starch. All sets of claims filed in the subsequent examination proceedings, including those filed with the statement setting out the grounds of appeal, were limited to pregelatinized starch as the mandatory, essential ingredient. It was not until the new main request was filed that (agglomerated) porous starch was introduced into claim 1 as a mandatory feature." 
• " Thus, the appellant's new main request effectively aims at starting second examination proceedings on an invention that it had not pursued before." 
• " In summary, the new main request []  introduces into the proceedings considerably different subject-matter which in fact amounts to the presentation of a fresh case. By virtue of its powers under Article 111(1), second sentence, EPC the board exercises its discretion not to admit the new main request into the proceedings, in accordance with Rules 137(3) and 100(1) EPC."
• As a comment, both inventions were searched by the EPO as ISA. Furthermore, the decision seems in line with T 0736/14 (hn and para. 3.2.1) but makes it a bit more clear that Rule 137(3) is the appropriate legal basis (if the amendment is made after the time limit of that rule). 

EPO T 0674/17 - link

2.3 Although the amendment in claim 1 might overcome the board's objections under Article 123(2) EPC as regards previous requests, it nevertheless amounts to the presentation of a fresh case. If the new main request were to be admitted into the proceedings, the examination carried out so far on the basis of documents D1 and D2 would become pointless. Moreover, the focus of the proceedings would shift to clarity and to interpretation of the feature "agglomerated porous starch" and, more importantly, examination would have to concentrate on a different set of prior-art documents. In short, admitting this request at this stage of the proceedings would go against the EPO's and the boards' interest in bringing the examination and appeal procedure efficiently to a close.

2.4 The fact that the new main request concerns fresh subject-matter is additionally highlighted by the following:

T 1119/17 - Search after appeal

Key points

• In this examination appeal, the application was refused for Art. 123(2) and because the expression "dental surface adhesion enhancing agent" contravened the requirements of Articles 83 and 84 EPC.
• "The examining division took the view that the expression "dental surface adhesion enhancing agent" was unclear, since it had no generally accepted meaning. The Board shares this opinion and is not aware of any commonly accepted definition for the expression "dental surface adhesion enhancing agent". 
• " However, as a result of the amendment of the expression "comprises" into "consists of", the "dental surface adhesion enhancing agent" is now fully defined as consisting of uncomplexed cPVP. " 
• Therefore, Art. 83 and 84 are met. However, the EPO as ISA had issued a declaration of non-search under Article 17(2)(a) PCT because of excessive non-compliance with the substantive provisions. 
• The Board remits the case with the instruction that the ED must perform a search.
• This case illustrates that in case of refusal to search, the claims can be amended to address the issues, even in appeal, and that a search is to be performed once the formal requirements (clarity in particular) are met. 

EPO T 1119/17 - link

Remittal to the department of first instance

4. For the present application, filed under the PCT, the EPO, acting as International Search Authority, issued a declaration of non-establishment of International Search report under Article 17(2)(a) PCT because of excessive non-compliance with the substantive provisions. The declaration indicated that a search may be carried out during examination before the EPO should the problems which led thereto be overcome.

The appellant requests that the decision under appeal be set aside and that the case be remitted to the examining division to perform an additional search on the basis of said main request.

Remittal is taken into consideration by the boards in cases where a first instance department issues a decision solely upon one particular issue which is decisive for the case against one party and leaves other essential issues outstanding. If, following appeal proceedings, this party's appeal on the particular issue is allowed, the case is normally remitted to the first instance department for consideration of the undecided issues.

In the present case, the Board allows the appellant's appeal based on the amended main request, since this request overcomes the objections under Articles 123(2), 83 and 84 EPC laid out in the decision under appeal. Accordingly the case should be remitted for further examination. This should include that the examining division perform a search, as announced in the declaration under Article 17(2)(a) PCT.

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.

T 2004/14 - Absorbent article with parameter

Key points

• This opposition appeal concerns an invention for an absorbent article (hygiene product). Claim 1 of the main request defines that "the liquid storage area (106) accounts for at least 75% of the total absorption capacity of the product".
• The Board finds this parameter to cause a problem under Article 83 (not merely clarity), which is unsurprising in this field of technology (see e.g. T 0626/14).
• " The parameter "absorption capacity" does not have a standard meaning within the technical field of absorbent products. It was not disputed that there is no indication in the disclosure of the patent as a whole regarding how this absorption capacity is defined and how it should be measured." 
• " In the absence of any indication in the patent in regard to the method (and the test conditions) of determining the absorption capacity the skilled person is not able to reliably and repeatably determine the crucial condition set out in claim 1. The patent therefore does not disclose the invention defined in claim 1 in a manner sufficiently clear and complete for it to be carried out by a skilled person."

EPO T 2004/14 -  link

Reasons for the Decision

1. Main request - sufficiency of disclosure

1.1 Claim 1 of the main request defines that "the liquid storage area (106) accounts for at least 75% of the total absorption capacity of the product".

1.2 When wishing to determine if the liquid storage area accounts for at least 75% of the total absorption capacity of the claimed product, the skilled person must be able, on the basis of the disclosure as a whole and using its common general knowledge, to reliably determine the absorption capacity of the liquid storage area and the total absorption capacity of the entire product.

1.3 The parameter "absorption capacity" does not have a standard meaning within the technical field of absorbent products.

T 0733/14 - Cancelling claims, remittal

Key points

• In this opposition appeal, the patentee gives up the product claims and files an AR with only the independent claim for the process. The request is admitted and the case is remitted.
• " The opposition division has not yet ruled on the process claims, since the discussion during the oral proceedings before the opposition division focused only on the product claims. It is not the duty of the Boards of Appeal to consider and decide upon questions raised for the first time during the appeal proceedings. "
• The notice of opposition was filed in 2012, the patent in 2002. 

EPO T 0733/14 - link

Reasons for the Decision

1. Auxiliary request 4 - Admission into the proceedings

This request corresponds to auxiliary request 5 filed with letter dated 14 December 2017, which has been objected by respondent 02 under Article 13(3) RPBA. Present auxiliary request is objected under the same Article 13(3) RPBA.

Claim 1 of auxiliary request 4 is identical to independent claim 23 of the main request filed with the statement of grounds of appeal, and corresponds thus to an independent claim present in a request filed at the earliest stage of the appeal proceedings. It therefore cannot be considered as late-filed, as argued by respondent 02. Moreover, its subject-matter cannot constitute a surprise, since it is based on independent claim 25 as granted with the subject-matter of its dependent claim 31 as granted incorporated therein.

Hence, the Board does not see any reason not to accept this request into the proceedings under Article 13(3) RPBA.

2. Auxiliary request 4 - Remittal to the opposition division

The opposition division has not yet ruled on the process claims, since the discussion during the oral proceedings before the opposition division focused only on the product claims. It is not the duty of the Boards of Appeal to consider and decide upon questions raised for the first time during the appeal proceedings. Instead, the main purpose of appeal proceedings is to give the losing party the opportunity to challenge the decision of the opposition division (cf. G 9/91, loc. cit., point 18 of the Reasons). Taking into account that the the decision of the opposition division does not deal with the process claims, the Board considers it appropriate to exercise its power conferred on it by Article 111(1) EPC to remit the case to the opposition division for further prosecution on the basis of the claims according to the auxiliary request 4. This remittal has not been objected by any party to the appeal proceedings.

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.

T 0068/16 - Assumed technical effect

Key points

• In this opposition appeal, the Board finds that the OD had committed a substantial procedural violation.
• In the impugned decision, the OD had stated: "However it is assumed that the presence of thermoset has an effect on the flowability of the coating and the opposition division follows the argumentation of [patentee]  and considers that the skilled person would have no incentive to add thermoset to the coating disclosed in D16. Thus claim 1 is inventive (art. 56 EPC) in view of D16."
• The Board: " By reasoning in this way, the opposition division appears not to have taken account of the assertion of the appellant that the "assumed" technical effect was not obtained over the whole claimed range and in particular at low amounts of thermoset, although the technical effect of the distinguishing features clearly is of crucial importance when inventive step is to be assessed. Incidentally, the board wishes to point out that a finding of inventive step (or lack thereof) cannot be based on a mere assumption."
• The failure to consider the argument that no technical effect is achieved is a substantial procedural violation.
• The fact that the OD has not followed the problem-and-solution approach, is not a substantial procedural violation because the PSA is not mandatory. 
• The OD had also failed to engage with a second inventive step attack with a second document as CPA. "Once the opposition division had found the subject-matter of claim 1 to be inventive with respect to the teaching of document D16, it should have discussed inventiveness in respect of document D17. This discussion appears not to have taken place. According to the established jurisprudence of the boards of appeal, the mere presence of information somewhere in the file does not relieve a party of its duty to draw attention to it when necessary or to present arguments relying on such information at the appropriate time". The Board infers from the minutes that the opponent had the opportunity to comment and to draw the OD's attention to D17. Therefore, this is not a substantial procedural violation.

EPO T 0068/16 -  link

Reasons for the Decision

1. Violation of the appellant's right to be heard

The appellant argued that the opposition division had violated its right to be heard on three counts:

1.1 Document D17 not taken into account

Having received the summons to the oral proceedings before the opposition division, the opponent filed written submissions comprising two new documents, D16 and D17. It argued that the subject-matter of claim 1 was not inventive over document D16 and "not inventive over D17, but at least not inventive over a combination of documents D17 and D16 or D17 and D1" (see page 15 of the submissions of 7 October 2015).

T 1242/14 - Discussing vs relying on document

Key points

• In this opposition appeal, D9 was filed with the Statement of grounds. Yet it is not admitted under Art.12(4) RPBA, because in the Statement the content of D9 is merely discussed without connecting it to the impugned decision. 
• "the appellant did not seem to rely on D9 in its complete case to reason why it is requested that the decision under appeal should be reversed. [...] On page 11 of its statement of grounds and contrary to the appellant's own declared intention, the appellant simply discusses the general disclosure of D9, without submitting any reason as to why the opposition division should have admitted D9 or even why, taking into consideration D9, the subject-matter of claim 1 does not involve an inventive step. D9 is thus not admitted into the proceedings (Article 12(4) RPBA)."
• In this case, the publication keyword seems illustrative though it is not part of the decision: "Late-filed document - reliance on document in party's case (no)" 

EPO T 1242/14 -  link

4. Admittance of D9

4.1 Article 12(4) RPBA requires the Board to take into account everything presented by the parties under Article 12(1) RPBA if and to the extent that it relates to the case under appeal and meets the requirements in Article 12(2) RPBA. However, according to Article 12(4) RPBA, the Board has the discretionary power to hold inadmissible facts, evidence and requests that could have been presented or were not admitted in the first instance proceedings.

4.2 As the Board stated in its communication, the appellant did not seem to rely on D9 in its complete case to reason why it is requested that the decision under appeal should be reversed. The appellant did not submit any comments or counter-arguments in reply to this provisional opinion. The Board has therefore no reason to reach a different conclusion, and confirms its preliminary opinion herewith. On page 11 of its statement of grounds and contrary to the appellant's own declared intention, the appellant simply discusses the general disclosure of D9, without submitting any reason as to why the opposition division should have admitted D9 or even why, taking into consideration D9, the subject-matter of claim 1 does not involve an inventive step.

4.3 D9 is thus not admitted into the proceedings (Article 12(4) RPBA).

T 0756/14 - Leave to appeal

Key points

• The Board indicates that if a first instance department decides to allow an appeal against an interlocutory decision, this decision to allow an appeal should be included in the order of the decision.
• As a comment, this should also apply to decisions of the OD to maintain a patent in amended form (the substantive decision of the OD, which is taken before the translated claims are filed). 
• The interlocutory decision concerns the request for refund of a paid further search fee. The Board sees a substantial procedural violation in that the decision to refuse this request, is based for the first time on lack of unity of invention based on D3.
• As a note, the application was refused with a decision of 02.11.2012, which was appealed separately (case T2482/12). An interesting question is whether the case can be remitted to the ED for a decision on the refund of the additional search fee of all, in view the competence of the Board? Also, the ED's decision of the search fee was issued on 23.02.2012, the Notice of appeal was filed on 19.03.2012, so I wonder if the not the entire case is before the Board when the Examining Division took the refusal decision.  "On appeal, the department of first instance loses its competence for the further prosecution of the application for all contracting states - the appeal does not leave a part of the application pending in the first instance." (CLBA, IV.E.1.2 )
• Note 28.12.2018: appeal against an interlocutory decision refusing the request for refund of a search fee was of course accepted in G1/11 (with referral decision J21/09). 

EPO Headnote
Die Zulassung einer gesonderten Beschwerde gegen eine Zwischenentscheidung im Sinne des Artikels 106(2) EPÜ ist eine konstitutive Entscheidung der Prüfungsabteilung, die die Anfechtbarkeit im Beschwerdeweg erst begründet und daher in den Tenor aufzunehmen ist.

EPO T 0756/14 - link

Entscheidungsgründe

1. Gemäß Regel 103(1)(a) EPÜ wird die Rückzahlung der Beschwerdegebühr angeordnet, wenn der Beschwerde durch die Beschwerdekammer stattgegeben wird und die Rückzahlung wegen eines wesentlichen Verfahrensmangels der Billigkeit entspricht.

2. Die Beschwerdeführerin begründet ihren Antrag auf Rückzahlung der Beschwerdegebühr mit einigen vorgebrachten Verfahrensfehlern seitens der Prüfungsabteilung (siehe Begründung der Beschwerde, Abschnitt II, Seiten 3 bis 4).

T 1163/13 - Withdrawing appeal and requests

Key points

• In this opposition appeal, the OD had maintained the patent in amended form. Both the patentee and the opponent appeal. In the course of the appeal, the patentee withdraws his appeal and also all auxiliary requests.
• The Board concludes that there is no text approved by the patentee and the patent is revoked. 

EPO T 1163/13 - link

Entscheidungsgründe

1. Zulässigkeit der Beschwerde

Die Beschwerde der Einsprechenden 1 wurde frist- und formgerecht eingereicht und ist daher zulässig.

2. Gebilligte Fassung (Artikel 113 (2) EPÜ)

Die Antragslage des Patentinhabers lässt sich wie folgt zusammenfassen.

Der Hauptantrag des Patentinhabers auf Aufrechterhaltung des Patents wie erteilt war von der Beschwerde des Patentinhabers umfasst. Mit der Rücknahme der Beschwerde des Patentinhabers ist folglich der von der Beschwerde des Patentinhabers umfasste Antrag, d.h. der Hauptantrag, gegenstandslos geworden.

Da der Patentinhaber darüber hinaus sämtliche Hilfsanträge zurückgenommen hat, liegt keine gebilligte Fassung für die Aufrechterhaltung des Patents mehr vor, Artikel 113 (2) EPÜ.

Die Anträge der Einsprechenden 1 und 3 sind damit ebenfalls gegenstandslos geworden.

Das Patent ist folglich zu widerrufen.

3. Mündliche Verhandlung (Artikel 116 EPÜ)

Da der Patentinhaber seinen Antrag auf mündliche Verhandlung zurückgenommen hat und die Einsprechende 1 lediglich einen bedingten Antrag auf mündliche Verhandlung für den Fall gestellt hat, dass das Patent nicht widerrufen wird, kann die Entscheidung ohne die Durchführung einer mündlichen Verhandlung ergehen.

Entscheidungsformel

Aus diesen Gründen wird entschieden:

1. Die angefochtene Entscheidung wird aufgehoben.

2. Das Patent wird widerrufen.

T 0867/13 - Plausibility, or derived from the patent

Key points

• This opposition appeal clearly was a good fight about a pharmaceutical patent. 
• The CPA D67 "reports that a phase II clinical trial in infantile Pompe patients with recombinant human acid alpha-glucosidase (rhGAA) produced in the milk of transgenic rabbits "has finalised with positive results"" 
•  The subject-matter of claim 1 differs from the disclosure of document D67 in that the human rhGAA used for the treatment of GSD-II is produced in Chinese hamster ovary (CHO) cells.
• The Board concludes that this was an obvious alternative, no improvement being shown in the patent. Some post-published data allegedly showing the improvement is disregarded because " no improvement over the treatment known from document D67 is derivable from the patent". (the opponent had indeed used the term 'plausibility' on this point).
• The Board rejects the argument that the skilled person would not look for further improvements after the success of D67. "it is established case law that it is the normal task of a skilled person working in a certain field not to remain inactive but to seek alternatives, to be constantly occupied with the elimination of deficiencies, with the overcoming of drawbacks and with the achievement of improvements of known devices and/or products " 
• The Board concludes that the use of CHO cells was obvious in view of D73f which teaches  that "although no efficacy data is yet available for the two ongoing clinical trials of rhGAA replacement therapy, "pre-clinical data suggest that enzyme replacement therapy will be successful" (one of these clinical trials using CHO cells, as D73f mentions).

EPO T 0867/13 -  link

Thus, no improvement over the treatment known from document D67 can be derived from paragraphs [0008], [0009] and [0043] of the patent.

8.3 Paragraph [0013] of the patent discloses that CHO-cell-derived rhGAA is preferred and further that it "is assumed that the glycosylation differs from that of GAA that is produced in transgenic mouse and rabbit milk (...)". In the board's judgement, it does not follow directly and unambiguously from this statement that the assumed difference in glycosylation leads to an improved treatment if CHO-cell-derived rhGAA is used rather than transgenic rabbit-milk-produced rhGAA.

8.4 Documents D60a and D103 - both published after the priority date - relate to effects seen in Pompe mice (document D60a; see left-hand column, second paragraph under the heading "Results", and right-hand column, first paragraph under the heading "Conclusions") and GAA knockout mice (see document D103, page 452, right-hand column, fourth and fifth paragraphs, and Figures 3 and 4). However, these results obtained in mice do not establish that CHO-cell-derived rhGAA is better than rabbit-milk-derived rhGAA at effecting glycogen clearance in humans. Moreover, the alleged effect - an improved treatment for GSD-II - could only be taken into account when determining the problem underlying the invention for the purpose of assessing inventive step, if it can be deduced by the skilled person from the patent considered in relation to the closest prior art (see also Case Law of the Boards of Appeal, 8th edition 2016, I.D.4.4.2 and I.D.4.4.6). In the present case, no improvement over the treatment known from document D67 is derivable from the patent (see points 8.1 to 8.3).

8.5 In the board's judgement, the subject-matter of claim 1 can thus not be considered to provide an improved treatment over the treatment disclosed in document D67.

T 0221/13 - New attack is new evidence

Key points

• In this opposition appeal, the Board does not admit a new inventive step attack raised with the Statement of grounds of the opponent which is based on prior art already available in the file. The Board reasons that a document, or a relevant paragraph of it, only becomes evidence in connection with the factual arguments based on it.
• "Allein der Umstand, dass zu einem Dokument bereits im Einspruchsverfahren vorgetragen und bestimmte Textstellen oder Figuren daraus als Beweismittel für bestimmten Tatsachenvortrag genannt wurden, schließt es nicht aus, dass neue auf dieses Dokument gestützte Tatsachen und die Benennung des Dokuments bzw. bestimmter Dokumentstellen als Beweismittel für diese neuen Tatsachen im Beschwerdeverfahren nicht zugelassen werden. Nach Artikel 114 (2) EPÜ und Artikel 12 (4) VOBK kommt es nämlich nicht darauf an, ob ein Dokument verspätet eingereicht wird, sondern maßgeblich ist, ob ein Beweismittel oder Tatsachen verspätet vorgebracht werden. Ein Dokument wird nicht durch die bloße Benennung im Verfahren bzw. durch seine Einreichung zum Beweismittel an sich. Vielmehr ist es notwendig, konkret anzugeben, welche Tatsache durch welchen konkreten Inhalt des Dokuments belegt werden soll. Ein Dokument, bzw. eine bestimmte Textstelle oder Figur darin, wird daher erst aufgrund der Verknüpfung mit einem bestimmten Tatsachenvortrag zum Beweismittel, siehe hierzu auch Bühler in Singer/Stauder, EPÜ, 7. Auflage, Artikel 114, Rn 50 und Fußnote 66. 
• Ein Beteiligter kann sich dementsprechend nicht darauf beschränken, ein Konvolut von Dokumenten vorzulegen, ohne substantiiert vorzutragen, welche Tatsachen durch welche konkreten Passagen oder Figuren der jeweiligen Dokumente belegt werden sollen." 
• " Da die Beschwerdeführerin die Dokumente E8 und E10 erstmals im Beschwerdeverfahren als Beleg für das Naheliegen des mit dem erteilten Patentanspruch 1 beanspruchten Gegenstands benannt hat, handelt es sich vorliegend um neue Beweismittel." 
• The present decision appears to be part of a judicial dialogue with recent decision T 1914/12.
This decision was temporarily unpublished by the EPO but is now available again (19.12.2018)

EPO T 0221/13 - link (EP1006644).

4. Artikel 114(2) EPÜ und Artikel 12 (4) VOBK - Verspätetes Vorbringen

4.1 Die Beschwerdeführerin hat erstmals in der Beschwerdebegründung vorgebracht, dass der Gegenstand des erteilten Anspruchs 1 ausgehend von E1 als nächstliegendem Stand der Technik in Kombination mit E8 oder E10 nicht erfinderisch sei. Im Einspruchsverfahren beschränkte sich ihr Vorbringen hingegen darauf, dass der Gegenstand des erteilten Anspruchs 1 nicht neu gegenüber der aus Dokument E1 bekannten Maschine sei und dass ausgehend von Dokument E2 als nächstliegendem Stand der Technik keine erfinderische Tätigkeit vorliege.

Für das Naheliegen des mit Patentanspruch 1 beanspruchten Gegenstands hat die Beschwerdeführerin die Dokumente E8 und E10 im Einspruchsverfahren indes nicht als Beweismittel benannt und auch die zugehörigen Tatsachen nicht vorgetragen und zwar weder ausgehend von E2 noch ausgehend von E1.

4.2 Vorbringen der Beschwerdeführerin im Hinblick auf das Dokument E10 findet sich im Einspruchsverfahren lediglich in Zusammenhang mit ihrem Angriff gegen die erteilten Patentansprüchen 2 bis 8 dahingehend, dass E2 der nächstliegende Stand der Technik sei und dass E10 Figur 1 "verschiedenste Ausführungen von Diffusoren und deren Einsatz in elektrischen Maschinen" zeige. Demgegenüber trägt die Beschwerdeführerin mit der Beschwerdebegründung vor, dass E1 nächstliegender Stand der Technik sei und im Zusammenhang mit der Figur 1 in E10 den mit Patentanspruch 1 beanspruchten Gegenstand nahelege, weil in E10 "ein Diffusor offenbart wird, wobei der Diffusor eine Umlenkung des Kühlgases von einer im Wesentlichen radialen Strömungsrichtung in eine im Wesentlichen axiale Strömungsrichtung bewirkt". Dieses Vorbringen beinhaltet daher sowohl neue Tatsachen als auch ein neues Beweismittel.

Gleiches gilt für das Vorbringen in der Beschwerdebegründung in Zusammenhang mit dem Dokument E8, zu dem die Beschwerdeführerin im Einspruchsverfahren lediglich vorgetragen hat, dass es in Spalte 1, Zeile 50 ff die in Anspruch 9 des erteilten Patents beanspruchten Leitschaufeln zeige. Die Behauptung, dass E1 in Kombination mit E8 den beanspruchten Gegenstand nahelege, weil E8 "einen stromaufwärts des Ventilators befindlichen Umlenkdiffusor aufweist, wobei der Diffusor eine Umlenkung des Kühlgases von einer radialen Strömungsrichtung in eine im Wesentlichen axiale Strömungsrichtung bewirkt (siehe Figur 1 der E8)" beinhaltet damit neue Tatsachen und Beweismittel.

T 1946/17 - Decision state of the file unreasoned

Key points

• Another decision 'according to the state of the file' (EPO Form 2061), another substantial procedural violation. Three substantial procedural violatons, even. 
• The applicant had submitted some arguments. In the last substantive Communication, the ED had" merely stated that the "arguments were carefully considered", but "no new evidence" was provided. Such blanket statements cannot be considered to address the arguments raised. Hence, the present "standard form" decision [...] does not comply with the requirement of Rule 111(2) EPC that the decision be reasoned." 
• The decision is also inconsistent in that in 2015, the ED had stated that examination of A54 and A56 was deferred, but in the last communication, the ED had stated that the earlier objections under A54 and A56 were maintained. Hence, the decision is not properly reasoned.
• Furthermore, the decision is factually incorrect in that it states that the applicant had merely requested a decision according to the state of the file with the letter of 17.03.2017 without comments, whereas in fact, the letter included four substantive comments. 

EPO T 1946/17 -  link

Summary of Facts and Submissions

I. The Appellant (Applicant) is contesting the Examining Division's decision dated 3 April 2017, with which the European patent application no. 07 811 466.7 was refused.

II. The contested decision is a decision according to the state of the file, taken by means of a standard form referring to previous communications. The grounds for the decision read as follows:

"In the communication(s) dated 26.02.2016, 11.05.2015, 17.02.2014 the applicant was informed that the application does not meet the requirements of the European Patent Convention. The applicant was also informed of the reasons therein.
The applicant filed no comments or amendments in reply to the latest communication but requested a decision according to the state of the file by a letter received in due time on 17.03.2017.
The application must therefore be refused."

 Reasons for the Decision

1. The appeal is admissible.

2. Main Request, Rule 111(2) EPC

2.1 At the time when the contested decision was issued, the requirements for issuing a refusal using a standard form referring to previous communications were set out in the Guidelines for Examination in the EPO, November 2016, C-V, 15.2.

According to the first paragraph of Guideline C-V, 15.2, in order to comply with the requirement that a decision be reasoned (Rule 111(2)), it is only possible to use this form of decision where the previous communication addresses all the arguments raised by the applicant.

T 1840/15 - Ping pong between Board and ED

Key points

• This is an examination appeal.
• " The patent application was refused for lack of inventive step only. As the subject-matter of claim 1 of the present auxiliary request 1 fulfils the requirements of Article 56 EPC, the appeal is allowable and the appealed decision is to be set aside." 
• "Since the examining division did not deal with the subject-matter of independent claim 2 or with requirements for patentability other than inventive step, the board decides to remit the case to the examining division for further prosecution."
• As a comment, if there are two independent claims, and the ED sees a problem with one independent claim and refuses the application, there is no legal obligation for the ED to discuss any of the other independent claims. However, if the Board then restricts itself to mere review, a very slow ping pong can come into play (in this case, the appeal took a bit more than 3 years, examination before the ED took 5 years). 

Allowability of the appeal

19. The patent application was refused for lack of inventive step only. As the subject-matter of claim 1 of the present auxiliary request 1 fulfils the requirements of Article 56 EPC, the appeal is allowable and the appealed decision is to be set aside.

Remittal (Article 111(1) EPC)

20. Pursuant to Article 111(1) EPC, following the examination as to the allowability of the appeal, the board must decide on the appeal and, in this 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.

21. Since the examining division did not deal with the subject-matter of independent claim 2 or with requirements for patentability other than inventive step, the board decides to remit the case to the examining division for further prosecution.

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 auxiliary request 1 submitted with the letter of 27 April 2018.

T 0144/11 - Technical but still in the business specification

Key points

• The Board provides a gloss to T1463/11: describing the problem as "how to implement the business method" is only a starting point. If a technical effect of the implementation becomes apparent, the problem must be reformulated has "how to achieve the technical effect". 
• The Board also emphasizes that "that the technically skilled person must receive a complete description of the business requirement, or else he would not be able to implement it and he should not be providing any input in the non-technical domain".
• The applicant had submitted: " The present invention enabled a safe and reliable security rating system which automatically provided investors with objectively calculated security rating values. This was technical. The popularity of a security was taken into account by counting the transmissions of rating values to investors. " The question is how to deal with the feature of counting the transmissions for the assessment of inventive step.
• The Board: "The popularity is measured by counting the number of transmissions. The observation that the "transmission of data" between a client and server is technical - which is undoubted - does not necessarily imply that the mere idea of "counting" these transmissions is also technical. The question is whether the idea of counting is on the business side of the line or on the side of the technical implementation." 
• "The Board judges that counting is rather part of the business specification. The more popular a security is, the higher is the number of investors interested in receiving information about it. Within a business setting, this would amount to counting the number of telephone calls, the number of emails sent, the number of letters, votes received, etc. All these thoughts are made by the notional business person." 

EPO T 0144/11 -  link


Key points
A problem of the type "implement [the business requirement]" will normally never lead to an allowable claim. Either the implementation will be obvious or have no technical effect, or if not, the implementation will have a technical effect that can be used to reformulate the problem essentially to "achieve [the effect of the implementation]".

However, the implementation-type problem is just a starting point that might have to be modified when the implementation is considered. It helps when a technical problem is not apparent at the outset. Examining the business requirements carefully and correctly establishing what is to be implemented ensures that all technical matter arising from the idea of the invention and its implementation is taken into account for inventive step.

2. Article 56 EPC - Deriving the technical problem

2.1 This case, like many in this field, is all about drawing the line between technical and non-technical subject-matter. This is of critical importance since as stated in decision T 641/00 (COMVIK), only features with technical character can support the presence of inventive step. As a result, non-technical aspects of the invention may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met.

T 0754/16 - Article 114(2) not for amended claims

Key points

• The OD did not admit AR's filed during the oral proceedings. The Board concludes that this is a procedural violation. 
• " The opposition division assumed that it had a discretion not to admit these requests on a prima facie basis and referred to Article 114(2) and Rule 116 EPC. This presupposes, in the first place, that the requests were late filed, which is however not the case." 
• " Under Rule 116(2) EPC, requests filed after the final date set for making written submissions, can only then not be admitted if the patent proprietor had been notified of the grounds prejudicing the maintenance of the patent. This was clearly not the case. Neither does Article 114(2) EPC provide a basis for disregarding these requests, since, firstly, it does not apply to late filed requests in the form of amended claims, but only to late filed facts and arguments (see Bühler in Singer/Stauder, Europäisches Patentübereinkommen, 7. Auflage 2016, Artikel 114, point 52). Secondly, the auxiliary requests were filed in due time, as a direct and immediate response to the opposition division's changed opinion and since the proprietor had no earlier opportunity to react thereto." 
• As a comment, the Board refers to "only to late filed facts and arguments" but Art. 114(2) states that the EPO may disregards "facts or evidence".

EPO T 0754/16 -  link

Reasons for the Decision

1. Remittal of the case to the opposition division based on a substantial procedural violation

1.1 The appellant requested that the case be remitted to the opposition division because it had committed a substantial procedural violation by not not giving the opportunity to comment on the patentability of auxiliary requests 1 to 7 and not admitting auxiliary requests 8 and 9 into the proceedings based on a prima facie examination.

T 0392/16 - Attacks: facts or arguments

Key points

• In this opposition appeal, the opponent had submitted that D1 was novelty destroying before the OD and had used D3 and D10 as closest prior art before the OD (D1 was not used for inventive step then). The opponent presents inventive step attacks based on D1 in appeal. The Board does not admit these attacks.
• The Board finds that the oppponent "should have considered that the proprietor's view [that D1 did not teach all features] could be shared by the Opposition Division, and should have accordingly formulated all, in its view, relevant objections on inventive step based on the evidence it had submitted." 
• The more interesting remark of the Board is this: " These objections are based on documents submitted with the notice of opposition. However, their specific combinations were never subject of the opposition proceedings. These objections amount thus to new alleged facts by the appellant (opponent) presented for the first time in the appeal proceedings." and "Under these circumstances the Board decided to exercise its discretion pursuant to Article 12(4) RPBA not to admit the new lines of attack on inventive step put forward for the first time in the statement of grounds of appeal because they amount to new alleged facts that the appellant should have presented during opposition proceedings."
• This decision of 19.10.2018 provides a neat answer to T1914/12 issued 17.09.2018 which stated that under Article 114(2) EPC, new 'arguments' must always be admitted whereas facts can be refused to be admitted if late-filed. 

EPO T 0392/16 - link

2. Admissibility of new objections on inventive step

2.1 During the opposition proceedings the appellant put forward the following inventive step objections to the subject-matter of claim 1 as granted:

- D3 in combination with D4;
- D3 in combination with D5;
- D3 in combination with D9;
- D10 in combination with D6;
- D10 in combination with D3; and
- D10 in combination with D2.

With the statement of grounds of appeal the appellant objected on inventive step only with the following combinations of prior art:

(i) D1 in combination with D4;
(ii) D1 in combination with D2;
(iii) D1 in combination with D4 and D2; and
(iv) D4 in combination with D6.

These objections are based on documents submitted with the notice of opposition. However, their specific combinations were never subject of the opposition proceedings. These objections amount thus to new alleged facts by the appellant (opponent) presented for the first time in the appeal proceedings.

T 1957/14 - QTL's unclear

Key points

• In what appears to be an important decision for patents relating to plants and seeds, the Board decides that the claim at issue is unclear because it relies on QTL's (quantitative trait locus).
• The claim is directed to a maize plant having at least 14 QTL's, each QTL is defined by a pair or markers and by a position on a chromosome, each marker is essentially a DNA sequence which is given in the claim (SEQ ID), but the markers are not themselves the genes giving the advantageous properties (if I understand the technology correctly). More importantly is that QTL's are the most commonly used way to define conventionally bred plants in patent claims.
• "In the board's view, the skilled person may well understand the terms used in the claim and how to use the technology related to these terms in practice. Yet this understanding and these practical skills do not, in the present case, convey to the skilled person the structural features necessary to unambiguously characterise the alleles referred to in the claim."
•  "The alleles are moreover defined in claim 1 by further definitions in relation to the QTLs, i.e. the QTLs' supposed location on a chromosome, the QTLs' linkage to marker loci which in turn are defined by PCR primers identified by their sequence and the size of the amplification product " (as I tried to summarize above).
•  "In the board's opinion it is evident that none of these definitions provides the skilled person with any information about the structural features of the alleles themselves. Thus, the sequence of an allele is neither derivable from the QTL's supposed location on the chromosome nor from a characterisation of the markers linked to it, regardless of how extensive that characterisation is."
•  'Hence, the physical parameters of the alleles (see point 4 above), their structures, are not defined by the definitions in the claim. Consequently, the essential features characterising the claimed plant, the alleles (see point 3 above), are also not defined by the claim. For the above reasons, the board concludes that claim 1 lacks clarity."
• Added: The particular QTL's at issue were also defined by a reference to a deposited material. "in the board's opinion, the reliance on deposited inbred line material for the definition of the essential features of the invention and by requiring it to be analysed in order to identify the relevant alleles is at odds with the principle that, generally, the meaning of a claim, including its essential features, should be clear, for the person skilled in the art, from the wording of the claim alone "
• The  oral decision was given on 17 January 2018 so the written decision has taken some time to issue (on 30.11.2018). The claims in case T 1063/18 for which oral proceedings are publicly announced for 5 December 2018 also rely on QTL features. See here for a 2016 paper on patent claims and QTL's. See in particular pages 21 and 23 and in particular page 31. 

EPO T 1957/14 - link




Claim 1 of the main request reads:
"1. A maize plant characterized by a set of at least
14 QTLs each of which contributes to the phenotypic trait of grain yield as measured by quintals per hectare, wherein each of said QTLs is characterized by the presence of an allele of that QTL that contributes in a positive way to the phenotypic trait of grain yield, wherein each QTL is genetically linked to at least one marker locus selected from the group of loci characterized by at least one pair of linked markers each of which can be identified by a pair of PCR oligonucleotide primers consisting of a forward primer and a reverse primer exhibiting a nucleotide sequence as given in
(1) SEQ ID NO: 59/60 with an amplification product in a PCR reaction having a molecular weight of 120 bp and SEQ ID NO: 77/78 with an amplification product in a PCR reaction having a molecular weight of 85 bp, respectively, identifying a marker pair linked to QTLl, wherein QTL1 is located on chromosome 1 at a supposed position at 115.6 cM and is obtained from inbred line M3047/2 (NCIMB 41460); ...

Reasons for the Decision

Introduction and explanation of terms

1. The present invention relates to a maize plant "with a genome comprising a unique allele profile associated with the corresponding QTLs [quantitative trait loci] contributing to the expression of a variety of phenotypic traits of economic interest selected from the group of grain yield (...)" (see application, page 1, first paragraph). "The term "quantitative trait" has been used to describe a phenotype that exhibits continuous variability in expression and is the net result of multiple genetic loci presumably interacting with each other and/or the environment" (see application, page 1, fourth paragraph). The term "quantitative trait locus" (QTL) refers "to an association between a genetic marker and a chromosomal region and/or gene that affects the phenotype of a trait of interest" (see application, page 4, first full paragraph). A "genetic marker" is a "feature of an individual's genome (e.g., a nucleotide or a polynucleotide sequence that is present in an individual's genome) that is associated with one or more loci of interest" (see application page 4, lines 24 to 26). An "allele is understood, within the scope of the invention, to refer to alternative forms of various genetic units associated with different forms of a gene or of any kind of identifiable genetic element" and "an allele associated with a quantitative trait may comprise a single gene or multiple genes or even a gene encoding a genetic factor contributing to the phenotype represented by said QTL" (see application, page 2, fifth and sixth paragraph).

Main request

Clarity (Article 84 EPC) - claim 1

2. Article 84 EPC provides that the claims shall define the matter for which protection is sought and that they shall be clear and concise and be supported by the description. Rule 43(1) EPC further requires that the claims shall define the matter for which protection is sought in terms of the technical features of the invention.

The technical features of the invention are the physical features which are essential to it. The technical features of a claim to a physical entity are the physical parameters of the entity. In appropriate cases technical features may be defined functionally (see G 2/88, OJ EPO 1990, 93, Reasons, point 2.5).

The meaning of the technical features essential to the invention ("essential features") should be clear for the person skilled in the art from the wording of the claim alone (see decision G 1/04, OJ EPO 2006, 334, Reasons, point 6.2).

3. Claim 1 is directed to a maize plant (see section VI for the complete wording of the claim). The plant is characterised by "a set of at least 14 QTLs" and each QTL is characterised by "the presence of an allele of that QTL that contributes in a positive way to the phenotypic trait of grain yield".

Thus, the technical features essential for the invention are the alleles present in the QTLs because they are ultimately responsible for the phenotypic trait of grain yield.

R 0004/18 - Withdrawing appeal and petition for review

Key points

• In this petition for review case after an examination appeal, (the patent attorney of) the applicant had withdrawn the appeal at the end of the oral proceedings before the Board. The applicant, now having another representative, regrets this, in particular, because in the divisional application the Examiner sees the refusal of the parent as res iudicata (if I understand this correctly).
• The petitioner submits that the minutes of the oral proceedings before the Board are to be seen as a decision, and hence that the petition is admissible. The petition also submits that the withdrawal of the appeal was invalid. 
• The EBA finds that the petitioner was validly represented during the oral proceedings before the Board, and concludes that the minutes are not a decision. The use of the word "conclusion"  in the minutes does not change this. Hence, there is no decision of the Board and the petition is clearly inadmissible.
• The applicant (not represented anymore by attorney) has filed a complaint letter after the decision of the Enlarged Board. 

Collusion between Representative 1 and the Board of Appeal

5. The Enlarged Board can find no evidence of collusion between Representative 1 and the Board of Appeal. As evidence of collusion the Petitioner has merely put forward its CEO’s criticism of Representative 1’s professional performance.

Are the minutes a decision?

6. Article 112a(1) EPC provides that any party to appeal proceedings adversely affected by the decision of the Board of Appeal may file a petition for review of the decision by the Enlarged Board of Appeal.