T 1372/18 - Notification by letter

Key points

• In this opposition appeal, the patentee contests that it had never received the invitation under Rule 79(1) EPC (and hence, that it became aware of the opposition only with the revocation decision of the OD).
• As to whether the Rule 79 invitation had been notified, "the EPO was only able to confirm the proper dispatch of the relevant communication, stating that as more than six months since dispatch had elapsed, it was not possible to investigate whether notification had taken place (see F2911O of 18 May 2018)".
• The Board: "In the case at hand, the addressee contends that it never received the communication concerned and the EPO confirmed its inability to establish that the letter had reached its destination or indeed even to be able to investigate the notification process." 
• "In light of these circumstances the Board must conclude that the letter never reached the addressee. Thus, it was not notified as foreseen in Rule 79(1) EPC and hence it cannot have produced any legal effect. In particular, it did not give rise to the time limit for responding to the notice of opposition."
• This is a substantial procedural violation. The decision is set aside and the case is remitted.
•  As a comment, the Administrative Council had decided (CA/D 2/19) that as of November 2019, all notifications by post will be done with a normal "registered letter"  (i.e. without advice of delivery), also for decisions. Hopefully, the EPO will have set up a better system to proof delivery by then. 

EPO T 1372/18 - link




III. On the appellant's request for information in this matter, the EPO was only able to confirm the proper dispatch of the relevant communication, stating that as more than six months since dispatch had elapsed, it was not possible to investigate whether notification had taken place (see F2911O of 18 May 2018).

Reasons for the Decision

The Board's findings on the merits of the present appeal are as follows.

1. Rule 79(1) EPC foresees a communication setting a time period for filing observations to an opposition. No reminder or any other measure is provided to ensure that any response from a patent proprietor does indeed reach the file. This entails however the unintended consequence that a proprietor which does not receive the communication under Rule 79(1) EPC will not realise the omission, until - potentially - too late.

2. Relief is to be found in the provisions regulating notification, in particular Rule 126(2) EPC, which stipulates that "where notification is effected in accordance with paragraph 1 (i.e. notification by registered letter), ... in the event of any dispute, it shall be incumbent on the European Patent Office to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee, as the case may be".

3. In the case at hand, the addressee contends that it never received the communication concerned and the EPO confirmed its inability to establish that the letter had reached its destination or indeed even to be able to investigate the notification process.

4. In light of these circumstances the Board must conclude that the letter never reached the addressee. Thus, it was not notified as foreseen in Rule 79(1) EPC and hence it cannot have produced any legal effect. In particular, it did not give rise to the time limit for responding to the notice of opposition.

5. This conclusion necessarily leads to the following consequences, namely that the opposition procedure was tainted by a substantial procedural violation, which was the violation of the proprietor's right to be heard (Article 113(1) EPC), with the result that the decision resulting therefrom has to be set aside.

6. Since the appellant was not heard, the Board considers that the only reasonable way to exercise its discretion under Article 111(1) EPC is to remit the case to the opposition division. Indeed, were the Board instead to have decided to consider the claims underlying the contested decision, it would be doing so as both the first and the last instance; this approach is not considered as either equitable or procedurally appropriate, or indeed even compatible with the judicial character of the appeal proceedings (see also Article 11 RPBA).

7. In the circumstances of the case, the Board further considers it equitable that the appeal fee be reimbursed (Rule 103(1)(a) 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.

3. The appeal fee is to be reimbursed.

T 0452/16 - Form refusal, procedural violation

Key points

• Another Form 2061 refusal, another substantial procedural violation of the applicant's right to be heard.
• " The applicant's answer dated 26 January 2015 contains a detailed argumentation to support the view that [certain claim] features are of a technical nature and establish novelty, which argumentation may be summarised as follows: a cardboard box with patient leaflet information reveals a technical aspect by itself, as it contributes to solving the problem of providing a pharmaceutical composition ready for use by the end customer and produces the technical effect of protecting the compositions from light and physical damage." 
• " In the communication dated 22 May 2015, these arguments were not addressed: despite the blanket statement that "the arguments submitted by the applicant with letter of 26.01.2015 have been given due consideration", the communication merely concludes that "the examining division is still of the opinion that the features relating to the packaging and marketing of the pharmaceutical composition are not features having a technical character in the sense of Rule 43(1) EPC for claims directed to a pharmaceutical composition, and therefore cannot serve to confer novelty over Art. 54(1), (2) EPC prior art documents or Art. 54(3) EPC documents". Thus this communication merely repeats the examining division's conclusion that said features have no technical character, without a word about the specific technical aspects mentioned by the applicant." 
• The underlying issue is novelty over D9, a prior right under Article 54(3) EPC. 

EPO T 0452/16 -  link

Reasons for the Decision

1. Right to be heard (Article 113(1) EPC)

The right to be heard under Article 113(1) EPC requires that those involved be given an opportunity not only to present comments (on the facts and considerations pertinent to the decision) but also to have those comments considered, that is, reviewed with respect to their relevance for the decision on the matter (see Case Law of the Boards of Appeal, 8th edition 2016, III.B.2.4.1).

The Board considers that the examining division did not observe the appellant's right to be heard for the following reasons:

T 2081/16 - Appeal against grant

Key points

• The patentee appeals against the grant of the patent.
• The (second) Rule 71(3) referred to " description pages 2, 3, 6 to 12, 14 to 22 and 24 as filed with the letter dated 4 December 2014" whereas the applicant had requested the grant to be based on " description pages 2, 3, 6 to 12, 14 to 22 and 24 as originally filed". 
• The appeal is admissible because the applicant is adversely affected.
• " The applicant cannot be deemed to have approved the text communicated to it in this communication according to Rule 71(5) EPC: Apparently neither the members of the examining division nor the appellant realised that the documents referred to in the [Rule 71(3) Communication] did not correspond to the documents according to the applicant's request []." 
• " The board concludes, especially given that the examining division did not indicate any new amendments in the corresponding field on page 1 of Form 2004C [of the Rule 71(3) Communication], that in the present case neither the documents referred to in Form 2004C nor the "Druckexemplar" reflected the text in which it intended to grant the European patent." 
• " Where the text intended for grant is not communicated to the applicant under Rule 71(3) EPC, the fact that the appellant subsequently files a translation and pays the fees for grant and publishing is not decisive. The provisions of Rule 71(5) EPC, in this regard, refer to Rule 71(3) EPC and therefore presuppose that the applicant has not only been notified of any text but of the text intended for grant."
•  "In arriving at this decision, the board does not deviate from G 1/10." 
• " The present decision is based on the fact that the text intended for grant had not been communicated to the applicant and, therefore, Rule 71(5) EPC did not yet apply. As a result, no text had been approved by the applicant. This is fundamentally different from attempts to impute mistakes in amended claims which were introduced by an applicant to the examining division "by suggesting the examining division did not intend to make a decision which in fact included the very text approved by the applicant himself - in order to bring the applicant's own error within the ambit of Rule 140 EPC" as referred to by the Enlarged Board in G 1/10 " 

EPO T 2081/16 - link

Reasons for the Decision

The appeal is admissible (point 1) and allowable (point 2). The board in arriving at this conclusion does not deviate from G 1/10 (see point 3).

1. Admissibility of the appeal

1.1 The appeal is admissible. The appellant is adversely affected. The granted version of the patent corresponds neither to a text submitted by the applicant (see below, point 1.2) nor to a text agreed by it (point 1.3), nor to a text deemed to have been approved by it (point 1.4). There is, therefore, a discrepancy between the applicant's request and the decision of the examining division.

1.2 Whereas the applicant, with its letter dated 29 July 2015, requested the grant of a patent on the basis of "original description pages 2, 3, 6 to 12, 14 to 22 and 24 ...", the communication dated 16 September 2015 sent by the formalities officer refers to "description pages 2, 3, 6 to 12, 14 to 22 and 24 filed in electronic form on 4 December 2014 ...".

T 1592/13 - Not discussing a feature

Key points

• In this examination appeal, the impugned decision did not discuss the feature of "exclusive access" in claim 1 (which was about a software invention).
• " The board is of the opinion that Article 113(1) EPC is also contravened if facts and arguments which, from an objective standpoint, are clearly central to the case and could present a challenge to the decision in question were completely disregarded in the decision." 
• " The board agrees with the appellant that the examining division should have considered this feature in its assessment of novelty and should have addressed the appellant's arguments referring to "exclusive access" [...] the board finds that disregarding the feature of "exclusive access" and the corresponding arguments in the assessment of novelty contravenes both Rule 111(2) and Article 113(1) EPC. If the examining division had been of the opinion that the feature highlighted by the applicant was irrelevant to its decision, then it should have explicitly stated this." 
• " Not discussing the feature in the decision under appeal therefore constitutes a violation of the right to be heard under Article 113(1) EPC." 

EPO T 1592/13 - link

Reasons for the Decision

1. The appeal is admissible.

2. The alleged substantial procedural violation

2.1 The obligation to provide adequate reasoning in a decision in accordance with Rule 111(2) EPC is closely linked to the principle of the right to be heard under Article 113(1) EPC (see T 1340/10, point 1.1).

Pursuant to Rule 111(2) EPC "[d]ecisions of the European Patent Office which are open to appeal shall be reasoned".

According to the decision of the Enlarged Board of Appeal R 8/15 (Catchword 1), "Article 113(1) EPC is infringed if the Board does not address submissions that, in its view, are relevant for the decision in a manner adequate to show that the parties were heard on them, i.e. that the Board substantively considered those submissions. (See Reasons, point 2.2.2.)". The board considers that this principle also applies to the department of first instance.

The board is of the opinion that Article 113(1) EPC is also contravened if facts and arguments which, from an objective standpoint, are clearly central to the case and could present a challenge to the decision in question were completely disregarded in the decision.

2.2 It is apparent from the marked-up copy of the claim requests filed on 15 January 2013 that the feature of "exclusive access", i.e. an advertisement controller capable of executing advertisement control software to obtain exclusive access to one or more remote control key events for taking exclusive control of either a channel switching function or a fast forwarding function, was filed as an amendment in response to the summons issued by the examining division. In the accompanying letter, the appellant extensively argued that the prior art did not disclose "exclusive access".

In section 1 of the decision under appeal, the examining division set out to counter the appellant's arguments by referring to passages of D1, D3 and D4 which disclosed taking exclusive control of channel switching or fast forwarding. In this section, the examining division did not address the feature of "exclusive access". It ignored the particular implementation specified in claim 1 and instead only considered the functionality of taking exclusive control of channel switching or fast forwarding. Similarly, in the analysis of the disclosures of documents D1, D3 and D4, the examining division referred to passages disclosing taking control of channel switching or fast forwarding, but did not cite any passages disclosing "exclusive access".

The board agrees with the appellant that the examining division should have considered this feature in its assessment of novelty and should have addressed the appellant's arguments referring to "exclusive access" (see point XIII(a) above).

Moreover, the board considers that this feature was central to the applicant's case.

2.3 Therefore, in line with the principles enunciated in point 2.1 above, the board finds that disregarding the feature of "exclusive access" and the corresponding arguments in the assessment of novelty contravenes both Rule 111(2) and Article 113(1) EPC. If the examining division had been of the opinion that the feature highlighted by the applicant was irrelevant to its decision, then it should have explicitly stated this.

Not discussing the feature in the decision under appeal therefore constitutes a violation of the right to be heard under Article 113(1) EPC.

[...]

3.5 In view of the above, the board finds that claim 1 of the main request and the first, second and third auxiliary requests does not meet the requirements of Article 84 EPC 1973.

4. Request for remittal (Article 111(1) EPC)

Since the board does not agree with the appellant that the amended claims overcome the objection raised under Article 84 EPC 1973 (see point XIII(f) and section 3 above), this request serves no purpose and therefore needs not be considered by the board.

5. Since none of the appellant's requests is allowable, the appeal is to be dismissed.

6. Reimbursement of the appeal fee under Rule 103(1)(a) EPC

6.1 According to Rule 103(1)(a) EPC, the reimbursement of the appeal fee is ordered in the event where the board of appeal deems an appeal allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

6.2 Since the appeal is not allowable, the request for reimbursement of the appeal fee is refused.

Order

For these reasons it is decided that:

1. The appeal is dismissed.

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

T 0501/15 - Addressing all grounds

Key points

• In this opposition appeal, the Board decides that proprietor's appeal is admissible. The patentee with the Statement of grounds no longer defends the main request but only the auxiliary requests. 
• "These requests were held in the [OD's] decision to contravene the provisions of Article 123(2) and/or 84 EPC. For these requests the decision is silent regarding novelty and sufficiency of disclosure. Nor is the Board able to infer in some way or another from the decision, what the division's view might have been for these issues for these requests."
• Therefore, it was sufficient to defend in the Statement of grounds that these requests meet Article 123(2) and 84 EPC. 
" Consequently, the statement of grounds formally addresses all the grounds upon which the rejection of these requests, which are maintained upon appeal, is based. For this reason the respondent's opinion that the grounds fail to give arguments in support of novelty or sufficiency for these requests is not relevant for the question of admissibility.
• The Board considers decision T1045/02 to be different because in that case, the (Form 2061) refusal effectively included a rejection for lack of novelty of claim 2 which was defended in appeal.
• " In the present case the principal request is the unamended auxiliary request 1, which the decision under appeal considered not allowable solely on the grounds of added matter and lack of clarity; both issues are addressed in detail in the statement of grounds." 
• The Board adds that:  "Case law thus suggests a case-by-case approach that considers the contents of the statement of grounds and the decision under appeal, but is otherwise not prescriptive as to particular principles that must apply when considering individual cases." I'm not sure how accurate this is. I think that case law holds that a Statement of ground must rebut all grounds for rejecting the request (or attack of opponent) at issue. 

EPO T 0501/15 -  link

Reasons for the Decision

1. Admissibility of the appeal

1.1 The admissibility of the proprietor-appellant's appeal is contested, because according to the respondent it would fail to address the grounds of novelty and sufficiency that were part of the impugned decision.

1.2 The decision indeed concludes that the main request is not allowable on the grounds of novelty and sufficiency. However, the appellant does not pursue the main request but rather the auxiliary requests 1 to 6, which have been re-filed together with a further new auxiliary request 7 with the statement of grounds. These requests were held in the decision to contravene the provisions of Article 123(2) and/or 84 EPC. For these requests the decision is silent regarding novelty and sufficiency of disclosure. Nor is the Board able to infer in some way or another from the decision, what the division's view might have been for these issues for these requests.

The grounds of appeal contain, in relation to each of the above auxiliary requests, arguments relating to the reason that lead the opposition division to hold that request not allowable (see e.g. page 2, reasons for compliance of the first auxiliary request with Art. 84 and 123(2) EPC, and on page 3 the issue of added subject-matter against the amended first auxiliary request). Consequently, the statement of grounds formally addresses all the grounds upon which the rejection of these requests, which are maintained upon appeal, is based. For this reason the respondent's opinion that the grounds fail to give arguments in support of novelty or sufficiency for these requests is not relevant for the question of admissibility.

1.3 The respondent furthermore refers to the case law and in particular to the decision T 1045/02 to support his view that the statement of grounds failed to meet the minimum requirements in that it dealt with only one of several grounds. The decision is quoted in the passage of the case law explaining the general principles that the examination of whether the requirements of Art. 108, third sentence, EPC are met, has to be made on the basis of the contents of both the statement of grounds of appeal and of the decision under appeal, and that whether a statement of grounds meets the requirements of Article 108 and Rule 99(2) EPC 1973 can only be decided on a case-by-case basis (Case Law of the Boards of Appeal, 8th edition 2016 (CLBA) IV.E.2.6.3, in particular that the statement of grounds are to be analysed vis-à-vis reasons in the decision (CLBA IV.E.2.6.3 b)).

1.4 Case law thus suggests a case-by-case approach that considers the contents of the statement of grounds and the decision under appeal, but is otherwise not prescriptive as to particular principles that must apply when considering individual cases. Indeed T 1045/02 itself refers to these principles, see 1. of the Reasons. In the present case the Board has applied the general principle and considered both the statement of grounds and decision under appeal and found that, for the relevant requests of the present appeal, the impugned decision considered only added subject-matter and clarity, and that both issues are addressed in the statement of grounds. Both issues are moreover addressed to a degree that requires little or no effort on the part of the Board or the other party to understand why the appellant considers that the decision is wrong in its findings on these issues, nor indeed has this been argued.

1.5 In addition, the Board does not find the case considered in T1045/02 cited by the respondent to be sufficiently analogous to the present case. That case concerned an appeal against a decision by the examining division according to the state of the file where not the decision itself but the relevant communications contained the novelty and clarity objections. There, for amended claims of a main request filed in appeal the statement of grounds of appeal only addressed lack of clarity. However, the file itself contained an indication from the examining division that importing the subject-matter of claim 2 would not make claim 1 novel, see 3. of the Reasons in T 1045/02. In other words, the decision was seen as containing reasons on the issue of novelty for a relevant claim. In the present case the principal request is the unamended auxiliary request 1, which the decision under appeal considered not allowable solely on the grounds of added matter and lack of clarity; both issues are addressed in detail in the statement of grounds.

1.6 The Board thus concludes that the appeal is admissible pursuant Article 108, third sentence, and Rule 99(2) EPC.

T 2658/16 - Conjugate unclear

Key points

• In this examination appeal, claim 1 is directed to a "covalent conjugate of an alpha amino acid ester and a modulator of the activity of a target intracellular enzyme". The Board considers the 'modulator' feature unclear. The applicant's argument that the modulator feature is not an essential element of the invention, does not help. 
• " Although functional features are generally allowable, a functional feature must remain clear in the sense that the person skilled in the art with his common general knowledge in reading the claim, must be able to understand what is meant by the claim without ambiguity and without complicated, time-consuming investigations, i.e. without undue burden, and must be able to derive a clear definition of what is intended to be claimed. Said features must provide instructions which are sufficiently clear for the skilled person to reduce them to practice without undue burden. This is not the case with the functional feature "a modulator of the activity of a target intracellular enzyme or receptor".
•  " the assessment of clarity of a claim cannot be limited to some of its features, presented objectively or subjectively as the essential elements of the claimed invention. All features present in a claim must meet the requirements of Article 84 EPC." 
• " claim 1 of the main request is furthermore not restricted to the delivery system or the conjugation link and comprises further features relating inter alia to the conjugated modulator. The remaining features considered as non-essential by the appellant must also be taken in account for the assessment of the further requirements of the EPC, such as novelty or inventive step. If the core of the invention was indeed the modulator delivery system or the conjugation link, the applicant had the possibility of limiting the subject matter of the claim to that particular subject matter, with the consequence that said limited subject-matter has also to be assessed as such as regards the remaining requirements of the EPC, such as inter alia novelty and inventive step." 

EPO T 2658/16 - link

Claim 1 of the main request (corresponding to former auxiliary request 8) read thus as follows:

"1. A covalent conjugate of an alpha amino acid ester and a modulator of the activity of a target intracellular enzyme or receptor for use in a method of treatment of the human or animal body by therapy, wherein:
the ester group of the conjugate is hydrolysable by one or more intracellular carboxylesterase enzymes to the corresponding acid, wherein the corresponding acid is capable of selectively accumulating in hCE-1 expressing cells;
the nitrogen of the amino group of the amino acid ester is not linked directly to a carbonyl moiety, or left unsubstituted; and
the alpha amino acid ester is conjugated to the modulator at a position remote from the binding interface between the modulator and the target intracellular enzyme or receptor, wherein the position of conjugation is remote when the conjugate has a potency in a cellular activity assay at least as high as that of the unconjugated modulator in the same assay, which cellular activity assay is a cell proliferation inhibition assay carried out in U937 cancer cells."

Reasons for the Decision

1.1 One of the components of the claimed conjugate is thus "a modulator of the activity of a target intracellular enzyme or receptor", and is defined in the form of a functional feature.

Although functional features are generally allowable, a functional feature must remain clear in the sense that the person skilled in the art with his common general knowledge in reading the claim, must be able to understand what is meant by the claim without ambiguity and without complicated, time-consuming investigations, i.e. without undue burden, and must be able to derive a clear definition of what is intended to be claimed. Said features must provide instructions which are sufficiently clear for the skilled person to reduce them to practice without undue burden. This is not the case with the functional feature "a modulator of the activity of a target intracellular enzyme or receptor".

T 0055/18 - Insuffiency; burden of proof

Key points

• This opposition appeal is about sufficiency of disclosure. Claim 1 is for a process including a step of  "fibrillating the cellulose fibres in the presence of the at least one filler and/or pigment until there are no fibres left and only primary cellulose fibrils are obtained" The opponent submits that the patent does not teach how to carry out this step that it is unknown how to evaluate that "there are no fibres left" as well "only primary cellulose fibrils are obtained". The OD had agreed with this argument and had revoked the patent for insufficient disclosure.
•  " the Board is of the opinion that the objection of insufficiency of disclosure raised by the respondent [opponent] and shared by the opposition division is not substantiated by verifiable facts and that therefore the respondent [opponent] has failed to discharge its burden of proof" 
• The Board: "Step (d) of claim 1 requires fibrillating the cellulose fibres in the presence of at least one filler and/or pigment until there are no fibres left and only primary cellulose fibrils are obtained. This however does not require that the elements of the suspension are detected and that their dimension is measured. In fact, claim 1 does not comprise a step of measuring the dimension of the elements of the suspension, so that the absence in the patent of a specific indication of the dimension of the primary fibrils and of a method for measuring such dimension does not affect a priori the reproducibility and thus the sufficiency of disclosure of the claimed invention."
• I think this argument can in fact be applied generally to all claims specifying parameters of a product.
• " It is noted that the patent specification acknowledges with reference to the background art that the fibrillation process may be continued until there are no fibres left and only fibrils of nano size remain (see paragraph [0010]). That this is generally possible has not been contested by the respondent or by the opposition division." 
• " [The opponent] has not shown that any of the examples of the patent are not workable or are such that step d) cannot be carried out or can only be carried out with undue burden.
• Therefore, " the sufficiency of disclosure of the invention of the opposed patent cannot be denied" 
• The Board also notes that the opposition division had incorrectly "put the burden of proof of sufficiency of disclosure on the appellant [patentee] during opposition proceedings" " The decision of the opposition division is therefore already for this reason incorrect." 
• The Board also gives reasoning as to " The parties are in dispute over whether in the case at hand the burden of proof has been shifted from the respondent/opponent to the appellant/patent proprietor." This has to do with incorrect optical microscopy photographs filed by patentee. 

EPO T 0055/18 -  link 

XI. Independent claim 1 according to the main request, i.e. according to the patent as granted, reads as follows:

A process for the production of nano-fibrillar cellulose suspensions, characterized by the steps of:
(a) providing cellulose fibres in the form of a suspension;
(b) providing at least one filler and/or pigment;
(c) combining the cellulose fibres and the at least one filler and/or pigment;
(d) fibrillating the cellulose fibres in the presence of the at least one filler and/or pigment until there are no fibres left and only primary cellulose fibrils are obtained.

 Reasons for the Decision

1. The appealed decision - Burden of proof

1.1 The appellant argues that according to the case law in opposition proceedings the burden of proof lies with the opponent to demonstrate that the requirements of Article 83 EPC are not met. The opposition division instead put the burden of proof on the patent proprietor and based its decision on this, so that the decision of the opposition division is wrong.

1.2 The Board agrees with the appellant.

It is established jurisprudence of the Boards of Appeal that an objection of lack of sufficient disclosure presupposes that there are serious doubts substantiated by verifiable facts. The burden of proof is upon the opponent to establish, on the balance of probabilities that a skilled reader of the patent, using his common general knowledge, would be unable to carry out the invention (see the Case Law of the Boards of Appeal, 8**(th) Edition, 2016, II.C.8).

T 1889/15 - Suffiency of disclosure; burden of proof

Key points

• This is an opposition appeal about insufficiency of disclosure. Claim 1 is for a polymerization process "to produce a polyethylene copolymer having [] an ESCR Index of 1.4 or more". 
• " The findings of the [impugned] decision in respect of lack of sufficiency of disclosure relied solely on the results of examples 17 and 20 [which do not give a polymer with the required ESCR index value] and on the above-noted limited comparability of the examples ["due to multiple variations of reaction parameters, it is not possible on the basis of the examples to isolate the effect of any individual reaction parameter on the properties of the resulting product"]" . The OD concluded, "that the information in paragraph [0017] [of the patent] represented little more than an outline for a research programme." 
• The Board notes that "However, the burden for proving lack of sufficiency rests with the opponent". "[In] T 63/06 the board explained that following grant of a patent there is a presumption of validity. The weight of submissions required to rebut this presumption depends on its strength." There are two cases.
• The first case is that of "strong presumption", "which exists in the situation where the patent contained detailed information on how to put the invention into practice including test results relating to a particular property. In this case detailed information or evidence e.g. in the form of comparative tests was required to establish a lack of sufficiency"
• The second case is that of  "weak presumption", " in the case that the patent did not contain detailed information. In this case less substantial submissions were required - it was adequate to raise serious doubts e.g. by comprehensive and plausible arguments".
• In the case at hand, the patent has the strong presumption because " there are several examples indicating variations of the reaction conditions and a general discussion of how certain of the reaction parameters affect the outcome, in particular the single critical parameter (the ESCR index)". 
• " Thus, applying the above indicated approach there exists a strong presumption of validity in respect of sufficiency of disclosure in the present case, and a commensurately high standard of proof is required on the part of the respondent to demonstrate that this is not the case, e.g. in the form of comparative tests showing that following the teaching of the patent does not make it possible to obtain reliably the defined ESCR index" 
• The opponent had not discharged of its burden. The case is remitted for novelty and inventive step.
• There is also further issue of admissibility of an experimental report filed by Patentee. "It is therefore clear that all evidence was in the hands of the proprietor and that it was a deliberate choice not to provide it during opposition proceedings. In this respect it is not relevant that the opposition division changed their minds at the oral proceedings as the objection was clear as of the filing of the notice of opposition and the evidence was available." Hence, the report is not admitted. 

EPO T 1889/15 -  link

II. The patent was granted with a set of 24 claims, whereby claim 1 read as follows:

"A continuous fluidized-bed gas-phase polymerization process for making a high strength, high density polyethylene copolymer, comprising: contacting monomers that include ethylene and optionally at least one non-ethylene monomer with fluidized catalyst particles in a gas phase in the presence of hydrogen gas at an ethylene partial pressure of 689 kPa (100 psi) or more and a polymerization temperature of 120 °C or less, wherein oxygen is present in the range of from 10 to 600 ppbv based on the ethylene feed rate, to produce a polyethylene copolymer having a density of 0.945 g/cc or more and an ESCR Index (defined as the measured ESCR, based on ASTM D1693, condition B, using 10% Igepal CO-630 in water, divided by the product of 0.0481 and (Density)**(-142), wherein Density values are based on ASTM D1505) of 1.4 or more wherein the catalyst particles are prepared at an activation temperature of 700 °C or less, and wherein the catalyst particles consist essentially of silica, chromium, and titanium."

Reasons for the Decision

1. Admittance of the declaration and experimental report submitted with the statement of grounds of appeal

In the notice of opposition the opponent raised an objection of insufficiency of disclosure which was based on the observation that Examples 17 and 20 did not result in polymers having the required ESCR values. The submissions in respect of example 17 were as follows:

FORMULA/TABLE/GRAPHIC

This statement clearly drew attention to the apparent defect with example 17 and the lack of any indication in the patent as to the cause.

T 2119/14 - Unusual parameter; burden of proof

Key point

• In this opposition appeal, the Board considers a claim for a coating composition to be insufficiently disclosed due to an unusual parameter. The Board discusses the issue in great detail. I highlight two aspects, namely the general remarks about "the technical contribution"  and about the burden of proof.
• "sufficiency of disclosure may however still be acknowledged if a skilled person [] is able without undue burden, i.e. with reasonable effort, to identify and prepare within the alternatives covered by the broad structural definition of claim 1 those coating compositions that possess the claimed parametric requirement []. This reflects the general legal principle whereby the protection sought must correspond to the technical contribution made by the disclosed invention to the state of the art, which excludes the patent monopoly from being extended to subject-matter which, after reading the patent specification, would still not be at the disposal of the skilled person." 
• " As to the [patentee's] argument that it was up to the opponents to show that the preparation of the coating compositions in accordance with claim 1 amounted to an undue burden for the skilled person, the Board observes that each of the parties to the proceedings carries the burden of proof for the facts it alleges []. Who bears the burden of proof may be determined by the legal cases which the respective parties are trying to make. [] In the context of the opposition ground of sufficiency of disclosure, the weight of the submissions required to rebut the legal presumption that the patent meets that requirement of the EPC depends on its strength []. A strong presumption requires more substantial submissions than a weak one. " 
• The above remark seems entirely correct to me. The Board then applies it to the case at hand: "In the present case the existence of an undue burden results from the almost infinite number of coating compositions that fall under the structural definition given in claim 1, and the above established absence of a teaching in the patent in suit as to how select in an appropriate and straightforward manner the components of the coating composition so as to meet the unusual parametric requirement of claim 1. As a consequence, the onus of proof to demonstrate that the preparation of the coating compositions over the whole scope for which protection is sought does not necessitate an undue amount of work for the skilled person rested on the patent proprietor [].
• As a comment on how the Board applies the general rule to the case at hand, I think that in the present case, the opponent had firstly shown that the presumption of sufficiency of disclosure is weak (due to " almost infinite number of coating compositions that fall under the structural definition"), furthermore had met its burden of proof to rebut the presumption (by establishing the absence of a teaching in the patent in suit as to how select in an appropriate and straightforward manner the components of the coating composition), and that it is hence up to the patentee to file counter-evidence (e.g. that the lacking information is common general knowledge). 

EPO  T 2119/14 - link

"1. Coating composition for the manufacture of a car wash-resistant coating comprising
at least one hydroxyl-functional binder selected from the group of hydroxyl-functional acrylic binders and hydroxyl-functional polyester binders and one or more cross-linkers reactive with the reactive groups of the binder,
wherein the binder and cross-linkers are selected such that, after curing to a coating, the coating has an initial gloss of at least 81 GU and a loss of gloss (LoG) of less than 0.18, the loss of gloss being determined by the formula (I)

LoG = A + B.E'.(X)**(-1).10**((C.DeltaTg))+ D.(E')**(-0,5) (I)

wherein A = 0.0132, B = 1.0197, C = 0.0113, and D = 0.0566,
E' reflects the tensile storage modulus at 40°C in GPa,
DeltaTg the width of the glass transition temperature in °C, and
X the cross-link density parameter in kPa/K, [...]
and wherein, in case the at least one hydroxyl-functional binder is an acrylic binder, the acrylic binder comprises (1) [...]."

Reasons for the Decision

Main request

1. The objection that the invention lacks sufficiency of disclosure is directed against claim 1 defining a composition for the manufacture of a coating, which composition is characterized in terms of both structural features setting out the constituents of said composition and parametric features defining the coating obtained after curing said composition.

2.2 The appellant [patentee]  argued that in line with paragraph [0011] of the specification, it is the inventors' accomplishment to identify those parameters, in particular the tensile storage modulus E' at 40°C, the width of the glass transition temperature DeltaTg, and the cross-link density X, that uniquely and precisely determine and define the loss of gloss in car washing conditions and their mutual relation as expressed in mathematical formula (I) defining the parameter LoG. According to paragraph [0011] the calculated LoG value accurately describes the observed loss of gloss as a result of a car wash treatment.

2.3 Whether the calculated LoG value as defined in claim 1 accurately describes the observed loss of gloss as a result of a car wash treatment is not relevant for assessing sufficiency of disclosure, as the observed loss of gloss is not a feature defining the subject-matter of claim 1. It is referred to decision G 1/03 of the Enlarged Board of Appeal (OJ 2004, 413) in which it was pointed out concerning non-working embodiments (point 2.5.2, third paragraph of the reasons), that if "there is lack of reproducibility of the claimed invention, this may become relevant under the requirements of inventive step or sufficiency of disclosure. If an effect is expressed in a claim, there is lack of sufficient disclosure. Otherwise, i.e. if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step (T 939/92, OJ EPO 1996, 309)". Accordingly, the observed loss of gloss as a result of a car wash treatment would be rather to be taken into account for assessing the presence of an inventive step, i.e. for determining the problem successfully solved over the closest prior art by the claimed coating compositions defined among others by the inequality LoG < 0,18.

2.4 It is undisputed that all coating compositions defined by the structural features of present claim 1 do not necessarily meet the additional parametric requirements defined in that claim. In accordance with the established jurisprudence of the Boards of Appeal of the EPO, sufficiency of disclosure may however still be acknowledged if a skilled person, on the basis of the information provided in the patent specification and, if necessary, using common general knowledge, is able without undue burden, i.e. with reasonable effort, to identify and prepare within the alternatives covered by the broad structural definition of claim 1 those coating compositions that possess the claimed parametric requirement (Case Law of the Boards of Appeal, 8**(th) Edition, 2016, II.C, introduction and II.C.4.4, in particular decision T 435/91, OJ EPO 1995, 188, Reasons 2.2.1).

This reflects the general legal principle whereby the protection sought must correspond to the technical contribution made by the disclosed invention to the state of the art, which excludes the patent monopoly from being extended to subject-matter which, after reading the patent specification, would still not be at the disposal of the skilled person.

2.5 Accordingly, the question to be answered in relation to sufficiency of disclosure is rather the ability for the skilled person to prepare the coating compositions which fulfil the structural requirements of claim 1 and exhibit a tensile storage modulus E' at 40°C, a width of the glass transition temperature DeltaTg, and a cross-link density X so that the relationship LoG < 0,18 defined in claim 1 is also met.

Assessment of sufficiency of disclosure

Information provided in the specification

3. The teaching provided by the patent specification in relation to the achievement of the parametric definition of claim 1 is as far as hydroxyl-functional polyester binders analysed in the following sections.

[...]

Undue burden

9. The appellant's argument that the skilled person would need only a few experiments to arrive at coating compositions meeting the requirement set out in claim 1 is in the absence of any substantiated facts and corroborating evidence showing that this would be generally the case over the whole scope intended a mere speculation which cannot convince the Board. It lacks credibility as the need for only a few experiments, for example as to transform occasional failure into success, requires the existence of a known methodology which would first guide the skilled person toward coating compositions meeting the parametric requirements of claim 1. This methodology, however, does not emerge from the patent in suit, as indicated above.

9.1 In the absence of indication of suitable common general knowledge which would allow the skilled person to fill the gap between the teaching of the patent and in suit and that which would be needed to prepare coating compositions over the whole scope for which protection is sought, the skilled person is left for a large part of those coating compositions at best to develop such missing methodology or to find out by trial and error which coating compositions from the innumerable compositions corresponding to the broad structural teaching of the patent in suit meet the parametric conditions set out in claim 1. This amount in both situations to an undue burden for the skilled person.

9.2 As to the appellant's argument that it was up to the opponents to show that the preparation of the coating compositions in accordance with claim 1 amounted to an undue burden for the skilled person, the Board observes that each of the parties to the proceedings carries the burden of proof for the facts it alleges (Case Law, supra, III.G.5.1 and III.G.5.2). Who bears the burden of proof may be determined by the legal cases which the respective parties are trying to make. Whether it is discharged or not is assessed by the board based on all the relevant evidence put before it, including the teaching or lack of teaching in the patent in suit in relation to the choice of suitable components and their relative proportions for preparing coating compositions meeting the parametric requirements of claim 1. In the context of the opposition ground of sufficiency of disclosure, the weight of the submissions required to rebut the legal presumption that the patent meets that requirement of the EPC depends on its strength (T 0063/06 of 24 June 2008, point 3.3.1 of the reasons). A strong presumption requires more substantial submissions than a weak one. In the present case the existence of an undue burden results from the almost infinite number of coating compositions that fall under the structural definition given in claim 1, and the above established absence of a teaching in the patent in suit as to how select in an appropriate and straightforward manner the components of the coating composition so as to meet the unusual parametric requirement of claim 1. As a consequence, the onus of proof to demonstrate that the preparation of the coating compositions over the whole scope for which protection is sought does not necessitate an undue amount of work for the skilled person rested on the patent proprietor (here appellant).

10. Accordingly, the subject-matter of claim 1 lacks sufficiency of disclosure and the ground of opposition under Article 100(b) EPC prejudices the maintenance of the patent as granted. Therefore, the Appellant's main request is to be refused.

T 1596/14 - Different notification dates

Key points

• In this opposition appeal, the Board gives the following comments obiter "Appellant I (patent proprietor) objected to the fact that the decision of the opposition division was sent to them with a date of 9 July 2014 and resent only to appellant II (opponent) at the later date of 22 July 2014. This situation arose because the opponent had changed address without the EPO being aware of this, so that the decision could not be delivered on the first attempt."
• " Thus, it appears that appellant II had nine days more than appellant I to file their grounds (and theoreti­cally eighteen days more with regard to the calculation of the time limit)." 
• " Nevertheless, appellant I did not provide evidence that this situation was detrimental to their position as ap­pel­lant. It is correct that in the present case appel­lant II knew appellant I's argumentation before filing their own statement of grounds" 
• " But there is no general rule that in each and every ap­peal proceedings the parties file their statement of grounds in the last minute of the last day of the time limit. In fact, the situation would have been the same if appellant I had filed their statement of grounds, for example, nine days before the expiration of the time limit, e.g. 10 November 2014 and appellant II then only filed their statement on the last day of the "first" time limit, i.e. 19 November 2014." 
• " There is no specific sanction or remedy foreseen in the EPC for this situation and it seems difficult to as­sume that appellant I's suggestion to re-send the decision with a new common notification date would be a remedy, since the parties are by now already aware of each other's arguments."  (I think the Board uses "now" to refer to the date of the appeal decision. Back in 2014, resending the written decision to both parties would have been an eminently sensible thing to do).
• " Appellant I further questioned form 23XX of 22 July 2014 in Epoline which suggests that the outcome of the opposi­tion proceedings was also notified to the patent proprietor on 22 July 2014 even though this was never received by appellant I: Form 23XX in an internal form with the addresses of the parties to the opposition proceedings and is presumably generated automatically by the computer systems in consequence of the second attempt to notify the opponent of the outcome of the opposi­tion procee­dings, once the valid address of the opponent had beco­me available." (I think that this means that actually in 2014, the formalities officer should have resent the decision to both parties as Form 23XX instructs).
• Furthermore, a request for apportionment of costs: " Appellant II objected to appellant I's fifteen requests filed with the grounds of appeal which were subse­quently reduced to only three requests one month before the oral proceedings before the board of appeal. [...] When taking into account the events during the opposi­tion procedure (see point 2.3 above), the board does not consider such requests to be excessive or that they constitute an abuse of procedure. In consequence, the request for the apportionment of costs for preparing a response to the fifteen requests filed with the grounds of appeal is refused. 

EPO T 1596/14 -  link

Appellant I is the patentee, Appellant II is the opponent.

Reasons for the Decision

1. Admissibility of the appeal of the patent proprietor

The opposition division's finding of lack of inventive step of claim 1 as granted starting from document D16 assumed that the feature ("in such a way that the force required for the securing of the insert pipe (21) in the second position is absorbed by the outer surface (4) of the pipe (1, 1*)") of claim 1 as granted was disclosed in document D16. Should this not be the case, then the opposition division's decision in this respect cannot stand as it is, because it necessarily does not take into account the new arguments con­cer­ning the above feature advanced by appellant I on appeal.

T 1402/14 - A source of protein

Key points

• After two oral proceedings on added subject-matter, this opposition appeal (filed in 2014) is remitted back for examination of novelty, inventive step and insufficiency of disclosure.
• The claim is directed to " A clear fruit-juice based beverage composition comprising:
(a) a source of protein ... , (b) a source of carbohydrate ... (c) a source of edible acids... (d) a source of fruit juices".
• The Board: " In summary, the "source of" language does not have any delimiting or explanatory meaning. Claim 1 has to be interpreted as simply referring to the four components - protein, carbohydrate, edible acids and fruit juices - present in the beverage composition in the indicated amounts." (this was also argued by the patentee  in appeal, under Article 123(2) EPC). 
• " It might be worth mentioning at this juncture that this was the respondent's (then opponent's) initial interpretation of the "source of" language in its notice of opposition, according to which the words "a source of" have to be disregarded." (I assume for novelty and inventive step).
• Claim 1 is given in full below for the interested reader. The technical feature appears to be essentially that the protein source is whey protein isolate. 

Claim 1 as granted reads as follows:

"1. A clear fruit-juice based beverage composition comprising:
(a) a source of protein in an amount from 2 to 8 wt% of the composition, wherein the protein source is whey protein isolate or a combination of whey protein isolate and whey protein hydrolysate, and wherein the whey protein hydrolysate comprises up to 20 wt% of the combination;
(b) a source of carbohydrate in an amount from 1 to 30 wt% of the composition;
(c) a source of edible acids in an amount from 0.01 to 3 wt% of the composition;
(d) a source of fruit juices in an amount from 5 to 40 wt% of the composition."

The subject-matter of claim 1 of auxiliary request 1, the only auxiliary request relevant to this decision, derives from the subject-matter of claim 1 as granted with the following features added at the end:

"wherein the composition has a pH of 4.0 or less, and has a viscosity of less than 40 centipoises".

IX. Oral proceedings were held before the board on 18 May 2018, as scheduled. During the discussion relating to the interpretation of the expressions "source of carbohydrate" and "source of edible acids", the respondent requested that the oral proceedings be adjourned in order to verify whether HFCS 42 and HFCS 55 cited within a list of carbohydrates in the application as filed (page 3, lines 21-25) were indeed "carbohydrates" or "a source of carbohydrate" (a syrup of carbohydrates containing water).

At the end of the oral proceedings the board gave the following decisions:

• - the main request is found to be not allowable;
• - auxiliary request 1 is admitted to the proceedings;
• - the appeal proceedings are to be continued in writing; and
• - the respondent is given a time limit of three months from the notification of the minutes to file observations and/or evidence on the issue of HFCS, and in particular HFCS 42 and HFCS 55, containing water.

X. By letter of 10 September 2018, the respondent essentially reiterated its arguments, in particular that there was a difference between a "source of compound x" and "compound x (obtained from a source)".

XI. Second oral proceedings were held before the board on 6 December 2018.

 Reasons for the Decision

3. Interpretation of claim 1

3.1 Both claim 1 as granted and claim 1 of auxiliary request 1 refer to a source of protein, carbohydrate, edible acids and fruit juices in certain amounts. It was a matter of dispute as to how the "source of" language in relation to the amount of protein, carbohydrate, edible acids and fruit juices was to be interpreted:

- The appellant [proprietor] considered that the "source of" language related to the total amount of compound x, i.e. proteins, carbohydrates, edible acids and fruit juices, in the final beverage composition.

T 0516/14 - No interruption for opponent

Key points

• " The insolvency administrator of [German] opponent 1 submitted that with the opening of insolvency proceedings over the assets of opponent 1, the appeal proceedings had to be interrupted according to § 240 S1 ZPO, German law." 
• The Board points out that in proceedings before the EPO, the applicable law is the EPC. 
• " Rule 142(1)(b) EPC stipulates that proceedings before the EPO are to be interrupted "in the event of the applicant for or proprietor of a patent, as a result of some action taken against his property, being prevented by legal reasons from continuing the proceedings". "Neither this nor any other provision mentions an opponent in opposition proceedings." 
• " The application of Rule 142(1)(b) EPC to an opponent by analogy is not justified either. Generally, in opposition proceedings, the legal situation for an opponent is different from that of a patent proprietor. While for a patent proprietor the irremediable loss of its patent is at stake, the opponent, if unsuccessful, could still bring an action for revocation before national courts." 
• The Board points out that the insolvency administrator becomes, under German law, the party to the proceedings ex officio "as of 14 July 2016. This provided the administrator with enough time to become acquainted with the case and prepare for the oral proceedings scheduled on 25 January 2019" 

EPO T 0516/14 - link

Reasons for the Decision

1. The appeals are admissible.

2. The invention

The invention relates to a device for producing a three-dimensional tomographic mammography image, with the general objective of making possible an early detection of breast cancer.

The device is generally depicted in figure 2A, reproduced below.

FORMULA/TABLE/GRAPHIC

T 0099/14 - Pharmaceutical combination therapy

Key points

• The claimed invention is the combination of two compounds (timolol and bimatoprost) for treating ocular hypertension. Both active ingredients are known as monotherapy for ocular hypertension. Is combining them obvious? Combination therapy with timolol and latanoprost is also known. Starting from the known combination therapy, there is no technical effect.  "The technical problem has to be seen as the provision of an alternative fixed combination for the treatment of ocular hypertension." 
• " Bimatoprost has a molecular structure that is very similar to the structures of prostaglandins, especially to the structures of [...] latanoprost." 
• Still, the Board finds the replacement of latanoprost by bimatoprost inventive. This finding hinges essentially not on the cited prior art but on the fictional skilled person.
• " A skilled person would be, however, well aware that small differences in structure may lead to major differences in activity. This general knowledge is confirmed by the mechanistic considerations as set out in the following." 
• " [D7] discloses that bimatoprost has no affinity to prostaglandin receptors []). Consequently, it cannot act, like [] latanoprost, via binding to the prostaglandin receptor. [D7] thus provides evidence that at the effective date of the patent in suit, a skilled person would not have considered bimatoprost to be a functionally equivalent derivative of prostaglandins." 
• " The skilled person would thus have been well aware that mechanisms on a molecular basis were decisive when deciding on the combination of two hypotensive compounds." 
• " The provision of a fixed combination in the specific case of treating ocular hypertension is not per se trivial. The skilled person would be aware that careful considerations concerning the choice of the active agents have to be made to avoid effects that may be counterproductive in view of the condition to be treated. Consequently, the skilled person, in the specific case of the treating ocular hypertension, would not simply combine any active agent with any other active agent. When trying to provide an alternative fixed combination the skilled person would take particular care to replace one active only with another active known to act by exactly the same mechanism on a molecular basis." 
• "  Since there is evidence that [...] latanoprost act via different receptors than bimatoprost, the skilled person would not have replaced [...] latanoprost with bimatoprost when aiming at the provision of an alternative fixed combination." 
• Hence, the invention is according to the Board not obvious in view of the known combination therapy.
• As a comment, the Board takes care to emphasize " in the specific case of treating ocular hypertension" but the decision does not explain why ocular hypertension is special or different from other diseases. 
• There was a second attack starting from monotherapy with bimatoprost ."However, the closest prior art document discloses the use of bimatoprost essentially for mono-therapy and does not mention further specific hypotensive actives. Starting from such a disclosure involves an ex post facto analysis to rely on the teaching of documents referring to the second claimed active in combination with further actives, which are irrelevant in the context of the patent in suit.". This even despite "timolol [being] "the" hypotensive active used for reducing intraocular pressure and that timolol was well established in combination treatments", according to the opponents (and not refuted by patentee it seems).

EPO T 0099/14 - link

6. Inventive step (Article 100(a) and Article 56 EPC)

6.1 The patent in suit relates to the provision of a composition for treating ocular hypertension and providing enhanced benefits and/or having reduced side effects (paragraph [0001]). Compositions comprising timolol and bimatoprost allow for the same or better reduction of intraocular pressure while leading to a reduced number and/or reduced severity of side effects (paragraphs [0024] and [0026]).

6.2 Two separate lines of arguments have been put forward:

The first starting point for the assessment of inventive step relies on disclosures relating to fixed combinations of timolol and a prostaglandin derivative for the treatment of elevated intraocular pressure. Documents (4) and (24) have been identified as the closest prior art documents.

T 1691/13 - Disapproving text and minutes

Key points

• This is just a straightforward case where the patentee essentially requests revocation of the patent during the oral proceedings before the Board, in opposition, after the Board has announced its conclusions on the claim requests. The decision as such does not indicate any of the substantive findings of the Board.
• However, it seems useful to point out that the Board issues the minutes, that these are in the public file, and that they include the statement that "the Board was of the opinion that the subject-matter of claim 1 as granted did not involve an inventive step" as well as the statement that " the board was of the opinion that the subject-matter of claim 1 of auxiliary request 1 did not meet the requirements of Article 123(2) EPC"  

EPO T 1691/13 - link

Summary of Facts and Submissions

I. Appeal was lodged by the patent proprietor (appellant) against the decision of the opposition division to revoke the European patent No. 1877553 under Article 101(2) EPC. With the statement of grounds of appeal, the appellant requested that the patent be maintained as granted (main request), or alternatively, that the patent be maintained in amended form according to auxiliary request 1, filed with the grounds of appeal.

II. With its letter of reply to the statement of grounds of appeal, the opponent (respondent) requested that the appeal be dismissed.

III. Summons to oral proceedings before the board were issued, followed by a communication providing the board's preliminary opinion on some issues.

IV. With subsequent letter, the appellant inter alia submitted auxiliary request 2.

V. During oral proceedings, the appellant stated that it withdrew the consent to the text of the patent as granted and that it withdrew auxiliary requests 1 and 2. At the end of the oral proceedings the chairman announced the decision of the board.

Reasons for the Decision

1. Under Article 113(2) EPC the European Patent Office must consider and decide upon the European patent only in the text submitted to it, or agreed, by the patent proprietor. This principle is part of the common provisions governing the procedure and is therefore to be observed also in opposition appeal proceedings.

T 0987/16 - Remittal; 49 requests

Key points

• In this opposition appeal, the Board concludes that claim 1 as granted is not inventive. The Board then turns to the auxiliary requests.
• "The considerably high number of auxiliary requests (49 in total) filed by the Patentee (most of these were already filed during opposition proceedings) is not compatible with general legal principles of the appeal proceedings." 
• After this observation, I expected to Board to refuse to admit the requests (probably on the ground of lack of convergence). However, the Board remits the case.
• " In the present case the high number of auxiliary requests is tantamount to seeking protection for a subject-matter which is to be defined by tentatively selecting a multitude of combinations of different features to be introduced into claim 1, without a convergence criterion or a common concept being apparently recognizable. Discussing each of these requests and deciding on it would therefore amount to a renewed examination of the application [sic! ] by the first instance department. However, this is not the intended purpose of the appeal proceedings. Consequently, the Board decided to remit the case to the department of first instance".
• In my view, the "consequently" is not persuasive. Usually, in case of a patentee filing auxiliary requests in a way that goes against the purpose of appeal proceedings, the requests are not admitted.
• A question for the readers: should the OD assess admissibility after the remittal by applying Article 12(4) RPBA as the Board would (could) have done, or are all requests now admissible as being filed before the Rule 116 EPC date that will be set for the further oral proceedings to be held before the OD after remittal?

EPO T 0987/16 - link

5. The considerably high number of auxiliary requests (49 in total) filed by the Patentee (most of these were already filed during opposition proceedings) is not compatible with general legal principles of the appeal proceedings. Appeal proceedings are by their very nature a judicial procedure, which is less investigative than opposition proceedings before the department of first instance (see decision of the Enlarged Board of Appeal G 9/91). In the present case the high number of auxiliary requests is tantamount to seeking protection for a subject-matter which is to be defined by tentatively selecting a multitude of combinations of different features to be introduced into claim 1, without a convergence criterion or a common concept being apparently recognizable. Discussing each of these requests and deciding on it would therefore amount to a renewed examination of the application by the first instance department. However, this is not the intended purpose of the appeal proceedings. Consequently, the Board decided to remit the case to the department of first instance (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 department of first instance for further prosecution.