T 1218/14 - No accidental anticipation

Key points

• In this opposition appeal, the Board does not allow a disclaimer with the purpose of providing novelty over D1. The proprietor had submitted that D1 is an accidental anticipation in the sense of Art. 55 EPC. The Board does not agree.
• Claim 1 is directed to a process for preparing a beverage additive comprising a step of removal of "modified prolamin". The Board: "D1 concerns a method for the separation of gluten and starch from wheat flour using a transglutaminase enzyme (D1, claim 1). It is true, as submitted by the appellant, that the main focus of D1 is the separation of gluten (prolamins) from wheat flour. ... However D1 also discusses the starch fraction obtained from the separation" and D1 also teaches the use of the starch for making glucose syrup, which is a beverage additive.
• "Consequently, D1 deals in a side aspect with the production of a beverage additive. It therefore does not fulfill the criterion in G 1/16 and G 1/03 that it must be so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making or working on the invention." 
• The Board turns to inventive step of an auxiliary request. The attack is based on D2 in combination with D1. The Board rejects this attack because D1 teaches the feature " would have had to remove the gluten from said starting material, something taught in D1 in the context of flour production only".
• The Board then notes that " The above finding that in view of D1 as a secondary document, the claimed subject-matter is inventive may at first sight appear to be in contradiction with the finding that D1 is not an accidental anticipation".
• The Board explains that " the requirement in G 1/03 that an accidental novelty-destroying disclosure has to be completely irrelevant for assessing inventive step is to be understood not as an alternative, or additional criterion, but as a consequence of the criterion that, from a technical point of view, said disclosure is so unrelated and remote that the person skilled in the art would never have taken it into consideration when making or working on the invention. Consequently, if this criterion is met, it follows that said disclosure is completely irrelevant for assessing inventive step. However, not meeting said criterion does not necessarily imply the opposite, namely that the disclosure in question will contribute to a finding that inventive step is lacking." 

EPO Headnote
The requirement in G 1/03 that an accidental novelty-destroying disclosure has to be completely irrelevant for assessing inventive step is to be understood not as an alternative, or additional criterion, but as a consequence of the criterion that, from a technical point of view, said disclosure is so unrelated and remote that the person skilled in the art would never have taken it into consideration when making or working on the invention (points 2 and 7).

EPO T 1218/14 - link

VII. Independent claim 1 of the main request (the claims as granted) reads as follows:

"1. A process for the preparation of a beverage, a beverage base, a beverage concentrate or a beverage additive having a reduced prolamin content from prolamin-containing raw materials, comprising the following steps:
(a) contacting the beverage or a precursor of the beverage with cross-linking enzymes to obtain modified prolamin;
(b) removing the modified prolamin at least partially."

Claim 1 of auxiliary request I corresponds to claim 1 of the main request with the following additional text:

"with the proviso of excluding a method for the separation of wheat flour into one gluten fraction and at least one other fraction, comprising the steps of: a) mixing the flour and a liquid and a transglutaminase enzyme obtaining a dough, b) separating the dough into a fraction comprising gluten and at least one other fraction, c) recovering at least the gluten fraction."

Auxiliary request I

2. Allowability of the disclaimer, Article 123(2) EPC

2.1 Claim 1 of auxiliary request 1 contains the following disclaimer:

"with the proviso of excluding a method for the separation of wheat flour into one gluten fraction and at least one other fraction, comprising the steps of: a) mixing the flour and a liquid and a transglutaminase enzyme obtaining a dough, b) separating the dough into a fraction comprising gluten and at least one other fraction, c) recovering at least the gluten fraction."

This disclaimer is an undisclosed disclaimer by way of which the appellant attempted to exclude the relevant disclosure of D1 from the scope of claim 1 in order to establish novelty over this document.

2.2 According to G 1/16, order, first paragraph:

"For the purpose of considering whether a claim amended by the introduction of an undisclosed disclaimer is allowable under Article 123(2) EPC, the disclaimer must fulfill one of the criteria set out in point 2.1 of the order of decision G 1/03."

2.2.1 One of those criteria concerns the situation in which an undisclosed disclaimer is introduced in order to restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC (G 1/16: point 45; G 1/03: order, point 2.1, second indent, Reason point 2.2 and sub-points).

2.2.2 G 1/16 (reasons, point 45) states explicitly that the relevant test for assessing whether an anticipation is accidental is "if it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention".

Apart from this specific statement, G 1/16 also refers to the reasons of G 1/03, point 2.2 and sub-points, which provide a more detailed explanation of the circumstances under which an anticipation may be considered accidental.

2.2.3 According to G 1/03 (reasons, point 2.2.2):

"Different definitions of accidental anticipation have been put forward ... [several decisions including the referring decision are cited]. These say in similar terms that a disclosure is accidentally novelty-destroying, if it was disregarded by the skilled person faced with the problem underlying the application, either because it belonged to a remote technical field or because its subject-matter suggested it would not help to solve the problem. Thus, according to these decisions, the disclosure has to be completely irrelevant for assessing inventive step. The individual elements of these and other attempts to find an adequate definition cannot be taken in isolation. The fact that the technical field is remote or non-related may be important but is not decisive because there are situations in which the skilled person would also consult documents in a remote field. ... What counts is that from a technical point of view, the disclosure in question must be so unrelated and remote that the person skilled in the art would never have taken it into consideration when working on the invention (In this direction see T 608/96, supra, Reasons, point 6, cited in the referring decision T 507/99, Reasons, point 7.3.1). This should be ascertained without looking at the available further state of the art because a related document does not become an accidental anticipation merely because there are other disclosures which are even more closely related. In particular, the fact that a document is not considered to be the closest prior art is not sufficient to accept an accidental anticipation ... ." (emphasis added by the board)

2.2.4 In a subsequent paragraph of the the same discussion in G 1/03 (reasons 2.2.2), the Enlarged board states:

"It is true that the European patent system must be consistent and the concept of disclosure must be the same for the purposes of Articles 54, 87 and 123 EPC. However, this does not prejudice the question of what is to be considered as technical information disclosing the invention. In the case of an accidental anticipation, its definition (see above) makes clear that it has nothing to do with the teaching of the claimed invention, since it cannot be relevant for examining inventive step. Therefore, a mere disclaimer excluding the subject-matter of an accidental anticipation may be assumed not to change the technical information in the application as filed and, for this reason, also not to change the subject-matter of the application as filed, within the meaning of Article 123(2) EPC." (emphasis added by the board)

2.2.5 It follows from both G 1/16 and G 1/03 that an anticipation is accidental if from a technical point of view it is so unrelated and remote that the person skilled in the art would never have taken it into consideration when making or working on the invention. In addition to the explicit wording contained in G 1/16, G 1/03 requires that the accidental disclosure should be completely irrelevant for assessing inventive step.

2.3 In the present case, it needs to be assessed whether taking G 1/16 and G 1/03 into account, D1 qualifies as an accidental anticipation.

2.3.1 D1 concerns a method for the separation of gluten and starch from wheat flour using a transglutaminase enzyme (D1, claim 1). It is true, as submitted by the appellant, that the main focus of D1 is the separation of gluten (prolamins) from wheat flour with a view to adding it subsequently to flour of poor quality to improve the baking properties thereof (D1, page 1, lines 3-8 and 26-29; page 2, lines 2-7). The field of flours is entirely unrelated to the field relevant to the claimed invention, i.e. beverages, beverage bases, beverage concentrates and beverage additives.

However D1 also discusses the starch fraction obtained from the separation, and the uses thereof (page 5, line 31 - page 6, line 9). In particular, it is stated that "[t]here are a vast number of areas in which starches may be applied, such as glucose syrup production and in sweetening production in general" (page 6, lines 10-12; emphasis added by the board). Furthermore, example 2, as discussed above, is an embodiment of the process of D1 according to which in addition to a gluten fraction, a starch sediment is obtained, liquefied, saccharified and made into syrup. As established above, the resultant syrup is a glucose-rich syrup which the skilled person would consider as a suitable beverage additive.

2.3.2 Consequently D1 deals in a side aspect with the production of a beverage additive. It therefore does not fulfill the criterion in G 1/16 and G 1/03 that it must be so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making or working on the invention.

2.4 It follows that D1 cannot be regarded as an accidental anticipation and the disclaimer of claim 1 at issue does not meet the criteria set out for undisclosed disclaimers in G 1/16 (reasons, point 45) and G 1/03 (headnote, 2.1). Claim 1 thus fails to meet the requirements of Article 123(2) EPC.

[...]

6.3 Obviousness

6.3.1 The respondent argues that starting at D2 or D3, the skilled person would have turned to either of D1 or D6, thereby arriving at the solution provided by claim 1 at issue.

6.3.2 The board does not agree. In order to arrive at the claimed invention on the basis of D2 or D3 in combination with D1, the skilled person would have had to

- go against the teaching which is key to both D2 and D3, namely to use a gluten-free starting material and would have had to use the gluten-containing starting material of D1 instead,

- would have had to remove the gluten from said starting material, something taught in D1 in the context of flour production only, and

- would have had to use the gluten-free glucose syrup resulting therefrom and mentioned in D1 as a side aspect only, as a precursor in D2 and D3 for the production of beer.

This multiple sequence of steps is neither disclosed nor suggested in any of D1, D2 or D3 and if at all, would have been applied by the skilled person only when already knowing the claimed invention, i.e. with the benefit of hindsight. Therefore, the claimed invention is inventive in view of D2 or D3 in combination with D1.

[...]

7. The assessment of whether a disclosure represents an accidental anticipation according to G 1/16 and G 1/03

7.1 The above finding that in view of D1 as a secondary document, the claimed subject-matter is inventive may at first sight appear to be in contradiction with the finding that D1 is not an accidental anticipation (point 2.3.2 and 2.4, above). More specifically, the finding that the claimed subject-matter is inventive in view of D1 as a secondary document may lead to the conclusion that D1 is irrelevant to inventive step. This may in turn be interpreted such that the criterion in G 1/03 that an accidental anticipation should be completely irrelevant for assessing inventive step is met and that hence D1 is an accidental anticipation.

7.2 The board finds it appropriate to provide its reasons in this regard in more detail.

7.2.1 According to the passage of G 1/03 quoted above (point 2.2.3), inter alia the criterion that a disclosure has to be completely irrelevant for assessing inventive step should not be taken in isolation. Said passage then reads "[w]hat counts is that from a technical point of view, the disclosure in question must be so unrelated and remote that the person skilled in the art would never have taken it into consideration when working on the invention". This criterion is essentially identical to that explicitly cited in G 1/16 (an anticipation is accidental "if it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention"). Hence, this is the criterion that needs to be met for a disclosure to be considered an accidental anticipation.

7.2.2 In view of this, the requirement in G 1/03 that an accidental novelty-destroying disclosure has to be completely irrelevant for assessing inventive step is to be understood not as an alternative, or additional criterion, but as a consequence of the criterion that, from a technical point of view, said disclosure is so unrelated and remote that the person skilled in the art would never have taken it into consideration when making or working on the invention. Consequently, if this criterion is met, it follows that said disclosure is completely irrelevant for assessing inventive step. However, not meeting said criterion does not necessarily imply the opposite, namely that the disclosure in question will contribute to a finding that inventive step is lacking.

8. Article 84 EPC

8.1 The respondent objected under Article 84 EPC (in respect of claim 1 of the fifth auxiliary request found allowable by the opposition division) on the basis that it was not clear whether the plural term "enzymes" referred to one or more enzymes and secondly that the term "the beverage" in step a) of claim 1 lacked a proper antecedent. These terms are also present in claim 1 at issue. However, they are also present in claim 1 as granted. Pursuant to G 3/14, a clarity objection against granted claims is not possible in opposition appeal proceedings.

9. Sufficiency of disclosure, Article 100(b) EPC

9.1 The respondent objected to the broadness of the terms "cross-linking enzymes" and "beverage". Broadness as such is however not a valid basis for an objection of insufficiency of disclosure.

9.2 The respondent also alleged that the skilled person would be unable to choose a (mixture of) suitable enzymes for the claimed process. However, as already pointed out by the appellant in its letter dated 12 December 2014, the burden of proof lies with the respondent (opponent) to show that the method of the invention does not work. In fact, there is no reason to doubt that the skilled person in possession of the patent documents as a whole (in particular paragraphs [0012]-[0015],[0025] and [0026]) would be able to choose suitable enzymes for the claimed process.

9.3 Lastly, the respondent submitted that the use of the plural "enzymes" in claim 1 has the consequence that at least two distinct enzymes must be employed in the process. The board does not agree, since "enzymes" could conceivably be interpreted broadly as referring to either a single enzyme (a plurality of identical enzyme molecules, i.e. enzymes), or alternatively, more than one distinct enzyme. This interpretation is consistent with the description (paragraph [0025]) according to which suitable cross-linking enzymes are identified individually, or in combination. Irrespective of this, as set out above, the assertion that the skilled person is unable to identify a suitable enzyme or enzyme mixture is not supported by evidence and consequently must fail.

9.4 It follows that the invention defined in the claims is sufficiently disclosed.

10. Amendments, Articles 100(c) and 123(2) EPC

10.1 No objections have been raised by the respondent either in respect of the ground under Article 100 (c) EPC or, as regards amendments effected in the claims of auxiliary request IV, under Article 123(2) EPC. The board does not see any reason to raise objections in this regard. The claims at issue according to auxiliary request IV therefore meet the requirements of Articles 100(c) and 123(2) EPC.

11. The set of claims according to auxiliary request IV is consequently allowable.

T 0076/17 - Answering G1/18 (again)

Key points

• In this opposition appeal, the proprietor had filed "a request for re-establishment of the time limit pursuant to Article 108 EPC for filing an appeal. At the same time, the patent proprietor filed a notice of appeal and a statement setting out the grounds for appeal, and paid the appeal fee." The Board refuses the request for re-establishment for lack of due care.
• The Board then needs to decide whether or not to refund the appeal fee.
• " Hence, the time limit for filing a notice of appeal expired on 22 October 2016 (Article 108, third sentence EPC, Rule 131(4) EPC). No notice of appeal and no payment of the appeal fee were received within this time limit. As a consequence of the rejection of the request for re-establishment of rights under Article 122 EPC, the patent proprietor's failure to comply with the time limit for filing an appeal entails as a legal consequence that no appeal against the opposition division's decision posted on 12 August 2016 came into existence. The appeal filed on 24 November 2016 as part of the request under Article 122 EPC is, therefore, not deemed to have been filed. Consequently, the appeal fee is to be reimbursed." 
• I like this approach of treating the Notice of appeal as a part of the RE request. However, one may wonder if the appeal fee was not due as being part of the "completing of the omitted act" required for RE. I would need to check if it is established practice that fees paid as "completing the omitted act"  are refunded if RE is refused. In any case, a general practice that fees paid as part of "completing of the omitted act" are refunded if RE is refused (e.g. due to lack of due care) would be fair, in the sense that the RE fee itself is the fee for the RE request (and covers the EPO's cost in the appropriate share), the cost coverage of RE requests should not depend on the missing fee. In this case, there is no appeal procedure (or at least no processing of the substance of the appeal) so there is no reason why the EPO should keep the RE fee.

EPO T 0076/17 - link

Reasons for the Decision

1. The request for re-establishment of rights was filed, the prescribed fee paid, and the omitted act completed within the time limits set in Rule 136 EPC.

2. The duly summoned parties did not attend the oral proceedings, which, in accordance with Rule 115(2) EPC and Article 15(3) RPBA, took place in their absence.

T 2071/15 - Restoring pH is medical

Key points

• Claim 1 is directed to the use of a dental care product " for the purpose of restoring pH in the mouth, from a lower pH to neutral pH". The Board finds that this use excluded under Article 53(c).
• " The Board [] concludes that the activity carried out and/or the effect achieved in the course of the claimed use is the inhibition of growth of oral bacteria. [] It remains to be assessed whether this activity underlies a therapeutic effect in terms of the prevention or treatment of a disease." 
• "The product's capacity of preventing acid formation achieves the therapeutic effect of preventing [...] caries and tooth erosion. This capacity being the direct result of the product's activity of inhibiting the growth of oral bacteria [], it follows therefrom that this activity is inherently therapeutic, i.e. it underlies the therapeutic effect of preventing the aforementioned diseases."
• The Board concludes that " the use of claim 1 is based on the therapeutic mechanism of action of inhibition of growth of oral bacteria, and therefore constitutes a method of treatment of the human or animal body by therapy which is excluded from patentability under Article 53(c) EPC."

EPO T 2071/15 - link

2. Article 53(c) EPC - claim 1

2.1 Claim 1 is directed to the use of a dental care product comprising

(i) zinc ions in a certain amount, and
(ii) lactoperoxidase
for the purpose of restoring pH in the mouth, from a lower pH to neutral pH.

2.2 The opposition division held in point 4 of the reasons for its decision that claim 1 encompassed non-patentable subject-matter by virtue of Article 53(c) EPC in that it covered inter alia the prophylaxis of a medical condition such as caries. In this context the opposition division also observed that the cosmetic and pharmaceutical uses falling within the scope of this claim were inextricably linked by the underlying therapeutic mechanism of action of inhibition of oral bacteria.

T 0551/15 - Answering G1/18 (differently)

Key points

• The patentee filed only a debit order for the appeal fee (in the EPO Form 1038 accompanying letter). The question is firstly if this is a Notice of appeal (Board: no). The second question is what the sanction is (Board: deemed to not have been filed). The third question is if the appeal fee is to be refunded (Board: yes).
• "It clearly follows from the wording of Article 108, first and second sentences, EPC that filing notice of appeal and payment of the appeal fee are two distinct requirements, each of which has to be fulfilled separately"
• "Even though the board agrees with the patent proprietor in that the two acts - filing notice of appeal and paying the appeal fee - do not necessarily have to be performed via separate documents, the mere payment of the appeal fee still cannot replace the filing of notice of appeal."
• "The declaration of the intent to file an appeal must be clear and unambiguous (see also J 19/90[]".
• "The board accepts, in line with established case law, that the request under Rule 99(1)(c) EPC can be implicit. What may be implicit in this context, however, relates only to the indication of whether the impugned decision is to be set aside in whole or only in part [...]. It does not mean that a clear and unambiguous declaration of intent that an appeal is filed, constituting notice of appeal within the meaning of Article 108 EPC, is not required. "
• "In particular, the [EPO Form 1038] letter does not represent a clear and unambiguous declaration of intent that an appeal is being filed at the moment of its submission. Considered objectively from the point of view of the adverse party, the EPO and the public, the sending of a debit order for the payment of the appeal fee implies, at most, that the party envisages filing an appeal. It still leaves the party the choice of whether, or at what point in time, to file notice of appeal as the necessary second act for an appeal to come into existence."
• "When making its decision, the board was well aware of a point of law referred to the Enlarged Board of Appeal and pending as referral G 1/18. [...]" However, there was also the appeal of the opponent, so no ground for staying the proceedings. The Board also decides to refund the appeal fee, hence in favor of patentee. Therefore there is no need to stay the proceedings.
• About the refund of the appeal fee: "The board bases its conclusion, which is that the patent proprietor's appeal should be deemed not to have been filed, on Article 108, first and second sentences, EPC read together [...]. Only notice of appeal filed on time can trigger the falling due of the appeal fee pursuant to Article 4(1) RFees, payment of which in turn leads to the consequence that the notice of appeal is deemed filed."
• "Accordingly, for an appeal to come into existence, in the board's opinion the two acts - filing notice of appeal and payment of the appeal fee - must take place within the two-month time limit under Article 108 EPC. If, as in the present case, the notice of appeal is filed after expiry of the two-month time limit, it cannot be deemed to have been filed because the appeal fee, even if paid within the two-month time limit, has not in fact fallen due in the absence of notice of appeal being filed on time. Thus, the appeal fee has been paid without a legal basis."
• The Boards reasoning that only the filing of a notice of appeal "can trigger the falling due of the appeal fee pursuant to Article 4(1) RFees", such that the appeal fee is to be refunded, makes sense to me.

EPO T 0551/15 - link

Reasons for the Decision

1. The opponent's appeal complies with Articles 106 to 108 and Rule 99 EPC and is therefore admissible.

2. Patent proprietor's appeal

No appeal was validly filed by the patent proprietor. The appeal fee was duly paid, but nothing had been received within the two-month time limit under Article 108, first sentence, EPC which could be considered a notice of appeal.

2.1 Mere payment of the appeal fee within the two-month time limit under Article 108, first sentence, EPC does not constitute the valid filing of an appeal.

According to Article 108, first sentence, EPC, notice of appeal has to be filed within two months of notification of the decision. The second sentence of this provision stipulates that notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid.

T 2321/13 - Pathway associated disease unclear

Key points

• In this opposition appeal, claim 1 of the Main Request is amended by taking features from the description. These features are examined for clarity. Claim 1 is a second medical use claim for an anti HER3 antibody or use in the treatment of a hyperproliferative disease (e.g. cancer). The disease is further specified in the claim as being "MAP kinase pathway associated" The Board finds this feature (and also another feature taken from the description) to be unclear.
• The Board, on the principle: "Article 84, second sentence, EPC requires the claims to be clear, which serves the purpose of ensuring that the public is not left in any doubt as to the subject-matter covered by a claim. From this principle of legal certainty, it follows that there is a lack of clarity if a claim does not allow this distinction to be made. [The Board finds] that the definition of the "forbidden area" of a claim should be considered in relation to Article 84 EPC, and not to Article 54 EPC or Article 56 EPC as suggested by the [patentee]."
•  " [T]he board notes that the [patentee] does not dispute that the MAP kinase pathway is one of many possible pathways which may cause a hyperproliferative disease. Therefore, in order to determine whether or not a hyperproliferative disease is such a disease as cited in the claim the skilled person needs to know or be taught under what circumstances the hyperproliferative disease is to be considered "associated" with the MAP kinase pathway or not. []"
• "  The board notes that the term "associated" itself provides no guidance in this respect. Also the specification of the patent does not provide any instructions regarding circumstances in which a particular hyperproliferative disease is to be considered "associated" with the MAP kinase pathway. " " a diagnostic assay which would allow a skilled person to discriminate hyperproliferative diseases that are "associated" with the MAP kinase pathway from those that are not is not disclosed in the patent either."
• Also the [patentee]'s further argument that the term "MAP kinase pathway associated hyperproliferative disease" has a clear meaning in that it indicates that "the therapy includes the inhibition of the MAP kinase pathway", fails in the opinion of the board as it amounts to an attempt to define the hyperproliferative diseases in terms of the means by which they can be treated, i.e. uses a circular definition.
• Hence, the feature is unclear.
• I believe the features of the kind at issue (pathway associated disease) are not uncommon in the medical field. Perhaps their clarity will be examined more in-depth in the future. 

EPO T 2321/13 -  link

Claim 1 of the main request reads as follows:

"1. Use of an inhibitor of HER3 kinase activity for the manufacture of a medicament for the diagnosis, prevention or treatment of a MAP kinase pathway associated hyperproliferative disease associated with HER3 kinase activity directly phosphorylating PYK2, wherein the inhibitor is an anti HER3 antibody or a fragment thereof, said anti HER3 antibody or a fragment thereof being capable of inhibiting HER3 kinase activity."

Reasons for the Decision

Clarity (Article 84 EPC) - claim 1

5. The claim has been amended vis-à-vis claim 1 as granted and it is not disputed that the features "a MAP kinase pathway associated" and "kinase activity directly phosphorylating PYK2" derive from the description of the application as filed and may thus be examined for compliance with the requirements of Article 84 EPC (see also decision G 3/14, OJ EPO 2015, 102, Reasons, point 87).

6. Article 84, second sentence, EPC requires the claims to be clear, which serves the purpose of ensuring that the public is not left in any doubt as to the subject-matter covered by a claim. From this principle of legal certainty, it follows that there is a lack of clarity if a claim does not allow this distinction to be made. In this respect the board thus agrees with the finding of decision T 1811/13 of 8 November 2016 (see Reasons, point 5.1) that the definition of the "forbidden area" of a claim should be considered in relation to Article 84 EPC, and not to Article 54 EPC or Article 56 EPC as suggested by the appellant.

T 2972/18 - Answering G1/18 already

Key points

• The Notice of appeal (with debit order for the appeal fee) is filed a working day too late. The appellant files no response to the communication of the Registry of the Board pointing out this.
• The Board rejects the appeal as inadmissible.
• There is no order for a refund of the appeal fee. 

EPO T 2972/18 -  link

Summary of Facts and Submissions

I. The appeal is directed against the decision of the Examining Division of 20 September 2018, posted on the same day.

II. The appellant filed a notice of appeal on 3 December 2018 and paid the appeal fee on the same day.

III. By communication of 15 January 2019, received by the appellant, the Registry of the Board informed the appellant that it appeared from the file that the notice of appeal had not been filed in due time, and that it was therefore to be expected that the appeal would be rejected as inadmissible pursuant to Article 108, first sentence, EPC in conjunction with Rule 101(1) EPC. The appellant was informed that any observations had to be filed within two months of notification of the communication.

IV. No reply was received.

Reasons for the Decision

No observation was filed within the time limit provided by Article 108, first sentence, EPC in conjunction with Rule 126(2) EPC. Therefore, the appeal has to be rejected as inadmissible (Rule 101(1) EPC).

Order

For these reasons it is decided that:

The appeal is rejected as inadmissible.

J 0004/18 - Rule 6

Key points

• In this examination appeal, the applicants are a French and a Dutch natural person. They appeal against the decision to refuse the 30% refund of the appeal fee.
• According to the Examining Division, " Rule 6(7) EPC had to be read in relation to Rule 6(3) and (4) and Article 14(4) EPC. It resulted therefrom that in case of multiple applicants, all applicants must fulfil the requirements of Article 14(4) EPC in order to be entitled to a fee reduction. As one of the applicants had his residence in France, he did not fulfil those requirements." (This is already in the EPO FAQ about Rule 6 (here).
• The Board: "The question to be decided is whether paragraph 7 means that in case of multiple applicants all of them must -as in the present case- be natural persons (a) or that all must be natural persons and must additionally fulfil the requirements of Article 14(4) EPC (b)," 
• The argument of the Examining Division "is based on an erroneous interpretation of Rule 6(4)." 
• "The only thing Rule 6(4) does is to define certain categories of applicants for whom the reduction is available. It does not express any other limiting condition to the fee reduction entitlement as defined in Rule 6(3) EPC. A reference in Rule 6(7) EPC to Rule 6(4) EPC can therefore not refer to anything else then [sic!] the categories for whom the fee reduction is available. In other words, Rule 6(7) cannot by referring to Rule 6(4) EPC change the conditions for entitlement in Rule 6(3) EPC." 
• Clearly, in this case, the amount of the appeal fee is higher than the amount of the refund. The appellants had requested a refund of the appeal fee on the ground of a substantial procedural violation. However, the mistake of the Examining Division was a substantive one. "  It certainly did not fail to apply a clearly defined procedural rule under the EPC, as is required for establishing a procedural violation" 
• " the appeal fee is also not to be reimbursed on the ground that the appealed decision, as the Board has noted in its communication of 19 November 2018, does not state the names of and is not signed by the responsible employees." 
• The Board finds this a substantial procedural violation (agreeing with J16/17). "As the decision at hand was individually reasoned and was not created automatically by a computer, the exceptions under Rule 113(2) EPC do not apply. However the decision under appeal did not bear the names of the members of the examining division. At the end of the decision only the phrase "For the Examining Division" appears, followed by an anonymous EPO-stamp. The decision therefore does not bear the names of the employees that have taken the decision nor their signature and thus does not comply with the requirement of Rule 113(1) EPC. This omission must be classed as a substantial procedural violation, for the reasons cited above." 
• However, reimbursement on this ground would not be equitable, because the appeal was not caused by those formal errors.  "As a matter of fact the issue was not raised by the appellants in their appeal, but by the Board. There is no causal link between the refusal to refund part of the examination fee and the non-compliance with Rule 113(1) EPC." 
• In my view, it is a clear weakness of the EPC that in case the EPO makes a mistake about fees, the appeal fee can be higher than the possible refund. This makes that the EPO first instance practice about fee refunds is in effect outside the scope of review by the Boards. I wonder if the EPO FAQ would also have taken such a clear and applicant unfriendly position (without any clear legal basis) if the matter was not extremely unlikely to be appealed because any appeal would cost the applicant money even if the applicant was right and the EPO was wrong. I would also like to praise the representative of the applicants (Mr. Griebling) to bring the case in appeal; I guess as a matter of principle. 
• Perhaps the fact that Rule 103 EPC is not an exclusive basis for a refund of the appeal fee (see T0613/14) can be used to address this. 

EPO J 0004/18 - J4/18 -  link

T 0613/14 - Reimbursement of appeal fee beyond R.103

Key points

• This is an opposition appeal. " The appellant withdrew its appeal but maintained its request for reimbursement of the appeal fee." " The appellant no longer bases its request for reimbursement of the appeal fee on Rule 103 EPC. " 
• " The appellant is of the opinion that the appeal fee should be reimbursed on the ground that it had filed the appeal based on misleading information provided by the opposition division. The appellant thus invokes the principle of protection of legitimate expectations as a basis for reimbursement." 
• Requests for reimbursement of the appeal fee have exceptionally been allowed on the basis of the principle of protection of legitimate expectations in cases where Rule 103 EPC provided no basis for ordering reimbursement ([see J 30/94; J 38/97 T 308/05; T 1785/15]). Following this case law, the issue to be decided is whether the statement by the opposition division that the rejection of the appellant's request to correct the decision to revoke European patent EP 1 730 151 and the minutes of the oral proceedings before the opposition division on 19 September 2013 constituted a decision open to appeal and created a legitimate expectation that an appeal would be found admissible and examined as to its substance.
• Hence, Rule 103 is not the exclusive basis for a refund of the appeal fee.
• Turning to the facts of the case;' The initial appeal concerned two distinct procedural aspects, namely, the correction of the opposition division's decision posted on 8 November 2013 and the correction of the minutes of the oral proceedings of 19 September 2013, also posted on 8 November 2013." 
• "[Appellant's] professional representative should have realised that the refusal to correct the minutes of the oral proceedings of 19 September 2013 did not constitute a decision open to appeal" 
• " there is no established case law on the issue of whether or not the rejection of a request for correction of a decision under Rule 140 EPC is open to appeal." 
• " However, for the above reason, the board considers the opposition division's statement to have created a legitimate expectation that an appeal would be found admissible and examined as to its substance, at least in respect of the request for correction of the decision."
• Therefore, the refund of the appeal fee is allowed.

EPO T 0613/14 - link

Reasons for the Decision

1. Appeal procedures are terminated, as far as the substantive issues are concerned, when the sole appellant withdraws the appeal (G 8/91, OJ EPO 1993, 346). However, the boards of appeal, in the exercise of their inherent original jurisdiction, still have to decide on requests concerning procedural questions arising from the former proceedings (see e.g. T 41/82, OJ EPO 1982, 256, reasons, point 6; J 37/97 of 15 October 1998, reasons, point 2; T 308/05 of 27 February 2006, reasons, point 1).

2. The appellant withdrew its appeal but maintained its request for reimbursement of the appeal fee. In accordance with the above decisions, the procedural request for reimbursement has to be examined irrespective of the withdrawal of the appeal by the appellant.

3. The appellant no longer bases its request for reimbursement of the appeal fee on Rule 103 EPC. Indeed, reimbursement of the appeal fee according to that provision can only be ordered if the appeal is allowed. However, since the appellant withdrew its appeal, the proceedings have been terminated without decision on the substantive issues. Therefore, Rule 103 EPC provides no basis for ordering reimbursement.

Reimbursement can only be requested on a basis other than Rule 103 EPC. The appellant is of the opinion that the appeal fee should be reimbursed on the ground that it had filed the appeal based on misleading information provided by the opposition division. The appellant thus invokes the principle of protection of legitimate expectations as a basis for reimbursement.

4. Requests for reimbursement of the appeal fee have exceptionally been allowed on the basis of the principle of protection of legitimate expectations in cases where Rule 103 EPC provided no basis for ordering reimbursement (see J 30/94 of 9 October 1995, reasons, point 3.3; J 38/97 of 22 June 1999, reasons, points 5.2 and 5.3; T 308/05 of 27 February 2006, reasons, points 5 and 6; T 1785/15 of 9 May 2016, reasons, points 2.2 to 2.4). Following this case law, the issue to be decided is whether the statement by the opposition division that the rejection of the appellant's request to correct the decision to revoke European patent EP 1 730 151 and the minutes of the oral proceedings before the opposition division on 19 September 2013 constituted a decision open to appeal and created a legitimate expectation that an appeal would be found admissible and examined as to its substance.

5. The initial appeal concerned two distinct procedural aspects, namely, the correction of the opposition division's decision posted on 8 November 2013 and the correction of the minutes of the oral proceedings of 19 September 2013, also posted on 8 November 2013.

6. Correction of the minutes posted on 8 November 2013

6.1 It is constant case law that the minutes of the oral proceedings are neither a decision nor part of the decision announced at the oral proceedings (T 838/92 of 10 January 1995, reasons, point 3; T 231/99 of 31 August 1999, reasons, points 1.1 and 1.2; T 212/97 of 8 June 1999, reasons, point 2.2; T 68/02 of 24 June 2006, reasons, point 6.2). Likewise, a correction of the minutes by the competent department before which oral proceedings had been held is not considered a decision within the meaning of Article 106(1) EPC (see T 231/99 of 31 August 1999, reasons, points 1.3 to 1.5). The question of whether the rejection of a request for correction was a decision was left undecided in case T 231/99 of 31 August 1999 (see reasons, point 3), but there is no apparent reason why such a rejection should become the subject of an appeal if the minutes as such are not a decision open to appeal.

6.2 Given that professional representatives must be expected to be acquainted with the above case law, the appellant who was represented by a professional representative should have realised that the refusal to correct the minutes of the oral proceedings of 19 September 2013 did not constitute a decision open to appeal. Therefore, the appellant could not have legitimately relied on the erroneous statement by the opposition division as regards the appeal against the rejection by the opposition division of the appellant's request to correct the minutes.

7. Correction of the decision posted on 8 November 2013

7.1 As regards the appeal against the rejection by the opposition division of the appellant's request of 3 December 2013 to correct the opposition division's decision posted on 8 November 2013, the board is aware of decisions which consider that a rejection of such a request can, in principle, be contested by means of an appeal (see T 1063/02 of 16 June 2004, reasons, point 1, referring to G 8/95, OJ EPO 1996, 481 [which is superseded by decision G 1/10, OJ EPO 2012, 376]; J 17/04 of 9 April 2005, reasons, point 1, referring to J 12/85, OJ EPO 1986, 155).

7.2 In contrast to a request for correction of the minutes or the decision to grant (an issue considered by the Enlarged Board of appeal in decision G 1/10, OJ EPO 2012, 376), there is no established case law on the issue of whether or not the rejection of a request for correction of a decision under Rule 140 EPC is open to appeal. It cannot, therefore, be ruled out, and is even likely, that the appellant relied on the opposition division's statement when filing the appeal.

7.3 The appeal having been withdrawn, the board does not need to decide on whether, and if so, to what extent, the refusal of a request for correction of a decision under Rule 140 EPC can become the subject of an admissible appeal. However, for the above reason, the board considers the opposition division's statement to have created a legitimate expectation that an appeal would be found admissible and examined as to its substance, at least in respect of the request for correction of the decision.

However, in its preliminary opinion, the board took the position that the appeal against the opposition division's refusal of the request to correct its decision was not admissible. The board thus deprived the appellant of its legitimate expectations. After the board had maintained its preliminary opinion during the oral proceedings, the appellant withdrew its appeal. Under these circumstances, the board considers it justified to order the reimbursement of the appeal fee in accordance with the case law cited above (point 4).

Order

For these reasons it is decided that:

The request for reimbursement of the appeal fee is allowed.

T 1038/14 - Not deciding on attack

Key points

• In this opposition appeal, the OD had forgotten to decide on an attack, where a decision was required. This is a substantial procedural violation.
• " The [opponents] objection to claim 4 [of insufficient disclosure] is acknowledged in the decision under appeal [] as one of the objections to the main request pursuant to Article 100(b) EPC. [The] main request is then refused under Article 100(b) EPC for other reasons, relating to the definition of the therapy plan in claim 1, without any discussion of the separate objection to claim 4 []. When subsequently deciding, against the opponents, in favour of the first auxiliary request on the issue of Article 100(b) EPC, the opposition division does not discuss claim 4 or provide any reason why, in its opinion, its subject matter [...] is adequately disclosed ["
• " Since claim 4 is identically worded in the main request and the first auxiliary request, the objection to claim 4 is also valid for the first auxiliary request, and the issue should therefore have been addressed by the opposition division. [] As a consequence, the reasoning in the decision under appeal as to why the first auxiliary request was deemed allowable is incomplete." This is a substantial procedural violation. The Board does not remit the case but revokes the patent. The appeal fee is refunded.

EPO T 1038/14 -  link

Reasons for the Decision

The appeals of the patent proprietor and of opponent 2 comply with Articles 106 to 108 EPC and Rule 99 EPC and are therefore admissible.

1. Procedural violation and reimbursement of the appeal fee

1.1 The obligation under Rule 111(2) EPC to provide adequate reasoning in a decision open to appeal is closely linked to the principle of the right to be heard under Article 113(1) EPC, since the parties concerned have to be able to determine whether their objections and arguments were duly taken into account. A failure to provide such adequate reasoning is considered a substantial procedural violation justifying reimbursement of the appeal fee.

EPO T 1473/13 (II) - German constitutional proceedings

Key points

• In this examination appeal, the Board found the claims of all requests unallowable. The applicant then requested a stay of the proceedings in view of the pending complaints before the German Constitutional Court (FCC). These complaints concern the alleged lack of independency of the Boards of Appeal of the EPO. The applicant did not give much information about the complaints; the Board has to rely on the website of the German Constitutional Court.
• In the preliminary analysis , the Board makes an important remarks about stays for pending referrals to the Enlarged Board in general, the Board notes that 'The - unreasoned - holding of T 166/84 requiring stay without exception even for proceedings before first-instance departments whenever a decision depends entirely on the outcome of proceedings before the EBA on a legal question or point of law (without giving any reasons) is at least doubtful but not a subject of the present proceedings." This may be of interest to applicants in the field of seeds and plants, of course.
• The decision is rather thorough. The request for stay admitted (even though late filed) 'for general interest'. The Board assumes for the sake of argument (after an extensive analysis) that the test is whether there is a greater disadvantage by deciding on the case than by staying the case. Applying this test, t Board concludes, after a lengthy analysis,  that the appellant has "stated no possible disadvantage from a decision of the board in the present case in case of success of the constitutional complaints. So there is nothing to balance against the disadvantage if a stay is ordered, i.e. the delay of the proceedings". 

• The reason is that " The appellant has not stated on why and how a ruling on certain provisions of the EPC, its Implementing Regulations, the RPBA and the RPEBA could impact on other board decisions with effect for Germany. "For the board it is not obvious that any FCC decisions on the two constitutional complaints would have direct legal implications beyond those cases." 
• The Board notes "for the sake of completeness" that there are "conceivable options" in case the FCC finds the BoA's of the EPO to be a violation of the German constitution. 
• "  a conceivable option in the event that the FCC found the boards of appeal to provide insufficient judicial relief would be to consider the boards' decisions as decisions in administrative as opposed to judicial proceedings, which by default are subject to judicial review under German constitutional law". The Board notes that the appeal period was extended after the Boards of Appeal of the German Patent Office were found to not to be Courts in 1959 and the German Federal Patent Court was set up. The same could be done now by Germany, according to the Board.
• The Board also notes that "The German legislature may also make it possible to convert refused European patent applications and revoked European patents into national patent applications and patents in accordance with Article 135(1)(b) EPC" However, the Board does  not discuss the time limit of 3 months of Rule 155(1) EPC for filing the request for conversion with the EPO (Rule 155(2)). Rule 155(1) expressly states that "The effect of the European patent application under Article 66 shall lapse if the request is not filed in due time."
• As a comment, I note that "Horst Vissel" made the same observations (conversion, FPC) in a comment of 21.02.2018 on the Kluwer Blog. In the same thread, "Peter Parker" points to 2 BvR 2368/99, a constitutional complaint against a decision of the EPO Disciplinary Board of Appeal in an EQE case (" Die Mitglieder der Beschwerdekammern sind sachlich, Art. 23 EPÜ, und persönlich, Art. 21 EPÜ, unabhängig.").

EPO T 1473/13 - link

4.4 In view of the above, the application does not meet the requirements of Article 83 EPC 1973.

5. Fourth auxiliary request - the details

The request mentions three constitutional complaints allegedly pending before the FCC under reference numbers "2 BvR 2435/13, 2 BvR 421/13 and 2 BvR 2480/13".

These case numbers are not in line with the contents of the FCC's website, accessed shortly before the announcement of the decision at the oral proceedings before the board at the URL https://www.bundesverfassungsgericht.de/DE/Verfahren/Jahresvorausschau/vs_2018/vorausschau_2018.html.

Under "Preview for 2018, Second Senate, Reporting Justice: Justice Prof. Dr. Huber", the following cases are mentioned in point 9:

"2 BvR 2480/10, 2 BvR 421/13, 2 BvR 756/16, 2 BvR 786/16".

The title of the cases is:

Constitutional complaint pursuant to Art. 2(1), Art. 19(4), Art. 20(3), Art. 24(1) and Art. 103(1) of the German Basic Law ["Grundgesetz"; German Constitution] for insufficient judicial relief at the European Patent Office against a decision of the Boards of Appeal. (Translation by the board, emphasis added.)

The German original text reads:

Verfassungsbeschwerde wegen Verletzung von Art. 2 Abs. 1, Art. 19 Abs. 4, Art. 20 Abs. 3, Art. 24 Abs. 1 und Art. 103 Abs. 1 GG [Grundgesetz] wegen unzureichenden Rechtsschutzes beim Europäischen Patentamt gegen Entscheidung der Beschwerdekammern. (Emphasis added.)

The same mention was made in the 2017 annual preview. In the 2016 preview, the first two constitutional complaints 2 BvR 2480/10 and 2 BvR 421/13 were cited.

Case 2 BvR 2435/13 is mentioned in none of these previews, while 2 BvR 421/13 is, and "2 BvR 2480/13" obviously relates to 2 BvR 2480/10. Instead of case 2 BvR 2435/13, a case with the number AR 2435/13 is referred to in some publications of 2014 (see e.g. https://www.juve.de/nachrichten/verfahren/2014/05/europaisches-patentamt-befangenheitsantrag-gegen-vorsitzenden-richter-sorgt-fur-wirbel) as relating to a constitutional complaint then pending before the FCC. In German courts, the reference "AR" is an abbreviation of "Allgemeines Register", i.e. "General Register", referring to preparatory proceedings ("Vorverfahren") or "other" proceedings. The reference "BvR" relates, in particular, to constitutional complaints under Article 93(1) number 4(a) of the German Basic Law. (See https://www.gerichtsaktenzeichen.de/ gerichte/bverfg/.)

Summer Schedule

In view of the holidays and some other things keeping me busy, I will post less frequently here for the next few weeks. I aim for a post on Tuesday and on Friday each week.