T 0697/17 - Technical features, contributions, considerations and decisions

Key points

• This examination appeal relates to a software patent application directed to a method for 'updating values' in a database, in particular, a database with a "complex structured type column". The question is which features are technical for inventive step. Preliminary, the Board overrules the Examining Division's rejection based on Art. 52(2)(a) EPC.
• For patentability: "Claim 1 therefore defines a method performed in a relational database system. In principle, the terms used in a claim should be given the common meaning they have in the relevant technical field. In computer science, the term "relational database system" relates to a software system implemented in one or more computers for storing, controlling and processing data. Carrying out a method performed in a relational database system involves the use of a computer system." In line with G3/08, the computer-implemented method is not excluded.
• On to inventive step and the identification of the technical features. "in practice it may be difficult to distinguish between features making a technical contribution and those not contributing, especially in cases in which the non-technical aspects are tightly intermingled with the technical features" 
•  "From none of the above cited decisions can it be concluded that execution time, processing speed, latency, amount of memory required or other such program performance measurements are per se non-technical measurements which cannot play a role in establishing a technical effect and determining whether a technical contribution is present. The above cited decisions merely teach that an improvement with regard to one of those performance measurements alone ("the sole", "not sufficient", "in itself"), is insufficient to establish technical character. In order to decide whether such an improvement is a technical effect it has to be further determined how the improvement is achieved, for instance whether it is the result of technical considerations" 
• " In other words, features make a technical contribution if they result from technical considerations on how to for instance improve processing speed, reduce the amount of memory required, improve availability or scalability, or reduce network traffic, when compared with the prior art or once added to the other features of the invention, and contribute in combination with technical features to achieve such an effect" (question for the readers with more experience in this field: does the word 'and'  indicates two cumulative or alternative requirements here?)
• " On the other hand, such effects and the respective features are non-technical if the effects are achieved by non-technical modifications to the underlying non-technical method or scheme (for example, a change of the business model, or a "pure algorithmic scheme", i.e. an algorithmic scheme not based on technical considerations)." 
• " A possible test for determining whether non-technical features are based on technical considerations is to consider whether the non-technical features would have been formulated by a technical or by a non-technical expert (T 817/16, reasons 3.12 [see recent post, link to be added]). Since computer programming involves technical and non-technical aspects (G 3/08, reasons 13.5.1; T 1463/11 of 29 November 2016, reasons 21), it is difficult to apply that test to distinguish abstract algorithmic aspects from "technical programming" aspects. In that case, the test would have to be whether the features were determined by a "programmer as such" or by a "technical programmer". It may therefore be preferable to directly determine whether the decision to adopt the non-technical features is a technical one (T 1463/11, reasons 21) or whether it required "technical considerations beyond 'merely' finding a computer algorithm to carry out some procedure" (G 3/08, reasons 13.5)." 

EPO T 0697/17 -  link

VII. Claim 1 of the main request reads as follows:

"A method of updating values in a complex structured type column having a hierarchical structure in a relational database system, wherein the complex structured type consists of a set of fields, properties and methods and wherein each field or property is one of a scalar type, a complex structured type itself or a multiset in which each element is a complex structured type, the method comprising the steps of:
parsing by a parser a database modification statement and producing a description of changes to the database proposed by the database modification statement;
producing by a query optimizer an execution algorithm that will implement the database modification;
computing by a query execution engine that uses the execution algorithm a data structure of the database modification statement to determine which values within a complex structured type column are to be updated, wherein the data structure represents values in the complex structured type column as an aggregation of changes to the values at any level of the hierarchical structure of the complex structured type column; and
applying by the query execution engine the changes to the values in the complex structured type column that are to be updated."

Reasons for the Decision

1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

Invention

2. The invention concerns a relational database system and a corresponding method for updating values in a complex-structured-type column. According to the description, the purpose of the invention is to achieve complex and partial updates efficiently (see paragraph [0001] of the international publication).

T 2575/19 - Debit order in annotations field was valid!

Key points

• "On 19 June 2019 the applicant filed a notice of appeal using EPO form F1038E, which contained a debit order of the full amount of the appeal fee" ... " Whereas the field "Fees" of the form was duly filled with the indication of the amount to be paid, the field "method of payment" was left unspecified and the "annotations" field of the form was used instead to indicate the number of the deposit account." ... " The appeal fee was not debited from said account." (as a comment, the current EPO Online Filing Software makes it very easy to make this mistake, it also allows the filing of such 'invalid' debit order without giving any clear warning).
• The Board: " In the case at hand, the debit order was made using form F1038E, that is to say via an expressly allowed form in a electronically processable format." 
• " In this respect, the board considers that a debit order made using an allowed format cannot be construed as being in a "different" and thus invalid "format such as a PDF attachment", pursuant to point 5.1.3 ADA (2017), even if it was made in an incorrect field of form F1038E." 
• " The board thus concludes that under the ADA (2017), there is no legal basis for holding invalid a debit order given in the annotation tabs of form F1038E, despite the mentioned EPO practice or the fact that it was published"
• However, this applies only until 1 October 2019 because "the board notes that the revised version of the ADA, as amended by decision of the President dated 20 August 2019 (Supplementary publication 4, OJ EPO 2019) and in force since 1 October 2019, seems to confirm this finding, as it now expressly codifies the pertinent EPO practice. New point 5.1.3 now explicitly specifies that "Debit orders submitted in any other way [...] or using a different format such as a PDF attachment or the annotation field in the online forms, are invalid and thus will not be carried out"
• As a comment (added 30.10.2019), this holding, of course, applies equally to all fees paid "in the annotations field" in the first instance proceedings, in particular, further processing fees. If the notice of loss of rights was issued less than 2 months ago, one may still request a decision under Rule 112(2) EPC. If a request for re-establishment has already been filed, the question arises what the effect of the present decision is. 
• One minor quibble, the Board's order  is that "The appeal fee is deemed to have been paid on 19 June 2019." In my view, "The appeal fee was paid on 19 June 2019" would have been more precise because the verb "deem" is used in law " to establish a legal fiction either positively by "deeming" something to be what it is not or negatively by "deeming" something not to be what it is" (wiki)

EPO T 2575/19 - link


Summary of Facts and Submissions

I. By a decision despatched with reasons on 30 April 2019, the Examining Division refused European patent application No. 12 005325.1.

II. On 19 June 2019 the applicant filed a notice of appeal using EPO form F1038E, which contained a debit order of the full amount of the appeal fee from deposit account 28000837.

Whereas the field "Fees" of the form was duly filled with the indication of the amount to be paid, the field "method of payment" was left unspecified and the "annotations" field of the form was used instead to indicate the number of the deposit account.

III. The appeal fee was not debited from said account.

[...]

Reasons for the Decision

1. The only purpose of this interlocutory decision is to determine whether the appeal fee should be deemed to have been paid in time, even though it was not debited by the EPO.

2. Under Article 108 EPC, notice of appeal shall be filed within two months of the notification of the decision. Notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid.

T 2360/13 - Coriolis flow meter software

Key points

• In this somewhat older decision (issued 26.11.2018) the Board finds claim 1 to be inventive. Claim 1 is directed to " a method for providing ordering and configuring of flowmeters, comprising: in a server, receiving ...".
•  " the claimed method comprises two distinct phases, namely a first phase involving the selection and ordering of the flowmeter, and a second phase involving the configuration of the flowmeter after the user has received the selected flowmeter." 
• "the first phase of the claimed method does not go beyond the obvious application of the disclosure of document A1 to a remote ordering client-server system and the subsequent transmission of an order for the selected flowmeter."
• " In the board's view, however, the claimed configuration step goes [of the second phase], in the technical context of the claimed method, beyond a mere communicating with other devices, and in particular with a server, in a network, and requires, as submitted by the appellant, the installation of a configuration application in the flowmeter and therefore the adjustment of the operational characteristics of the flowmeter." 
• " claim 1 has been amended during the appeal proceedings to require that the flowmeter is remotely configured over the network by connecting the remote computer connected to the server to the flowmeter. Neither document D5, nor the remaining documents on file, disclose or suggest remotely configuring a flowmeter, not within the communications network in which the flowmeter might, in operation, be integrated, but by specifically connecting the flowmeter connected to the remote computer to the same server and over the same network previously used for carrying out the operations of selecting and subsequently ordering the flowmeter."

1. A method for providing ordering and configuring of flowmeters, comprising:
in a server (205),
receiving (415) input flow stream parameters over a network (220) from a computer (210) that is remotely located from said server;
determining (420) flowmeter parameters from said input flow stream parameters;
determining (425) whether at least one flowmeter is suitable for said flowmeter parameters;
transmitting (435) information on said at least one flowmeter to said computer over said network for display to a user;
receiving (440) a selection of one of said at least one flowmeter displayed to said user from said computer over said network;
transmitting (475) an order for said selected flowmeter; and
after said user receives said selected flowmeter, remotely configuring said selected flowmeter (477) over said network (220), by connecting the remote computer (210) connected to said server (250) to said selected flowmeter.

EPO T 2360/13 -  link

3.2 Claim 1 is directed to a method allowing a user to select and order a flowmeter and, upon reception of the flowmeter, to configure the flowmeter, using a computer connected to a server over a network and remotely located from the server. Therefore, as held by the examining division in the contested decision in respect of the independent method claim of the requests then on file, the claimed method comprises two distinct phases, namely a first phase involving the selection and ordering of the flowmeter, and a second phase involving the configuration of the flowmeter after the user has received the selected flowmeter.

3.2.1 As regards the first phase, in its decision the examining division essentially held in respect of the independent method claim of the requests then on file that

- the features relating to the selection and ordering of the flowmeter (see the claimed steps of receiving input flow stream parameters, determining the corresponding flowmeter parameters, determining flowmeters suitable for the flowmeter parameters, transmitting to a user information on the suitable flowmeters, receiving a selection by the user of one of the suitable flowmeters, and transmitting an order for the selected flowmeter) pertained to an administrative method, and the ordering phase carried out general purpose administrative data processing;
- having regard to the structural elements of the claimed method (i.e. the server, the network, and the remote computer), the closest state of the art was a notoriously known general purpose computer system such as a client-server system;
- remote order placing mechanisms for different products, such as cars, mobile phones, etc., on the basis of parameters set by a user were already known in the state of the art (see document D1, abstract, together with column 1, line 3 to column 8, line 27; and document D3, abstract), and
- it was obvious for the skilled person to implement the administrative method of remotely allowing the selection and then the ordering of a flowmeter into an appropriate general purpose computer system as claimed (Article 56 EPC 1973).

T 1046/14 - Dragging icons on touch screen

Key point

• In this somewhat older decision (26.11.2018), the Board finds claim 1 to be inventive. The claim is directed to "a method of displaying an icon attributed to an executable function in a terminal having a touchscreen".
• " D1 discloses control means for manipulating an object displayed on a touch screen." 
• "  the appellant has convincingly argued that the objects in D1 are not icons in the sense of claims 1 and 8. " 
• " an icon in D1 [is] a symbolic representation of a computer function which is used for manipulating an object. Furthermore, the entire teaching and the different manipulations described in document D1 solely relate to an object, never to the icon. An object is described as having an "object type", specifying the shape and physical properties of the object (see column 8, lines 21 to 25: "weight", "hardness", "frictional resistance", "center of gravity")." 
• " the objective technical problem may indeed be formulated, as argued by the appellant, as how to improve the system so that an icon of D1 associated with an executable function, not an object, can be moved on the touchscreen while at the same time preventing unintentional displacement of the icon.
• The skilled person will not find in D1 any hint at the possible manipulation of an icon. They would not consider applying the mechanisms for moving objects on the touchscreen to moving the icons, since there are fundamental differences between an icon and an object, such as the above-mentioned types and physical properties (e.g. gravity, friction). " 

• 
  

EPO T 1046/14 -  link

VI. Claim 1 according to the main request reads as follows:

"A method of displaying an icon attributed to an executable function in a terminal having a touchscreen (140), the method including:
- displaying the icon (141) and fixing the icon to a first position on the touchscreen such that the icon can not be moved away from the first position by a touch-and-drag action;
characterized by:
- if the icon is touched for a predetermined time, releasing (S27) the position fixation of the icon such that the whole icon can be moved away from the first position to a second position by a touch-and-drag action; and
- displaying a first indication to visually inform a user that the position fixation of the icon is released, wherein the displayed first indication includes at least one of a graphical indication, an animation, and a text message,
wherein the fixed icon is available to a user before the fixed icon is released."

3. Main request - inventive step

3.1 Prior art D1

D1 discloses control means for manipulating an object displayed on a touch screen.
[...]
 D1 thus discloses a manipulation of an object which is similar, in terms of the movement and display of images on the screen, to the touch-and-drag and fixing actions described in the application.

T 0064/16 - Considerations that are typical for a graphical designer

Key points

• " Claim 1 relates to a computer-implemented method for navigating modelled objects and relations between the objects that are stored in a relational database of a [ "product lifecycle management" ] PLM system."
• " Features (d), (e), (f) and (g) specify how the objects returned by a navigation step are presented to the user. They therefore relate to a presentation of information, which contributes to inventive step only to the extent that it interacts with the technical features of the claim to achieve a technical effect."
• The Board is not convinced. Even if it were accepted that the claimed disk layout distinguishes itself from arbitrary layouts by achieving a particularly compact display of information, this effect would be the result not of technical considerations, but of considerations that are typical for a graphical designer. It would therefore not be a technical effect but rather an effect that is inherent in the presentation of information (see decisions [...] T 817/16 of 10 January 2019,  [ Document scoring/GOOGLE] reasons 3.12 ).
• There was also a discussion about the meaning of the closest prior art. The Board: "Hence, the existence of document D3 cannot invalidate document D1 as a suitable starting point for assessing inventive step." 

EPO T 0064/16 -  link

3. The invention as defined by claim 1

3.1 Claim 1 relates to a computer-implemented method for navigating modelled objects and relations between the objects that are stored in a relational database of a [ "product lifecycle management" ] PLM system. 

The claimed method includes steps that essentially describe two steps of navigation.

3.2 In the first navigation step, the user selects a first object, a first relation and a first layout.

[...]

3.4 The claim specifies that the selected first and second layouts are a "circular layout, with objects represented in exploded perspective distributed on a disk" and that "the disk links objects which belong to a same level in the hierarchy, and the intersection of two disks defines a cue representative of a hierarchy of the displayed object and its displayed descendants in the hierarchy".

4. Inventive step - Article 56 EPC

4.1 Document D1 discloses an information management system comprising a database which contains types of products, attributes associated with these products, and the processes that govern their lifecycles (page 5, lines 1 to 6 and 26 to 32), which thus falls within the scope of the term "product lifecycle management system". Document D1 is therefore a suitable starting point for assessing inventive step.

T 1924/17 - When are mathematical features technical?

Key points

• This is an examination appeal relating to a software invention with mixed technical and non-technical features. There is also a mathematical formula recited. 
• r.15: " In the present case, a further issue that may have led the Examining Division to wrong conclusions when it identified technical and non-technical features is that claim 1 refers, in the context of its ranking feature, to a linear combination, i.e. a mathematical formula (see features E3a and E3b of claim 1). The Examining Division considered the ranking feature as an abstract procedural step, which is non-technical. '
• " In view of the above analysis, the Board has no doubts that methods relating to pure mathematics are excluded from patentability by their very nature. This interpretation is consistent with the context given by Article 52(1) EPC, as inventions in all fields of technology always concern the real world and are not merely theoretical, abstract subject-matter or activities. This interpretation is also consistent with the object and purpose of the relevant provisions in Article 52 EPC, as the legislative history clearly shows the aim to exclude "mathematical theories" from patentability, and as the Board considers that the expression mathematical theories at least encompasses pure mathematics." 
• " In the Board's view, the context provided in Article 52(1) EPC, i.e. the limitation of inventions to all fields of technology, makes it clear that methods applying mathematics in a non-technical field are generally excluded from patentability (unless they use technical means, see decision T 258/03, EPO OJ 2004, 575, headnote I, according to which a method involving technical means is an invention within the meaning of Article 52(1) EPC). However, where mathematical features of an invention contribute to the solution of a technical problem, such mathematical features cannot be ignored when assessing inventive step." 
• " For the avoidance of doubt, the Board notes that a method consisting solely of a mental act, even if it involves mathematical steps directed to solve a technical problem, remains a method for performing a mental act as such (not using particular technical means) and is excluded from patentability under Article 52(2)(c) and (3) EPC, i.e. all exclusions from patentability have to be overcome by a claimed activity or subject-matter." 
• " In the present case, as the mathematical features concerning the linear combination, E3a and E3b of claim 1, contribute to the automatic determination of which data tables are to be managed by which type of database management system, they play an essential role in the technical functioning of the system and consequently serve the overall technical purpose of claim 1. Furthermore, these features are based on technical considerations concerning the functioning of the database technology used. Hence, they contribute to the solution of a technical problem and have to be taken into account when assessing inventive step." 

EPO T 1924/17 - link

Reasons for the Decision

1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

The invention

2. The invention relates to data consistency management. It aims at achieving scaling using cloud computing for applications relying on a relational database as the data tier to provide transaction support and to ensure data consistency (originally filed description, paragraph [0001]).

[...]

Main request

3. Claim 1 of the main request relates to a data consistency management system determining whether to forward a query to a NoSQL data store or to a relational database management system (RDBMS) by monitoring database queries issued by an application, and identifying data tables with query patterns that are suitable to be managed by the NoSQL data store. The system comprises the following features itemised by the Board (with reference signs removed):

A a query identification module for monitoring and parsing queries to identify all queries of a data table, and calculating how many of the identified queries are read queries, and how many of the identified queries match the query patterns
B a data table ranking module for ranking data tables with a linear combination of a percentage of read queries and a percentage of the query patterns
C a data table determination module for automatically determining which data tables are to be managed using the NoSQL data store
D a query translation module for automatically translating queries targeting the determined data tables to NoSQL API calls

T 0817/16 - Knowledge only a technical person could possess

Key points

• A bit older case (11.04.2019) about software patents, in particular for a method of scoring results for a search engine. The question is if a feature is technical or non-technical. A further question is, if the feature is non-technical, whether it nevertheless provides for a technical effect. If that is the case, it is not included in the problem statement under the Comvik approach.
• "The appellant also argued that the method of claim 1 achieved a technical effect by implementing the task of assigning a score to a document based on the frequency and the amount of changes to the document in a particularly resource-efficient manner. Instead of storing the current version of a document in its entirety to allow the amount of changes in the next version of the document to be determined, the method of claim 1 only stored a "signature" and determined the amount of changes by comparing the signatures of the previous and new versions." 
• The Board first reviews existing case law: "More generally, the Board considers that if non-technical claim features interact with technical claim features to cause a physical effect over the prior art, [...]  the physical effect is to be regarded as a technical effect for the purpose of assessing inventive step if the non-technical features are based on technical considerations aimed at controlling that physical effect" (emphasis added, internal citations omitted throughout)
• The Board: "A useful test for determining whether such technical considerations are present is to ask whether the non-technical features would have been formulated by a technical person rather than by a non-technical person or persons" 
• "This is not an enquiry into the actual state of technical or non-technical knowledge at the effective filing date; the question is rather whether the knowledge required for coming up with the non-technical features in the particular case is of a kind that only a technical person, i.e. a person not working exclusively in areas falling under Article 52(2) EPC, could possess." 
• "In the present case the Board need not make a judgment as to the technicality of the use of term vectors in the context of claim 1, as the outcome of the inventive-step assessment does not depend on it." (i.e., the feature, if assumed to be technical, is obvious).
• This decision was favourably discussed in the President's Comments in pending referral G1/19 (para. 25). 

T 0817/16 (Document scoring/GOOGLE) - link

Reasons for the Decision

1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.

2. The invention

2.1 The application relates to search engines. Its background section explains that, ideally, a search engine provides the user with the results most relevant to the user's query. Relevant documents are typically identified on the basis of a comparison of the search-query terms to the words contained in the documents and other factors such as the existence of links to or from the documents. The detailed description discloses a number of techniques for scoring documents, which may be used to improve the search results returned in response to a search query.

2.2 The claimed invention is directed to the embodiment described on page 6, second full paragraph, to page 7, third full paragraph, of the published application. It proposes scoring a document on the basis of "history data" that reflects the frequency at and the amount by which the content of the document changes over time. This history data is obtained by "monitoring signatures of the document".

3. Main request - inventive step

3.1 Unlike claim 1 of the first and second auxiliary requests, claim 1 of the main request is not worded as a "computer-implemented" method and therefore arguably encompasses mental acts as such, which are excluded from patentability under Article 52(2) and (3) EPC. But since the appellant at the oral proceedings expressed its willingness to limit the claim to a "computer-implemented" method, the Board will, for the purpose of assessing inventive step, interpret claim 1 accordingly.

3.2 Since the method of claim 1 can be performed on a general-purpose computer, the Board considers such a computer to be a suitable starting point for assessing inventive step. The subject-matter of claim 1 differs from this prior art in the steps listed in claim 1.

T 2132/14 - Not addressing all grounds

Key points

• The Board holds this examination appeal inadmissible because not all the grounds for refusal were addressed in the Statement of Grounds. The appellant did address the objections of lack of novelty and inventive step, especially for claim 1. However, "the examining division found inter alia that claims 7 and 19 [contravened Art.123(2)]" (r.II).
• "The board further observes that the independent claim 15 of the set of claims filed with the statement of grounds of appeal, which substantially corresponds to former claim 7, still comprises the feature which had been objected to [...] in unamended form. No comments were provided by the appellant in this regard either. The board concludes that the appellant did not address the corresponding ground for refusal under Article 123(2) EPC, either implicitly by filing amendments, or explicitly by filing comments on this point."
• "The board further notes that the conditions under Rule 99(2) EPC, i.e. an adequate statement of grounds of appeal, must be satisfied within the time limit for filing the statement of grounds of appeal laid down in the third sentence of Article 108 EPC so that deficiencies in this respect cannot be overcome by filing a new set of claims one day prior to the oral proceedings."

T 2132/14 - link

Reasons for the Decision

1. Admissibility of the appeal (Article 108 and Rule 99(2) EPC)

1.1 The appeal is not admissible, since the conditions for an adequate statement of grounds of appeal are not fulfilled. From the third sentence of Article 108 EPC in conjunction with Rule 99(2) EPC it follows that the statement of grounds of appeal must state the grounds on which the decision is to be set aside. Accordingly, it is settled case law of the Boards of Appeal that a statement of grounds must address all the main reasons given for the decision under appeal (see Case Law of the Boards of Appeal, 8th Edition 2016, IV.E. 2.6.3.b)).

1.2 In the reasoning of the decision under appeal, the examining division concluded that the subject-matter of claims 7 and 19 of the main request, on which the main request filed with the statement of grounds of appeal was substantially based, did not seem to meet the requirements of Article 123(2) EPC (see point 1.5 of the reasons for the decision under appeal). This must therefore be interpreted as being one of the main grounds on which the application was refused.

1.3 The appellant did not address this ground for refusal under Article 123(2) EPC in the statement of grounds of appeal at all. Claim 31 of the set of claims filed with the statement of grounds of appeal, which is based on the former claim 19 which had been objected to, has indeed been amended. The appellant however did not provide any comment as to why the amendments should be considered to be suitable to overcome the examining division's objections with respect to Article 123(2) EPC. The mere filing of an amended claim without any comment cannot be considered as a sufficient reasoning that would establish compliance of the statement of grounds of appeal with Article 108 EPC (see Case Law of the Boards of Appeal, 8th Edition 2016, IV.E.2.6.5.b)).

T 2343/13 - Review of R137(3) decision

Key points

• In this examination appeal, the Board has to decide on the admissibility of an Auxiliary Request which had been refused under Rule 137(3) by the ED.
• " The Examining Division refused to admit the second auxiliary request into the first-instance proceedings under Rule 137(3) EPC in view of the time of its filing [after the oral proceedings] and because it prima facie did not meet the requirements of Article 84 EPC." 
• The ED had hold oral proceedings and had issued a Rule 71(3) Communication based on the 3rd AR. The applicant then disapproved the proposed text, maintained its main request and filed an amended AR-3. The ED then refused the application. 
• The Board: " The question then arises whether the non-acceptance by the appellant of the text proposed by the Examining Division is a factor weighing against admission of the new request. In this respect, the Board notes first that the appellant was fully entitled to maintain its higher-ranking requests and thus to disapprove of the text proposed in the communication under [Rule 71(3) (*)]. And it cannot be held against the appellant that, in the course of the first-instance proceedings, it submitted, as an auxiliary request, a text that was found to meet the requirements of the EPC. If it had not filed that text, the Examining Division would have refused the application at the oral proceedings, and it would have been open to the appellant - within the normal limits of Article 12(4) RPBA - to submit, on appeal, amended requests in reaction to the refusal." 
• The Board considers that G 7/93 (amendments after Rule 71(3) EPC) does not apply. "The situation before the Board now is therefore fundamentally different from that considered in decision G 7/93, provided that the filing of the second auxiliary request is to be regarded as a reaction to the negative opinion expressed by the Examining Division on one of the higher-ranking requests considered in the oral proceedings rather than as an amendment of the claims that had been found allowable at the end of those oral proceedings. This is indeed the case: the second auxiliary request corresponds to the then main request with an amendment that seeks to overcome the Examining Division's inventive-step objection." 
• " As to the Examining Division's second reason for non-admission of the second auxiliary request, namely a prima facie lack of clarity, the Board considers that a question relating directly to the compliance of a request with a provision of substantive patent law is to be assessed by the Board itself and that on such a point there is no latitude for deferring to the view of the department of first instance" 
• * = the Board's decision appears to have a typographic error in the Rule number; see the full decision text below.

EPO T 2343/13 -  link

ECLI:EP:BA:2018:T234313.20180306

Second auxiliary request

7. Admission - Article 12(4) RPBA

7.1 The Examining Division refused to admit the second auxiliary request into the first-instance proceedings under Rule 137(3) EPC in view of the time of its filing and because it prima facie did not meet the requirements of Article 84 EPC.

7.2 Since the request was filed only after the completion of oral proceedings in which the examination proceedings had essentially been brought to a conclusion, in the absence of special circumstances the Examining Division's refusal to admit a newly filed request introducing new features does not amount to an abuse of discretion. Hence, the admission of the second auxiliary request into the proceedings is now at the Board's discretion under Article 12(4) RPBA.

7.3 Although the Board does not find fault with the Examining Division's discretionary decision not to admit the request, it also considers that the non-admission is in itself no reason to treat the second auxiliary request, in respect of its admission under Article 12(4) RPBA, more strictly than if it had been filed for the first time with the statement of grounds of appeal. It would run counter to procedural efficiency if an applicant could increase its chances of having a new request admitted by delaying the filing of that request until after the application has been refused.

T 1159/13 - Appeal against R137(3) decision

Key points

• This case is an appeal against the refusal of a patent application. The question at issue is whether the auxiliary requests are to be admitted.
• " The reasons for not admitting the first, second and third auxiliary requests under Rule 137(3) EPC are given only in the "Facts and submissions" section of the written decision and not in the "Reasons for the decision" section. This possibly reflects an erroneous assumption by the examining division that the non-admission of a request is not part of the appealable decision. Nevertheless, reasons were given." 
• The Board "since the examining division's reasons for non-admission of the first, second and third auxiliary requests are based exclusively on considerations relating directly to the compliance of the requests with a provision of substantive patent law, in the present case the board is in no way bound by the non-admission of these requests (see decisions T 1816/11, reasons 2.6; T 2343/13, reasons 7.7). Otherwise, the appellant would be deprived of a full judicial review of the examining division's assessment of substantive aspects of the case. The board therefore admits the (amended) first, second and third auxiliary requests into the appeal proceedings under Article 12(4) RPBA." 

EPO T 1159/13 - link

ECLI:EP:BA:2019:T115913.20190417

5. Admission into the appeal proceedings

5.1 The reasons for not admitting the first, second and third auxiliary requests under Rule 137(3) EPC are given only in the "Facts and submissions" section of the written decision and not in the "Reasons for the decision" section. This possibly reflects an erroneous assumption by the examining division that the non-admission of a request is not part of the appealable decision. Nevertheless, reasons were given.

5.2 The appellant argued that the examining division had incorrectly refused to admit the first, second and third auxiliary requests into the proceedings. The examining division had failed to take account of the guidance given in Guidelines for Examination, H-II, 2.3, which stated that the examiner should bear in mind the length of the proceedings to date and whether the applicant had already had sufficient opportunity to make amendments.

5.3 The examining division essentially argued that the first, second and third auxiliary requests did not overcome the inventive-step objection raised against the main request. That argument would have sufficed to conclude that the requests would not be allowable if they had been admitted, and it is independent of the length of the proceedings and of whether the appellant had already had sufficient opportunity for making amendments. This is therefore not a case where the examining division effectively cut short the appellant's attempts to claim allowable subject-matter. Since the applicability of Rule 137(3) EPC is not limited to late-filed amendments, the non-admission of the first, second and third auxiliary requests was not an abuse of discretion (see decision T 1816/11, reasons 2.5).

5.4 At the same time, since the examining division's reasons for non-admission of the first, second and third auxiliary requests are based exclusively on considerations relating directly to the compliance of the requests with a provision of substantive patent law, in the present case the board is in no way bound by the non-admission of these requests (see decisions T 1816/11, reasons 2.6; T 2343/13, reasons 7.7). Otherwise, the appellant would be deprived of a full judicial review of the examining division's assessment of substantive aspects of the case. The board therefore admits the (amended) first, second and third auxiliary requests into the appeal proceedings under Article 12(4) RPBA.

J 0003/18 - Resumption after stay

Key points

• This is an appeal relating to a stay of proceedings under Rule 14. As a refresher, if a stay is granted, the applicant is not heard. The applicant can not appeal the decision to stay as such (Singer/Stauder/Luginbuhl, 8th ed. Art.61 rdn. 14). The applicant, however, can request resumption of the proceedings. If the Legal Division refuses the request, the applicant can appeal. The appeal proceedings are inter partes. The present case is an example.
• The Board does not allow the appeal. "Rule 14(3) EPC is to be interpreted as a discretionary provision giving the deciding body of the EPO the power to exercise it. The Board has therefore to decide whether the [Legal Division] exercised its discretion properly", in line with G7/93. The Legal Board can also lift the stay if changes have occurred in the facts of the situation during the appeal procedure (J4/17).  
• "The fact, as accepted by both parties, that litigation in the Belgian legal system is extremely long until the final decision is reached, cannot influence the outcome of these appeal proceedings, because it is unclear how long these proceedings will actually take and which consequences this will have for the parties." 
• The stay as of 19 July 2016 remains in place.
• As a preliminary comment, I wonder whether, the (possible) slowness of the competent national court can be a ground for lifting the stay at all, because the Diplomatic Conference has decided that entitlement proceedings are the exclusive competence of the national courts. It was the choice of the Diplomatic Conference to entrust the national courts with entitlement proceedings, so possibly it can be said that the EPO has to respect this including any resulting delays. 

EPO J 0003/18 -  link

Summary of Facts and Submissions

I. This appeal lies against the decision of the Legal Division of 12 January 2018 not to set a date for resumption of the grant proceedings pursuant to Rule 14(3) EPC.

II. The appellant and applicant had applied for the grant of a patent whose inventor according to the application no 14722800.1 is [mr X], resident of Bruges, a former employee until 2011 of the respondent/third party.

III. The respondent/third party in accordance to Rule 14 EPC requested with letter dated 8 July 2016 the stay of the proceedings for grant, having, as alleged inter alia, entitlement claims regarding the patent it had initiated on 30 June 2016 legal proceedings against its former employee, its company EL Research & Consultancy BVBA and the applicant, before the Dutch speaking Commercial Court in Brussels.

IV. The Legal Division, with a communication dated 19 July 2016 requested from the respondent/third party evidence regarding the service of said writ of summons to the applicant. Meanwhile the Examining Division with a decision dated 6 July 2017 decided to grant the European patent. The mention of the grant was to be published in the European Patent Bulletin 17/31 of 2 August 2017.

T 2313/15 - Only arguments before OD

Key points

• In this opposition appeal, the patentee did not submit auxiliary requests before the OD and did not request oral proceedings. The OD revoked the patent only on the ground of lack of novelty of one claim over D2, without holding oral proceedings. In appeal, the patentee defends that the claims as granted are novel over D2, and also over D1 and D3, with success. The Board considers the claims as granted novel and remits the case. The opponent appears overall unhappy with the procedural course of action. The opponent challenges admissibility of the appeal,  protests against the remittal, and requests an apportionment of costs.
• As to admissibility, the Board: "In a case such as the present one, where the appeal lies against a decision based on a sole ground (lack of novelty) a statement of grounds is sufficiently substantiated in the sense of Rule 99(2) EPC if it addresses that sole ground in a manner for the Board and the other party to understand why the Appellant considers the decision to be incorrect." "The Respondent-Opponent has rather argued that the Appellant [patentee] in their statement of grounds should have dealt with all grounds raised in opposition. This view however has neither a basis in the Convention nor is it supported by jurisprudence."
• As to the remittal: "The Respondent-Opponent requests the Board to make a final decision rather than remit the case to the Opposition Division." "In the present case all grounds of opposition under Article 100 EPC had been raised against all of the claims of the patent, based on various citations. The Opposition Division, however, issued its decision immediately, without oral proceedings, based only on the single ground of lack of novelty of claim 15 over a single document [D2, see r.3]. " 
• " In the light of the above, the Board considers that having a final decision without remittal would largely exceed the primary function of the appeal proceedings as judicial review of a first instance decision to such an extent that outweighs, in the present case, the public interest for procedural economy and the legitimate wish of the Respondent-Opponent to have such decision made by the Board." 
• As to the request for apportionment of costs (i.e. that the patentee pays the costs to be made by the opponent in the future second proceedings before the OD): the Board sees no ground.
• The fact that patentee dealt with all of opponents attacks before the OD " only by argument, without submitting auxiliary requests and without requesting oral proceedings, is a legitimate defence against an opposition, though it runs the calculated risk of an immediate contrary decision." 

• " Thus, the Appellant-Proprietor had no particular obligation to request oral proceedings before the Opposition Division. Their right to appeal or to file further requests on appeal is not affected by the mere fact that they did not request oral proceedings [before the OD]. The Board fails to see any legal basis for the implied assertion of the Respondent that the rights of the Appellant-Proprietor in the appeal proceedings are somehow more restricted because they did not request oral proceedings." 

EPO T 2313/15 -  link

Reasons for the Decision

1. Admissibility of the appeal

1.1 The Respondent-Opponent objects that the statement of grounds only addresses novelty of claim 15 and is therefore not a complete case in the sense of Article 12(2) RPBA. On this ground the appeal is, according to the Respondent, inadmissible.

1.2 Concerning the disputed aspect of the admissibility, the extent of the required reasoning and sufficient substantiation, this is governed by Article 108 and Rule 99(2) EPC. The examination of the question whether the requirements of Article 108 EPC, third sentence in combination with Rule 99(2) EPC are met is made on the basis of the contents of both the statement of grounds of appeal and of the decision under appeal, T 162/97, see Case Law of the Boards of Appeal, 2016, 8th. edition (CLBA), IV.E.2.6.3. In a case such as the present one, where the appeal lies against a decision based on a sole ground (lack of novelty) a statement of grounds is sufficiently substantiated in the sense of Rule 99(2) EPC if it addresses that sole ground in a manner for the Board and the other party to understand why the Appellant considers the decision to be incorrect. That the present statement of grounds addresses the sole ground for revocation, and in sufficient detail, is undoubtedly the case. Nor has it been argued that this would not be so.

1.3 The Respondent-Opponent has rather argued that the Appellant in their statement of grounds should have dealt with all grounds raised in opposition. This view however has neither a basis in the Convention nor is it supported by jurisprudence. Neither of the two decisions cited by the Respondent is indeed concerned with the question of admissibility of an appeal. T 396/98 deals with the issue of the extent to which an opposition division's decision is binding on the corresponding appeal board, see Reasons, point 2 - i.e. whether the board can also review findings of the opposition division that were in favour of the appellant party-, which is not related to the question of admissibility of the appeal. T 240/04, on the other hand concerns the question of admittance of an auxiliary request, see Reasons points 16.1-16.3.

1.4 As otherwise all formal requirements of Article 108 and Rule 99 EPC are met, the Board concludes that the appeal is admissible.

T 1830/14 - From method claim to device claim

Key points

• In this opposition appeal, the patentee wishes to delete a feature from claim 1 as granted, which claim 1 is directed to a cooling apparatus. The patentee argues that the patent also includes a claim 9 for a method of cooling a circuit board using a cooling apparatus which did not recite the features at issue. The question is whether the amendment (deleting features in claim 1) complies with Article 123(3) EPC. 
• The patentee invokes GL (2018) H-V,7.3) which states that: "...it may exceptionally be allowable to replace a claim directed to a method of operating a device by a claim directed to the device itself if the original claim contains the claimed features of the device exhaustively, whether in structural or functional terms (see T 378/86 and T 426/89)". As a comment, this remark in the GL has never made sense to me, other than that the EPO feels bound by those two old Board decisions.
• The Board recalls that: "It is generally established that a claim directed to an apparatus provides absolute protection of the defined apparatus and, hence, its scope of protection is broader than the scope defined by a claim directed to a method of production or use of the same apparatus." 
• " In the present case, claim 9 as granted comprises features defining the cooling apparatus as the appellant pointed out ("device features") but it also comprises features defining its operation ("method features")". 
  "The board is thus of the opinion that the protection conferred by granted claim 9 to the defined cooling apparatus is limited only to the apparatus when it is transferring heat according to the two features cited above, i.e. only when it is in operation." 
• "Claim 1 according to the Main Request defines the same cooling apparatus as granted claim 9, but confers absolute protection to it, irrespectively of whether it is in operation or not. Hence, its scope of protection is broader than that of granted claim 9." 
• The Board also points to T 82/93 as limiting the purported exception in the GL.
• As a comment, I (still) can not see at all how you can amend a method claim into a device claim without violating Article 123(3) EPC. The remark in the GL (and the two T decisions) seem incorrect to me (under the current very strict interpretation of Article 123(3) EPC). 

EPO T 1830/14 -  link

2. Main Request

2.1 Compared to the cooling apparatus defined in claim 1 as granted, in the apparatus claim 1 of the Main Request the feature "wherein opposing ends of the pulsating heat pipe (14) are coupled to the chassis housing (13)" (see lines 12 and 13 in column 13 of the patent specification) has been deleted.

Despite the fact that there are additional features of the cooling apparatus in claim 1 of the Main Request when compared to granted claim 1 (such as a loop heat pipe), the deletion of the above-mentioned feature caused an extension of the claimed scope of protection, since apparatuses without the deleted feature would now fall within the claimed scope although they did not fall within the scope of protection of the granted claims. This extension of protection is also confirmed by the fact that the cooling apparatus according to claim 1 of the Main Request (i.e. after the amendment) is outside the scope of granted claim 1 (i.e. before the amendment), since it does not comprise the deleted feature (see G 2/88, OJ EPO 1990, 93, point 4.1 of the reasons).

2.2 The appellant argued that the scope of protection should be defined by the claims as a whole and compliance with Article 123(3) EPC should be assessed by comparing the whole scope of protection after the amendment with the scope of protection of the granted patent claims as a whole and not by comparing the scopes of individual claims.

The appellant pointed to the granted (independent) method claim 9, which defined a method for cooling at least one printed circuit board. According to the appellant, this claim defined a cooling apparatus without the deleted feature and, therefore, deleting this feature from the apparatus claim did not broaden the scope of protection.

The appellant argued further that claim 1 of the Main Request was to be regarded as a conversion of the granted method claim 9 to an apparatus claim. The appellant referred to a passage of the Guidelines for Examination at the EPO according to which "...it may exceptionally be allowable to replace a claim directed to a method of operating a device by a claim directed to the device itself if the original claim contains the claimed features of the device exhaustively, whether in structural or functional terms (see T 378/86 and T 426/89)" (see Guidelines for Examination at the EPO, November 2018, Part H V.7.3). Granted claim 9 defined a method of operation of the cooling apparatus and defined exhaustively all the structural features of the cooling apparatus; hence, a conversion of a method claim to an apparatus claim was not infringing Article 123(3) EPC (see the statement of grounds of appeal, paragraph bridging pages 10 and 11 and appellant's letter dated 6 May 2019, pages 3 and 4).

T 1532/16 - Undislosed disclaimer and 'restore novelty'

Key points

• Claim 1 as granted includes a disclaimer of two examples of D5, which is an Art.54(3) document. Hence, the negative features do not violate Article 123(2) EPC only if they meet the requirements of G2/03 for undisclosed disclaimers.
• " While the Board agrees with the decision under appeal in that it cannot be concluded that these examples [of D5] are novelty destroying for the subject-matter of claim 1 without the disclaimer, this does not necessarily mean that the requirements of Article 123(2) EPC are not met. " 
• " In particular, the objection of [the opponent[] that the disclaimer removes more than necessary to restore novelty cannot be followed. Indeed as the wording of the examples is carefully repeated nothing more than what these examples disclose is potentially removed from the claims, but to the extent that the examples are not novelty destroying, indeed nothing is in fact removed.
• " It is also the case that this formulation which as noted above, is bereft of function has not, e.g. as a result of amendments to the claim, become in effect an ex-disclaimer which is no more required but cannot be removed due to the provisions of Article 123(3) EPC."  underlining added.
• This decision makes the use of an undisclosed disclaimer a bit less risky. It seems that in G2/03, hn. 2.1 ("a disclaimer may be allowable in order to: - restore novelty by delimiting a claim against state of the art under Article 54(3) and (4) EPC") the term "restore novelty" does not mean that the claim must be not novel without the disclaimer, in the view of the present Board. 
• The present decision appears to deviate from T1224/14 but does not acknowledge that decision.

T 1532/16 - link

Reasons for the Decision

3. Main request (set of claims filed as auxiliary request 1 with the statement of grounds of appeal)

3.1 Allowability of the disclaimer

Claim 1 contains a disclaimer to two examples of WO-A-02/14430 (D5 in examination proceedings - a document comprised in the state of the art pursuant to Article 54(3) EPC).

[see the PDF file of the decision, https://www.epo.org/law-practice/case-law-appeals/pdf/t161532eu1.pdf] 

The disclaimer was held unallowable by the opposition division (section 2 of the reasons) on the grounds that it could not be concluded with certainty that D5 actually disclosed the stiff copolymer as defined by the positive features of the claim as a component of the blends.

Although the disclaimer faithfully and accurately repeated the wording of examples 7 and 23 of D5 it is apparent that the terms employed in these examples are ambiguous. Thus one component "PLA" is defined as being selected from a number of commercial products without stating which grade was used or specifying the properties of the material used. The lubricant is defined only generally as a "polyol ester". Similarly the definition of the two polyesters 1 and 2 is ambiguous and does not define specific products.

T 1665/16 - Documents withdrawn intervention

Key points

• In this opposition appeal, there was an admissible Notice of intervention filed in the appeal stage; the Notice included documents E1-E20. The intervener withdrew his intervention during the appeal. The question is whether E1-E20 are admissible. 
• The Board: " Documents E1 to E20 were thus as a matter of fact part of the appeal proceedings even without there being a need for the exercise of discretion or a decision of the Board on the admittance of these documents into the proceeding." 
• "The withdrawal of the intervention [...] did not change the legal and factual status of documents E1 to E20. The withdrawal of the intervention only terminated the status of the intervener as opponent and party to the proceedings, but has no direct procedural consequences for the appeal proceedings as the original opponent, who had filed a valid appeal, remained party to the proceedings. The withdrawal of the intervention does not affect the legal validity of procedural acts like the filing of documents or other evidence carried out before the withdrawal of the intervention. In particular, the withdrawal of the intervention does not render the intervention retroactively inadmissible, since such a withdrawal has only the legal effect ex nunc. Consequently, contrary to the proprietor's/respondent's opinion, there is no legal basis for regarding documents E1 to E20, which have been filed in the context of an admissible intervention, as retroactivly late filed after the withdrawal of the intervention." 
• The case is remitted to the OD for consideration of E1-E20.

EPO T 1665/16 - link





2. Status of documents E1-E22

2.1 The intervention filed on 17 October 2017 (second intervention) has been timely filed within the three months time period after institution of the infringement proceedings, Rule 89(1) EPC. It also fulfils the requirements of Article 105 EPC and Rule 76 EPC. Documents E1 to E20 were annexed to the intervention of 17 October 2017. Since the intervention, apart from the requirements according to Article 105 and Rule 89(1) EPC, is not subject to any time limit, documents E1 to E20 have been filed as early as possible. Documents E1 to E20 were thus as a matter of fact part of the appeal proceedings even without there being a need for the exercise of discretion or a decision of the Board on the admittance of these documents into the proceeding. The Board in its communication of 29 January 2019 regarded the intervention filed on 17 October 2017 (second intervention) as admissible. The respondent/patent proprietor neither objected to the Board's opinion nor contested the admissibility of that intervention. The intervention is therefore admissible.

2.2 In G 3/04 (OJ EPO 2006, 118), the Enlarged Board concluded, inter alia, that the valid intervener acquired the status of an opponent, irrespective of whether the intervention occurred during the proceedings before the opposition division or at the appeal stage (Case Law of the Boards of Appeal, 8th Edition, July 2016, IV.C.3.2.1). Furthermore, the Enlarged Board ruled that if the intervention was filed during the appeal proceedings, as it is the case in the present appeal, the intervener, because he could only acquire the status of an opponent, had the same rights and obligations - apart from the right to raise new grounds of opposition - as any opponent who had not filed an appeal.

2.3 With the valid filing of the notice of opposition with the intervention, the factual and legal framework of the present opposition in appeal was defined by the sum of the facts and statements of the extent to which the patent was opposed and by the grounds for opposition submitted and substantiated in the notices of opposition provided by each opponent. In that regard, the documents E1-E20 filed by the opponent/intervener were added to the proceedings alongside document D1 filed by the original opponent.

2.4 The withdrawal of the intervention with letter of 9 April 2019 did not change the legal and factual status of documents E1 to E20. The withdrawal of the intervention only terminated the status of the intervener as opponent and party to the proceedings, but has no direct procedural consequences for the appeal proceedings as the original opponent, who had filed a valid appeal, remained party to the proceedings. The withdrawal of the intervention does not affect the legal validity of procedural acts like the filing of documents or other evidence carried out before the withdrawal of the intervention. In particular, the withdrawal of the intervention does not render the intervention retroactively inadmissible, since such a withdrawal has only the legal effect ex nunc. Consequently, contrary to the proprietor's/respondent's opinion, there is no legal basis for regarding documents E1 to E20, which have been filed in the context of an admissible intervention, as retroactivly late filed after the withdrawal of the intervention. Since there is no legal basis in the EPC that foresees the exclusion of documents from continuing opposition proceedings when one of the oppositions is withdrawn, the documents E1-E20 submitted by the opponent/intervener with the notice of opposition remain in the proceedings and have to be taken into account in the Board's decision.

2.5 As the Board has no discretion not to admit documents E1 to E20 in the proceedings, the request not to admit these documents must be refused.

T 1381/15 - Fact vs. argument

Key points

• In this opposition appeal, the opponent submits a new attack of insufficient disclosure late in the appeal proceedings. The newly raised insufficient disclosure attack is "based on the alleged discrepancies between the present application and the priority documents".
• The Board: "According to the headnote of T 1914/12, the boards of appeal do not have any discretion as to the admissibility of arguments submitted late which are based on facts already in the proceedings. However, the board does not consider the specific objection raised by opponent 2 an argument based on facts already in the proceedings."
• The Board: "Firstly, this objection relies on pieces of evidence (the first and the second priority document) which had not been discussed in the context of sufficiency of disclosure.
• Secondly, the facts relied upon by opponent 2, namely, the stability of the fat droplets and the contribution of the polar lipids to this effect, had not been mentioned on appeal, let alone in the context of sufficiency of disclosure.
• In summary, in the present case, the board identifies a bundle of new (pieces of) evidence and new (allegations of) facts which are used to formulate a new objection (a new attack).
• The newly raised objection [...] is therefore not a mere argument which can be made at any time. Thus, its admission into the proceedings is subject to the board's discretion.
• In view of the extremely late state of the proceedings and the complexity of the new objection, the board exercised its discretion under Article 13(1) RPBA and Article 114(2) EPC to not admit this new objection into the proceedings." 

EPO T 1381/15 - link

3.2 This objection was neither mentioned in the appealed decision nor in the written submissions of opponent 2 on appeal. In fact, opponent 2 did not contest that the objection was raised late. In its view, it constituted an argument based on a ground of opposition in the proceedings (Article 100(b) EPC), and, for this reason, it had to be considered by the board. In this context, reference was made to T 1914/12.

3.3 According to the headnote of T 1914/12, the boards of appeal do not have any discretion as to the admissibility of arguments submitted late which are based on facts already in the proceedings. However, the board does not consider the specific objection raised by opponent 2 an argument based on facts already in the proceedings.

T 0337/17 - Not considering opponent's arguments

Key points

• This is the second appeal in this opposition case. In T 168/11, the Board had remitted the case with the order to maintain the patent in amended form based on specifies and a description to be amended. This second appeal is about the description.
• The Board finds the impugned decision to be insufficiently reasoned and therefore violate the opponent's right to be heard. 
• " In its letter dated 6 May 2016, the [opponent] indicated that paragraphs [16,17,18 and 19] of the adapted description [as filed by patentee] were not in agreement with the claims as amended per the auxiliary request dated 12 May 2015. This was supported by arguments." 
• The opposition division reacted by stating in the contested decision that "[t]he description has been amended; the Parties have been given opportunity to comment thereto". However, this does not prove that the appellant's comments were demonstrably heard and considered. [...] For these reasons, the contested decision is not sufficiently reasoned within the meaning of Rule 111(2) EPC.
• The Board decides on the text of the adapted description and remits the case back to the OD with the order to maintain the patent in amended form with specified claims, description and drawings.
• The OD now has to issue the Rule 82 invitation and the patentee has to file the translated claims and pay the prescribed fee upon which the formal decision to maintain the patent in amended form will be taken by the OD.

EPO T 0337/17 -  link

Reasons for the Decision

Respondent's main request

1. According to established case law, a decision of the European Patent Office must show that all potentially refutative arguments adduced by a party are actually refutable (T 246/08, catchword) and that comments were demonstrably heard and considered (T 763/04, reasons 4.4).

2. However, the impugned decision does not give reasons as to why the appellant's comments in its letter dated 6 May 2016 with regard to the adapted description as submitted by the respondent with the letter of 12 April 2016 were not acceptable.

In its letter dated 6 May 2016, the appellant indicated that paragraphs [16,17,18 and 19] of the adapted description were not in agreement with the claims as amended per the auxiliary request dated 12 May 2015. This was supported by arguments. Furthermore, it was indicated that the examples did not fall within the scope of the amended claims, again supported by arguments. The appellant requested that the patent not be maintained in this form.

T 0448/16 - Board must remain neutral

Key points 

• This decision in an opposition appeal was given publication code [C] by the Board, so I discuss it here.
• The Board considers the claims of the Main Request to involve an unallowable intermediate generalization.
• " Lifting feature f out of this context (of paragraph [0063] and figure 2B) and adding it in isolation to claim 1 therefore represents a generalisation of the specific structural and functional context in which the feature might be said to originally appear. At the same time it raises it to prominence, giving it a significance over other features that it does not have in the original parent disclosure." 
• The patentee raised an objection under Rule 106 EPC. " The core of the objection as the Board understands it is that it should have indicated to the appellant-proprietor what features were missing in the various versions of the auxiliary requests " (to address the issue of intermediate generalization due to the isolated extraction of feature F out of the description).
• The Board in reply recalls that " a board must remain neutral in inter partes proceedings, both in its communications to the parties and in oral proceedings." (R9/09). 
• The Board dismisses the Rule 106 objection on the ground that "Had the Board, after having discussed the issue exhaustively with the parties, then indicated to the appellant-proprietor, precisely which specific features were missing from claim 1 in any of its versions so that the appellant-proprietor could compose suitable counter-arguments or file a suitably adapted further request, this would have favoured the appellant-proprietor's case over that of the respondent-opponents. Such a course of action would have compromised the Board's duty to remain neutral, and thus the Board saw itself as prohibited from so doing." 

EPO T 0448/16 -  link

9. During the oral proceedings before the Board after non-admission of Auxiliary Request ID, the appellant-proprietor raised, in writing, the following objection under Rule 106 EPC:

"We herewith raise an objection under Rule 106 EPC.
In the first part of the oral proceedings, the Chairman asked the parties to present their cases on the question of added matter over the parent application. After a break for deliberation, the Board indicated that the claims of the main request and all auxiliary requests on file contain added subject-matter, in violation of Art. 76 EPC. The Chairman indicated that the claims of all requests on file, including all auxiliary requests in versions A, B and C are inadmissibly generalized. Proprietor's representatives asked if the Board's opinion had changed over the written preliminary opinion, and for an indication as to the feature/features which caused the violation found. At a later stage in the oral proceedings, the Chairman stated that the generalization relates to feature f). Thereafter, the Proprietor's representatives asked for indication as to why this feature f) was found to be inadmissibly generalized, i.e., which missing aspects of the original disclosure of the parent application caused the objection.
However, the Board was not willing to provide such indication.
Therefore, Proprietor was not in a position to properly react, provide arguments, or remedy possible deficiencies in any of the claim sets on file. In the Proprietor's view, this constitutes a fundamental violation of the right to be heard according to Article 113 EPC".

T 2370/16 - Parties can't be permitted to influence the minutes

Key points

• In this examination appeal, the applicant had requested a certain statement to be included in the minutes of the oral proceedings before the Board.
• The Board recalls that " It is within the discretion of the board what is considered "essential" or "relevant"; what constitutes "the essentials of the oral proceedings" or "the relevant statements made by the parties" has to be determined by reference to what the board has to decide (see T 966/99" . Moreover, "no single party can be permitted to [...] influence the content of the minutes" referring T1721/07. 
• The applicant had requested the Board to put in the minutes that "The primary examiner entrusted with the examination of the present application and the pending divisional application attended the Appeal Board hearing". However, the Board did not ask the attending member of the public at issue to identify himself and did not put the statement in the minutes.

EPO T 2370/16 -   link



7. Request for inclusion of a statement in the minutes

7.1 During the oral proceedings before the board, the applicant requested that a statement presented in written form at the oral proceedings on 14 June 2019 be included in the minutes. The applicant's statement reads: "The primary examiner entrusted with the examination of the present application and the pending divisional application attended the Appeal Board hearing" (see the annex to the minutes of the oral proceedings).

7.2 According to Rule 76(1) EPC 1973, minutes of oral proceedings must contain "the essentials of the oral proceedings" and "the relevant statements made by the parties". It is within the discretion of the board what is considered "essential" or "relevant"; what constitutes "the essentials of the oral proceedings" or "the relevant statements made by the parties" has to be determined by reference to what the board has to decide (see T 966/99, Reasons 7.2.2).

T 2677/16 - Identifying a drug discovery target is not technical

Key points

• The purpose of the method of claim 1 of all requests on file is "identifying a drug discovery target".
• "[T]he examining division found the claimed method not to achieve its technical purpose by its features"; hence the ED considered claim 1 to lack inventive step.
• "[T]he board disagrees with the very starting premise of [the Examining Division's analysis] that the claimed method serves a technical purpose"
• " [The reasoning of the Examining Division] unduly broadens the concept of a technical purpose to encompass any scientific endeavour in medicine. A drug target is not a therapy: it has no therapeutic effect, but is merely a promising direction for future research. The discovery of a drug target may well turn out to be a valuable scientific discovery, but neither discoveries nor science have technical character as such, as is explicitly enshrined in Article 52(2)(a) EPC. This should not be confused with the invention of a drug, which would represent a technical purpose (See also Benkard, Europäisches Patentübereinkommen, 3rd edition, 2019, Article 52, point 228 et seq.)."
• "The method of claim 1 [] models the disease-related metabolic pathways in the body for the purpose of identifying drug targets [] [S]uch modelling itself is an abstract intellectual activity. It cannot contribute to the technical character of the invention unless it serves a technical purpose (See T 49/99, point 7 of the reasons), which is not the case in the present application." 
• As a comment, the present decision appears not entirely irrelevant to pending G1/19, in particular, the second question of G1/19 asking essentially when a simulation method as such solves a technical problem. The Office President proposed in G1/19 that a sufficient condition is that "is that the simulation method reflects, at least in part, technical principles underlying the simulated system or process". The claim at issue in the present case are directed to "an ontology for storing and accessing genomics information in a database", I don't know if such a method is fundamentally different from a simulation.  

EPO T 2677/16 -  link

VI. Claim 1 of the main request reads as follows:
"A method for identifying a drug discovery target, the method comprising:
providing an ontology for storing and accessing genomics information in a database, wherein the genomics information comprises information relating to genes, proteins expressed from the genes, and biological effects of the expressed proteins, and wherein the ontology is organized so that each gene, protein, and biological effect is categorized by class, wherein a class includes genes, gene products, and biological effects sharing similar properties, and a biological relationship between each gene, protein, and biological effect is defined by slots and facets, wherein a slot identifies a relationship between classes and a facet identifies a restriction on a slot for a specific gene, gene product, or biological effect within a class;
querying the database to generate a profile including a collection of nodes connected by directed edges, wherein each node represents a gene or a gene product, wherein each directed edge represents the biological relationship between two nodes, and wherein the collection of nodes include concepts that are biologically related to a disease state;
identifying, within the profile, a disease-related pathway to the disease state, wherein the disease-related pathway includes the biological relationships and actor concepts, the actor concepts including genes and proteins; and
identifying each of the actor concepts involved in each biological relationship as a drug discovery target."

Reasons for the Decision

1. The contested decision includes an obiter dictum that claim 1 of the main request only contains abstract algorithmic steps and is thus directed to a mental act in the sense of Article 52(2)(c) EPC. However, the examining division assumed, in light of the description, that the method of claim 1 was computer-implemented, and thus did not base the decision to refuse the application in suit on Article 52(1) and (2)(c) EPC, but rather on Article 56 EPC (see the contested decision, point 12.2 of the reasons). The board disagrees with this obiter, as the step of "querying the database" implicitly involves a computer, i.e. technical means, which renders the method of claim 1 of the main request an invention within the meaning of Article 52(1) EPC (See T 258/03, OJ EPO 2004, 575, Headnote I).