T 1029/16 - Not addressing applicant's arguments

Key points

• “In the present case, the written decision does not provide the Examining Division's reasons for not admitting the second auxiliary request into the proceedings. As explained above, the written decision must give reasons for the rejection of each one of the requests, including those not admitted into the proceedings, in order to enable a judicial review []” 
• “The minutes of the oral proceedings reproduce arguments given by members of the Examining Division for not admitting the second auxiliary request, but since the written decision does not endorse any of those arguments either by repeating them or by reference, they are not part of the final decision. Failing to justify in the written decision why a request was not admitted into the proceedings infringes Rule 111(2) EPC and amounts to a substantial procedural violation.”
• “Regarding the main request, the written reasoning of the decision under appeal consists essentially of text copied from the [preliminary opinion with three additional points]. (...) Thus, none of these three points deals with the applicant's arguments submitted after the summons to oral proceedings. Similarly, the reasoning for refusing the first auxiliary request does not address the applicant's arguments.”
• “In sum, the written reasoning of the decision under appeal does not deal with any of the arguments that the applicant submitted at the oral proceedings and in its letter dated 20 July 2015 in reply to the summons.”
• This is a substantial procedural violation. The appeal fee is reimbursed even though the main request and first auxiliary request are not allowable; the case is remitted for the second auxiliary request.

EPO T 1029/16 -  link


9.5 Therefore, the Board is satisfied that independent claims 1 and 5 of the third auxiliary request fulfil the requirements of Articles 84 and 123(2) EPC.

Procedural violation

10. In its statement of grounds of appeal, the appellant requested reimbursement of the appeal fee by reason of a substantial procedural violation since the applicant's right to be heard had not been observed. The written reasoning of the decision under appeal did not seem to deal with the arguments put forward by the applicant during the oral proceedings.

[applicant's arguments]

The appellant argued that according to well-established case law, as could be derived from decisions T 1123/04 of 25 August 2006 and T 852/07 of 25 January 2008, as well as the EPO Guidelines for Examination, the right to be heard was a right to not just present comments but also have those comments duly considered.
In the present case, the decision in respect of the main request seemed to be copied from the summons to oral proceedings dated 8 April 2015. The only three paragraphs concerning the main request which had not been directly copied appeared to be a paraphrased version of what had been said in the summons.
In its written submissions, the applicant had already replied to the arguments raised in the summons. It was hence not clear whether and how the applicant's reply had been considered by the Examining Division.
Hence, the Examining Division had failed to provide adequate reasoning in the decision, contrary to Rule 111 (2) EPC. This was also a substantial procedural violation, as noted by well-established case law including T 353/11 of 16 May 2012, and T 2366/11 of 26 March 2012.
Furthermore, it was clear that the decision had very little in common with what had actually been discussed at the oral proceedings. As was clear from page 1 of the minutes, all of the objections raised by the Examining Division related to determining the technical effect of particular features of the claims and the technical problem that the invention solved. In response to this, the applicant summarised the invention as defined by the claims as well as the objective technical problem solved by the invention. However, it was not clear from the decision how any aspect of this discussion had any correlation whatsoever with the decision, which appeared to have been at least partly (if not entirely) made based on issues that were not discussed at the oral proceedings.
The appellant gave examples of concrete arguments submitted in advance of the oral proceedings with its letter dated 20 July 2015 which allegedly had not been addressed by the Examining Division.

At the oral proceedings, the appellant also argued that the long prosecution time in the present case amounted to a procedural violation.

G 0001/18 - Late appeal fee (English)

Key points

• The reasons for G 1/18 were published in English in OJ 2020 A26.
• As a practical matter, the paragraphs are not numbered so it's not so easy to give precise references. The overall structure of the paragraph numbering is e.g. A.II.3.(4).(b).(α) ; with all the reason being in chapter B.
• The question is the interpretation of Art.108 EPC, second sentence: “notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid”; in particular how this sentence must be applied to cases wherein the appeal fee is (factually) paid but after the expiry of the appeal period. The Board notes that the word ‘deemed’ creates a legal fiction.
• The Enlarged Board: “On a first reading of this second sentence (narrow literal interpretation) [which the EBA rejects], its legal fiction can be understood to mean that, on this basis, solely the date of filing the appeal can be established. If, for example, notice of appeal is filed within the two-month period but the appeal fee is filed after expiry of that period, the appeal is deemed, in accordance with this narrow literal reading, to have been filed on the date the appeal fee is paid, that is, in this example, after the two-month period, with the result that the appeal is inadmissible under Rule 101(1) EPC” (reason B.IV.1.(2).(a).
• “On a second reading of this second sentence (broad literal interpretation) [which the EBA adopts], the legal fiction is that, in order for the appeal to be regarded as filed, the appeal fee must have been paid within the two-month period prescribed in the first sentence of Article 108 EPC. The use in the English version of the second sentence in the EPC 2000 of "... until ..." [] introduces a temporal link with the first sentence and thus relates to a filed appeal which becomes effective only if the condition laid down in the second sentence, is satisfied, i.e. the fee was paid either at the same time or later but still within the two-month period.”
• The EBA adopts the ‘broad literal interpretation’, inter alia because G1/86, r.8 had held that: “An appeal is regarded as lodged only when it has been filed and the appropriate fee paid. In performing these two acts the appellant initiates the procedure. The legal process has begun”. The EBA in G1/18 “can only concur with that finding” of G1/86. I note that G1/86 doesn't say 'timely'.
• As a comment, I find the EBA's reasoning about the 'broader literal interpretation' difficult to follow. However, clearly the prevailing view is confirmed.
• The EBA also notes that the outcome is consistent with the proposal of the Haertel draft of July 1961. The EBA appears to conclude that there was never a conscious decision to change the sanction, despite the wording of the prevision being changed during the various rounds of drafting. That argument seems valid and persuasive to me; the Haertel draft is indeed the fundament for the EPC.
• The 1961 draft Article 93  is on page 69 of the FR PDF document with the travaux to Article 108 EPC.
• The Haertel draft as such is available as PDF here and listed on the EPO website here as IV/5569/61-F; the trick is to browse the French version of website. However, that document seems incomplete, e.g. the draft article at issue (then numbered as Article 93) is not included in it. The Haertel draft was originally only in German but is not included in the list of German travaux documents. The draft provision reads: “Wird die Beschwerdegebühr nicht rechtzeitig entrichtet, so gilt die Beschwerde als nicht erhoben.” (DE  Travaux to Article 108, page 4 of the PDF). 
• The EBA: “the deletion of the expression "dans les délais" (or "rechtzeitig" in the German version) suggests that the legislator intended to include, besides cases of late payment, a failure to pay the fee at all, without thereby ruling out that the legal sanction (deemed non-filing of the appeal) was to be communicated to the appellant”. 
• The EBA here considers the amended Haertel draft of 26.09.1961 with reference number IV/5569/1/61-F ( page 64 of the FR Trav. Prep. Doc to Art. 108 ; this draft provision appears to be lacking in the DE version of the Trav. Prep. to Art.108).
• The EBA, with some annotations of me: “Consequently, to conclude [as a Technical Board did] [...] [from the change in IV/5569/1/61-F]  that the legislator no longer wished to treat late payment of the appeal fee as a special case [as was proposed in IV/5569/61-F] (with the result [of the treatment as special case] that the appeal is deemed not to have been filed) amounts to an interpretation that goes beyond the discussions and the draft articles adopted.” 
• Here, the ‘special treatment’ is that the sanction is in Article 93 whereas the sanction for other formal deficiencies was in Article 97 of both the original and the amended Haertel draft. So, the EBA concludes that there was no legislative intent to change the original proposal that the appeal is deemed to not have been filed in case of late payment of the appeal fee.
• The EBA states that “the legal fiction expressed as "recours ... considéré comme non avenu ..." was in fact retained by the drafting committee in the redrafted Article 93 (see above document IV/5569/1/61-F)”. However, Article 93 at issue appears to recite “n'est considéré comme formé” / “est considéré comme non formé” (pages 64 and 69 of the FR Trav. Prep. Doc to Art. 108)
• The EBA furthermore explains that the appeal fee only becomes payable upon filing of the notice of appeal, under Article 4 Rfees. 
  
  
• Note that if no notice of appeal is filed, the appeal is not 'deemed to not have been filed but simply not filed. This is implied by headnote 3. It may be said that in such a case, the Board finds that no appeal has been filed. 

EPO - G 0001/18 OJ 2020 A26 and G 0001/18 (clean html text)


G 1/18 Headnote
1. An appeal is deemed not to have been filed in the following cases:

(a) where notice of appeal was filed within the two-month time limit prescribed in Article 108, first sentence, EPC AND the appeal fee was paid after expiry of that two month time limit;

(b) where notice of appeal was filed after expiry of the two-month time limit prescribed in Article 108, first sentence, EPC AND the appeal fee was paid after expiry of that two-month time limit;

(c) where the appeal fee was paid within the two-month time limit prescribed in Article 108, first sentence, EPC for filing notice of appeal AND notice of appeal was filed after expiry of that two-month time limit.

2. In the cases referred to in answers 1(a) to (c), reimbursement of the appeal fee is to be ordered ex officio.

3. Where the appeal fee was paid within or after the two-month time limit prescribed in Article 108, first sentence, EPC for filing notice of appeal AND no notice of appeal was filed at all, the appeal fee is to be reimbursed.


A. SUMMARY OF PROCEEDINGS

I. Referral under Article 112(1)(b) EPC

In a letter dated 7 June 2018, the President of the European Patent Office (EPO) referred the following point of law to the Enlarged Board of Appeal under Article 112(1)(b) EPC:

"If notice of appeal is filed and/or the appeal fee is paid after expiry of the two-month time limit under Article 108 EPC, is the appeal inadmissible or is it deemed not to have been filed, and must the appeal fee be reimbursed?"

In that referral, the President of the EPO wrote that the requirements of Article 112(1)(b) EPC had been met: different boards of appeal had given different decisions on that question and an answer to it was necessary "in order to ensure uniform application of the law". As evidence of different decisions, the referral cited T 1897/17 as representing the "minority" view in the case law that the appeal is inadmissible and T 1325/15 and T 2406/16 as representing the "majority" view in the case law that the appeal is deemed not to have been filed. The President of the EPO added that the answer "is certain to have an impact on the practice of the Office's departments of first instance", several EPC provisions having similar wording.

The different board decisions analysed by the President of the EPO in his referral have been summarised as follows.

T 1902/13 - The business consultant

Key points

• In this examination appeal about a computer-implemented business method, the ‘business consultant’ figures.
• “According to the invention, parts of the process are therefore automated using a computer system. However, the computer system would still follow the same principles as the business consultant following the underlying administrative concept according to the set of rules and questions. [...] [T]he underlying administrative concept following the traditional business consultant approach would be provided to the programmer as a requirements specification.
• This present decision appears to essentially follow the CardinalCommerce approach which introduced the ‘notional business person’ (T1463/11).

EPO T 1902/13 -  link



1. Background of the invention

The present invention is directed to a computer-based method for assessing competence levels of an organisation comprising multiple organisational units as conventionally assessed by business consultants.

 
3.3 Designing questions for determining competence levels [of employees] and method steps and decisions leading thereto as well as mathematical/statistical operations of weighting, scaling and norming are all in the non-technical domain of an economist or a business person (Article 52(2)(a) and (c) EPC) and do not make an inventive technical contribution. The parameters resulting from those questions are considered to be non-technical, i.e. cognitive data.

A business consultant, who wants to assess the competence of an organisation would design a set of rules and questions, which can be reused for another organisation. In order to present meaningful results, e.g. on a flip-chart using graphical diagrams like well known spider diagrams, the business consultant would have to transform the answers into numerical values, scale and weight them. No computer would be needed for performing these tasks. The more dimensions the quantities require, the more cumbersome and time consuming these tasks would be. According to the invention, parts of the process are therefore automated using a computer system. However, the computer system would still follow the same principles as the business consultant following the underlying administrative concept according to the set of rules and questions. The Board does not agree with the appellant's argument put forward during oral proceedings, that the business person and the skilled programmer would have to sit together in order to elaborate a workable solution. Rather the underlying administrative concept following the traditional business consultant approach would be provided to the programmer as a requirements specification.

3.4 The Board does not see how the claimed invention can automatically initiate decisions ("automatische Initiierung von Verfahrensentscheidungen") as argued by the appellant (see page 5, last paragraph of the grounds). Every decision concerning what to do in order to improve competence has to be taken by a human interpreting the diagrams or the data in general. There is no automation in this regard and this goes beyond what is covered by the independent claims.

T 2455/13 - Non-technical skilled person

Key points

• In this examination appeal, the question is whether software-related features are technical under the Comvik approach to inventive step. 
• The Board considers the features to be non-technical, because they reflect a financial-mathematical calculation method which underlies the claimed method. 
• The Board, in rough translation: “The basic idea of determining the level of underpinning for a large number of different types of investment equipment (operating mode-specific) with a uniform cost calculation approach as well as the concept for this is to be assigned to the 'nicht-technischen Fachmann'.” 
• This non-technical skilled person knows numerous computer-implemented and network-implemented business methods, and can imagine what is conceptually possible at an abstract level. The non-technical skilled person is however unaware of the precise implementation on a computer. This is the domain of the programmer, and hence of the technical skilled person, and is to be taken into account when examining inventive step.  The Board refers to T 1082/13.
• Furthermore, neither the claims nor the application clarify the technical implementation of the (software) 'modules' recited in the claim, such as the filter unit, weighing module, and analysis module. These modules are only specified "auf einer abstrakten Meta-Ebene" without specifying technical details of how they are carried out.
• According to the Board, these features reflect abstract functions on which the non-technical person would base his concept.
• “Was die tatsächliche Implementierung betrifft, wodurch diese "Module" erst zu technischen Merkmalen qualifiziert werden, so sind technische Details dazu im Anspruch nicht spezifiziert. Die Anmelderin geht anscheinend selbst davon aus, dass solche "Module" dem technischen Fachmann zum Anmeldezeitpunkt verfügbar waren und eine technische Implementierung keiner näheren Erläuterung in den Anmeldungsunterlagen bedurfte.”

EPO T 2455/13 - link

EPO Headnote
Auch der nicht-technische Fachmann hat Kenntnis von den Möglichkeiten einer Realisierung von geschäftsbezogenen Konzepten auf netzwerkbasierten Computersystemen. Er kannte zum Prioritätszeitpunkt eine Vielzahl von rechner- und netzwerkgestützten geschäftlichen Prozessen (z.B. im Bereich der Zahlungsprozesse, Materialwirtschaft und auch der Versicherungswirtschaft), um eine Vorstellung davon zu haben, was konzeptionell auf einer abstrakten Meta-Ebene realisierbar ist. Was der nicht-technische Fachmann jedoch nicht weiß ist, wie genau eine Implementierung auf dem Computer erfolgt. Dies liegt in der Sphäre des Programmierers, des technischen Fachmanns, und ist bei der Prüfung auf erfinderische Tätigkeit zu berücksichtigen (vgl. T 1082/13, Entscheidungsgründe 4.8).

Sind Merkmale lediglich auf einer abstrakten Meta-Ebene als Module spezifiziert und repräsentieren Funktionen, wie sie der nicht-technische Fachmann in seinem Konzept zugrunde legen würde, so gibt dieser damit auch keine technischen Merkmale vor. Erst durch die Angabe von tatsächlichen Implementierungs­schritten im Anspruch werden diese Module zu technischen Merkmalen qualifiziert (vgl. Entscheidungsgründe 3.10 bis 3.12).

VII. Der unabhängige Anspruch 1 gemäß dem Anhang B ist gerichtet auf ein:
"1. Überwachungsverfahren zur rückgekoppelten, dynamischen Überwachung und dynamischen Anpassung von Unterlegungshöhen von technischen Anlagen, und zum Aktiveren betriebsspezifischer Anlagemittel (202, 211, 222) mittels einer Kontrolleinheit (14) basierend auf der überwachten und dynamisch angepassten Unterlegungshöhe, dadurch gekennzeichnet,
dass mittels einer Filtereinheit (12) für unterschiedliche Betriebsarten jeweils eine Parametrisierung (30) basierend auf erfassten betriebsartenspezifischen Daten dynamisch bestimmt wird und über einer Lookup Table der entsprechenden Betriebsart zugeordnet abspeichert wird, wobei die Filtereinheit (12) zum Erfassen der betriebsartenspezifischen Daten mittels eines Netzwerkinterface mit Quelldatenbanken (40,41) verbundenen Netzwerknodes über ein Netzwerk (50) zugreifbar verbunden ist und die Daten über eine Kommunikationseinheit der Filtereinheit (12) von den Quelldatenbanken (40/41) über das Netzwerk (50) aggregiert werden,
dass zur dynamischen Erzeugung der Parametrisierung (30) für die Unterlegungshöhe Schwellwerte für technische Relevanz im Prozess und monetäre Schwellwerte betreffend Kostenrelevanz gesetzt werden, wobei die Parametrisierung basierend auf Prozessschritten (1,...,9) oder Anlagen (61,...,69) in Abhängigkeit der Schwellwerte für technische Relevanz und Kostenrelevanz dynamisch erzeugt wird,
dass mittels eines statistischen Analysemodul (10) [sic] mit einem Interface betriebsspezifischen Messdaten (31) über das Netzwerk (50) aggregiert und analysiert werden, welche Messdaten (31) mittels der Lookup Table mindestens einem spezifischen Parameter der Parametrisierung (30) zugeordnet abgespeichert werden,
dass mittels des Analysemoduls (10) basierend auf den kumulierten betriebsspezifischen Messdaten (31) entsprechende Unterlegungshöhen (32) bestimmt werden, wobei die Unterlegungshöhen (32) mindestens lokalisierte Kostenparameter basierend auf der Parametrisierung (30) umfassen,
dass basierend auf einem Request und/oder einem bestimmbaren Zeitintervall mittels einer Kontrolleinheit (14) die entsprechende Unterlegungshöhe (32) dynamisch angepasst wird und bei Überschreiten eines definierbaren Deviationswertes zu bereits abgespeicherten Messdaten betriebsspezifische Anlagemittel (202, 212, 222) aktiviert werden."

T 0384/16 - Claim interpretation as factual allegation

Key points

• The Board decides to not admit the new objection under Article 123(3) into the proceedings. 
• The Board: “the board, in application of Article 13(1) RPBA 2007, decided not to admit the new allegation of fact based on the objection pursuant to Article 123(3) EPC into the proceedings” (emphasis added).
• Let's see what the Board considers the "allegation of fact” in this case.
• The Board: “had this new objection been admitted, new complex questions would have had to be answered, such as whether there is any change in scope between a paint or coating composition "with improved intercoat adhesion" [recited in claim 1 before the amendment] and a paint or coating composition "for improving intercoat adhesion" [recited in claim 1 after the amendment].”
• The Board does not identify any particular disputed factual allegations underpinning the proposed claim interpretation. Therefore I conclude that proposing a claim interpretation as such is treated as an "allegation of fact” by this Board (3.3.02). See also T1875/15 (same Board 3.3.02).
• I would say that considering claim interpretation (as such) to be a matter of fact is not an entirely common view (cf. Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 574 US 318 (2015)). The advantage for the Board is that they can hold the new objection inadmissible. The logical consequence may be that however, perhaps, the Boards are obliged to consider timely evidence filed by the parties to proof such ‘facts’, e.g. expert declarations.

EPO T 0384/16 -  link

6.3 Admittance of the objection under Article 123(3) EPC

The objection is based on the change of claim category effected in claim 1 together with the change of the feature "with improved intercoat adhesion" to "for improving intercoat adhesion". According to respondent 2, this change of claim category extended the scope of protection in contravention of Article 123(3) EPC.

Respondent 2 did not raise any objection regarding Article 123(3) EPC in its reply to the statement of grounds of appeal, either explicitly or implicitly. As not disputed by respondent 2, it had been raised for the first time in its letter dated 13 November 2019. Consequently, in the same way as for the objection under Article 123(2) EPC, it is at the board's discretion to admit or not to admit this new objection pursuant to Article 13(1) RPBA 2007.

Had this new objection been admitted, new complex questions would have had to be answered, such as whether there is any change in scope between a paint or coating composition "with improved intercoat adhesion" and a paint or coating composition "for improving intercoat adhesion".

Consequently, the board, in application of Article 13(1) RPBA 2007, decided not to admit the new allegation of fact based on the objection pursuant to Article 123(3) EPC into the proceedings.

T 0101/15 - Parties are expected

Key points

• The Board: “In inter partes proceedings, the parties are expected to play an active role and to provide requests and substantive submissions at an early stage.”
• The Board makes this remark in the context of opposition appeal proceedings, but in my view, the principle applies equally to first instance opposition proceedings. The Board's phrasing appears therefore entirely accurate.
• The Board also notes that: “An opinion of a board expressed in a communication pursuant to Article 15(1) [RPBA], which is solely based on arguments put forward in the statement of the grounds for appeal, is not an invitation for parties to file new requests or generally to present new facts.”

EPO T 0101/15 -  link

3.3 Auxiliary request 2bis was filed one month before the oral proceedings. According to the respondent it was filed as a response to the indication of the Board in the communication accompanying the summons to oral proceedings that claim 1 of the main request appeared not to fulfil the requirement of Article 123(2) EPC.

However, this objection was already raised before the Opposition Divison, and was dealt with in the decision under appeal. The Appellant has raised again this objection in the statement of grounds of appeal. In its reply to the statement of the grounds of appeal, the respondent provided arguments why this objection should be rejected, but did not file new requests, such as the ones currently under discussion, in order to overcome the objection, should the Board follow the arguments of the appellant in this respect.

Contrary to the respondent's submission, it cannot be surprising to a party that a board may depart from the conclusion reached by an Opposition Divison on an issue in a contested decision. An opinion of a board expressed in a communication pursuant to Article 15(1) [RPBA], which is solely based on arguments put forward in the statement of the grounds for appeal, is not an invitation for parties to file new requests or generally to present new facts. In inter partes proceedings, the parties are expected to play an active role and to provide requests and substantive submissions at an early stage.

According to Article 13(1) RPBA any amendment to a party's case after it has filed the reply of the statement of the grounds of appeal may be admitted and considered at the Board's discretion, which should be exercised in view of the current state of the proceedings and the need for procedural economy. Furthermore, the request was filed after oral proceedings have been arranged, so that Article 13(3) RPBA also applies.

3.4 Auxiliary requests filed after oral proceedings have been arranged shall not be admitted if they cannot be easily and promptly assessed as to their patentability by the other parties and the Board. This criterion falls within the principle of procedural economy for the exercise of the Board's discretion to admit late requests.

T 0713/15 - Disease too broad

Key points

• Claim 1 is a second medical use claim directed to an antibody against IL-6 receptor “for preventing and/or treating vasculitis”.
• The opponent argued as follows: “Vasculitis was a term for various diseases with unknown causes and pathogenesis. The only link between the various diseases was the presence of inflammation.  ... Documents (47), (49) and (50) [scientific publications] cast serious doubt on the teaching of the patent in suit that IL-6 inhibition therapy could be used to treat any type of vasculitis. ... Consequently, there were certain forms of vasculitis that could not be treated by an anti IL-6 receptor antibody. Clinical trials were the only way to find out which forms or subforms of vasculitis were treatable.” Hence, claim 1 was insufficiently disclosed, according to the opponent.
• The Board: “In sum, the relevant facts relating to sufficiency of disclosure are the following. The patent in suit provides indications on a mechanism of action for vasculitis in general and data for patients having two specific forms of vasculitis. There is however evidence on file, in the form of documents (49) and (50), that the claimed treatment does not work for all types of vasculitis. ”
• “It has thus been shown that the general mechanism postulated, which has led to a therapy relying on IL-6 inhibition, does not allow each and every form of vasculitis to be treated. The application as filed does not provide any form of guidance as to which types of vasculitis respond to the administration of an anti IL-6 receptor antibody. There is thus no teaching in the application as filed on how to treat vasculitis in all its forms. As a consequence of these findings, the subject-matter of claim 1 of the main request is not sufficiently disclosed over the whole scope of the claim.”.
• After this conclusion, the patentee files an auxiliary request during the oral proceedings, wherein the disease is restricted to particular types of vasculitis. The Board does not admit the auxiliary request. 
• “The fact that a board, on the basis of arguments presented by a party, might take a different view than the department whose decision is appealed, can not be considered a surprising event as it is one of the two possibilities. As the patent proprietor is the party that is solely responsible for determining the text of the patent (see Article 113(2) EPC), it is however obliged to submit amendments or possible fall-back positions. For reasons of procedural economy and fairness to the other party this must be done at the earliest possible opportunity.”

EPO T 0713/15 -  link

Claim 1 at issue:
"1. An agent for use in preventing and/or treating vasculitis, said agent comprising an antibody against IL-6 receptor as an active ingredient, wherein the antibody inhibits the binding of IL-6 to the IL-6 receptor."




4. Sufficiency of disclosure

4.1 The patent in suit relates to a novel preventive and/or therapeutic agent for vasculitis (paragraph [0001]).

According to paragraph [0005] intensive and extensive research led the inventors to demonstrate that IL-6 was indispensable in the pathology of vasculitis. It was found surprisingly that when the binding of IL-6 to its receptor was inhibited by an IL-6 receptor antibody IL-6 per se was decreased in the blood. Thus, IL-6 inhibition not only had an anti-inflammatory effect on vasculitis but also treated vasculitis per se by acting on the core of vasculitis.

Paragraph [0005] relates to vasculitis in general and does not distinguish between various types of vasculitis.

T 2111/17 - Not admitting novelty attack

Key points

• The Board does not admit the novelty attack based on D8 against claim 1.
• The opponent had not submitted a novelty attack based on D8 against the claims found allowable by the OD during the oral proceedings before the OD; these claims were broader than the current claims.
• The opponent had also not reacted to the amended claims submitted by patentee with patentee's statement of reply in appeal. The opponent furthermore gave no reasons for only presenting the attack during the oral proceedings before the Board.
• The novelty attack against claim 7 is neither admitted. The fact that the main request was filed only very late in the appeal proceedings (but admitted) does not matter, because claim 7 of the current request is de facto the same as in the set of claims found allowable by the OD.
• The fact that the earlier pending request lacked basis in the application as filed, does not matter. Opponents can not delay submitting novelty attacks if they are of the opinion that the claims lack basis.
• “Die Kammer merkt dazu aber an, das ein eventueller Mangel nach Artikel 123(2) EPÜ die [opponent] jedoch nicht von ihrer Pflicht entbindet, möglichst frühzeitig und vollständig zu reagieren. Nach ständiger Rechtssprechung trifft die Parteien die Pflicht zur beförderlichen Verfahrensführung, wonach unter anderem alle relevanten Tatsachen und Argumente so früh und vollständig wie möglich vorgelegt werden müssen”. (emphasis added).

EPO T 2111/17 - link





3.2 Die Beschwerdeführerin erhebt weiterhin einen Neuheitseinwand vis-à-vis D8 gegen den Gegenstand von Anspruch 1. Die Beschwerdeführerin ist der Ansicht, dass die Beschwerdegegnerin von diesem Einwand nicht überrascht sein könne, insbesondere da die D8 bekannt gewesen sei.

Dieser Einwand wird jedoch aus den folgenden Gründen nicht berücksichtigt (Artikel 13(1) und (3) VOBK):

Während der mündlichen Verhandlung im Einspruchsverfahren wurde ausgehend von der D8 kein Neuheitseinwand gegen Anspruch 1 des damaligen, aufrechterhaltenen ersten Hilfsantrages erhoben (siehe Punkt 3 des Protokolls und Punkt 2 der Gründe der angefochtenen Entscheidung). Da der Gegenstand von Anspruch 1 dieses Antrages breiter war als der vorliegende Anspruch 1, hätte ein Neuheitseinwand ausgehend von D8 aber bereits in der mündlichen Verhandlung im Einspruchsverfahren erhoben werden müssen.

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T 1045/18 - Rule 137(3)

Key points

• The Examining Division did not admit a set of claims under Rule 137(3). The Board finds this decision to be incorrect.
• The procedure before the ED was as follows: EP entry in 2012, EPO was ISA. Communication in 2014, first summons in 2015, amended claims filed, oral proceedings cancelled, Communication in 2015, Communication in 2016 with a new novelty objection based in D3, cited in the ISR, reply with unamended claims, Summons in 2017, amended claims at issue filed, brief communication informing that the amendments do not make the claims inventive, oral proceedings in the absence of the applicant.
• The Board recalls that under Rule 137(3) EPC, the legitimate interest of the applicant in obtaining a European patent and the interest of the EPO in the efficient conduct of proceedings are to be balanced.
• The Board reasons that in this case, the filing of the amended claims directly in response to the Communication in 2016 would not have led to a more efficient conclusion of the procedure, as then the new inventive step objection would still have to be discussed.
• Moreover, the added feature makes the claim novel and has basis in the application as filed. The Board considers it not relevant that the feature would be obvious. The Board recalls that GL H-II 2.3 do not prescribe that amended claims must be prima facie allowable if they are filed within the Rule 116 period for written submissions. Moreover, the Board does not consider the added feature to be clearly obvious. 
• The Board admits the request under Art. 12(4) RPBA 2007.

EPO T 1045/18 - link


4. Zulassung das Anspruchssatzes vom 10. August 2017 zum Verfahren

Bei der Ausübung des Ermessens nach Regel 137(3) EPÜ muss eine Prüfungsabteilung alle relevanten Faktoren berücksichtigen; insbesondere soll sie einen Ausgleich finden zwischen dem legitimen Interesse des Anmelders am Erhalt eines europäischen Patents und dem Interesse des EPA an einer effizienten Durchführung des Prüfungsverfahrens.

4.1 Zu berücksichtigende Faktoren sind hierbei u.a. der Verfahrensstand und ob der Anmelder bereits ausreichend Gelegenheit zur Änderung der Anmeldung hatte.

4.1.1 Eine zweite Ladung zu einer mündlichen Verhandlung wie im vorliegenden Fall ist für gewöhnlich ein deutliches Indiz für das Endstadium eines bereits ungewöhnlich langen und fortgeschrittenen Prüfungsverfahrens. Zudem stellt die Prüfungsabteilung in ihrer Entscheidung darauf ab, dass die Beschwerdeführerin mit dem Anspruchssatz vom 10. August 2017 bereits die fünfte geänderte Version vorgelegt hat, mithin vorher bereits ausreichend Gelegenheit hatte, Änderungen vorzunehmen.

Message to readers

• First of all, I wish all readers strength in these times.
• Probably EPO case law is the least of our worries these days. Moreover, the Boards have cancelled oral proceedings (at least for now; see the Notice ). I consider that the Boards may possibly pause with publishing new decisions in due time.
• Nevertheless, and for the time being, I will continue publishing posts from the backlog. I would like to add that I usually schedule the publication of posts well in advance.
• My firm (V.O. Patents & Trademarks) is fully operating in 'work from home mode'.

T 0598/17 - Procedural obligation to actively participate

Key points

• The Board does not admit auxiliary requests, filed by the patentee-respondent after the preliminary opinion of the Board.
• “It is the respondent's [patentee's] procedural obligation to actively participate in the proceedings and to react to the grounds of appeal by filing appropriate (auxiliary) requests suitable for overcoming the objections raised in the grounds of appeal.”

EPO T 0598/17 -  link

2. Fifth to eighth auxiliary requests - admittance

2.1 In its reply to the grounds of appeal, the respondent [patentee] had refrained from filing auxiliary requests. It was only after the parties had been summoned and after the board had issued a communication under Article 15(1) RPBA that it filed those requests to which the present fifth to eighth auxiliary requests essentially correspond. The admittance of the present fifth to eighth auxiliary were therefore in the board's discretion (Article 13(1),(3) RPBA).

2.2 According to the respondent [patentee], it had refrained from filing auxiliary requests when replying to the grounds of appeal because in the absence of a preliminary opinion by the board, it had not been clear "in which direction the case would develop".

This argument is flawed. It is the respondent's [patentee's] procedural obligation to actively participate in the proceedings and to react to the grounds of appeal by filing appropriate (auxiliary) requests suitable for overcoming the objections raised in the grounds of appeal. In doing so, it is the respondent [patentee] that determines, to a great extent, "in which direction the appeal case will develop".

T 0296/17 - Incomplete Notice of opposition

Key points

• The opponent had filed an incomplete Notice of opposition (online). Only the first page of the twelve-page reasoned statement was submitted. The Board confirms that the opposition is inadmissible.
• “The appellant argued that the claims of the patent in suit were simple and the case against the patent straightforward. Since the pieces of evidence were filed during the opposition period, the notice of opposition complied with Rule 76(2)(c) EPC.” The Board does not accept this document, as “the opposition division and the patent proprietor were left in the dark as to why and to what extent [these 19 pieces of] evidence had a bearing on each of the grounds of opposition”.
• “The [opponent] also argued that, in the public interest, the case should have been examined by the opposition division of its own motion under Article 114(1) EPC.” “However, the text of Article 114(1) EPC makes clear that such obligation exists "in proceedings before it". If an opposition is inadmissible, there are no "proceedings before the European Patent Office" pending. For this reason the opposition division could not have carried out an examination of its own motion in the present case under Article 114(1) EPC; see also G 9/91”.

T 0296/17 - link

Reasons for the Decision

1. The appeal is admissible.

2. On 11 November 2014 the appellant filed nineteen pieces of evidence, Form 2300E and a notice of opposition which consisted of one page.

The notice requested revocation of the patent in its entirety on the grounds set out in Article 100(a), (b) and (c) EPC. It neither substantiated any of the grounds nor referred to any relevant paragraph of the evidence filed.

This was not contested.

T 0600/18 - Paper debit order, no RE

Key points

• The appellant filed a Notice of appeal by fax on 28.02.2018. Form 1010 was sued for the debit order. The form was signed by the in house professional representative. The debit order is invalid and a request for re-establishment was filed. 
• “The appellant submitted that, due to security considerations and the fact that it operated in the aerospace and defence sector, the EPO's online filing software was not available on its general computers but only on the machines of three paralegals responsible for online filing.”
• On the day at issue, all three paralegals were absent. Moreover, a storm was predicted for 1 March, the last day of the appeal period. Therefore, the patent attorney had himself filed the Notice of appeal of 28 February: “Since none of the regular paralegals was present and the normal way to pay the fees was thus unavailable, the patent attorney in charge of the case decided, under the pressure of the special situation, to use an alternative method of payment, by debit order form 1010.”
• The Board notes that the Notice includes the statement ‘we pay herewith the fee for appeal’. 
• The Board:  “This hints at the assumption (later acknowledged) that, when signing the Notice of Appeal, the patent attorney considered that the appeal fee had already been validly paid using form 1010. ”
• The Board recalls that “a mistake by the representative himself or herself is not normally excusable.”
• “In the present case, it seems that the failure to comply with the time limit to pay the appeal fee was caused by the mistaken belief of the representative that an outdated way to make payments was still acceptable, which was not in fact the case. Thus, at the time of leaving the office, the representative was under the impression that everything necessary to comply with the time limit had been performed. As a consequence, the correct payment was only performed when the representative's firm was made aware of the mistake.”
• The request for re-establishment is refused.

EPO Headnote

No conclusive case has been submitted with the request for re-establishment of rights that explains why an attempt was (erroneously) made to pay the appeal fee using a form that was no longer accepted at the EPO.
Article 122 EPC and the relevant case law does not excuse mistakes by the representative himself or herself that are caused by the ignorance of the latest provisions even if the representative does not normally perform the duty of paying fees himself or herself.
As he or she is the one that is expected to instruct and supervise his or her staff, he or she must always keep informed of the latest developments on how to handle the payment of fees.
As he or she is expected to remember what he or she has learned even in stressful situations it cannot be acknowledged that the mistake has happened despite all due care having been taken.
The situation (stress caused by an upcoming snow storm) cannot be equated with one where a patent attorney was incapable of taking sound decisions due to sudden serious illness or a sudden and unexpected bereavement.


EPO T 0600/18 -  link

Reasons for the Decision

1. The request for re-establishment of the right to appeal the decision of the opposition division dated 22 December 2017 is inadmissible.

1.1 The request has been submitted in writing within two months of the removal of the alleged cause of non-compliance on 2 March 2018 and both the missed appeal fee and the fee for re-establishment have been paid within this time limit.

1.2 However, the request is not admissible for the following reasons.

1.3 Rule 136(2) EPC, 1st sentence, states that the request "shall state the grounds on which it is based and shall set out the facts on which it relies".

1.4 This has been interpreted by the case law of the Boards of Appeal as implying that a conclusive case setting out and substantiating the grounds and facts on which the request relies has to be made (see Case Law of the Boards of Appeal, 9th edition, July 2019, III.E.4.4).

1.5 In the present case, however, no explanation has been given of why the Notice of Appeal filed on 28 February 2018 states "We pay herewith the fee for appeal" and why Form 1010 was submitted on paper, a method of paying that had no longer been acceptable at the European Patent Office since 1 December 2017. This hints at the assumption (later acknowledged) that, when signing the Notice of Appeal, the patent attorney considered that the appeal fee had already been validly paid using form 1010. Thus, the fact that none of the three paralegals able to submit online payments had been present on that day is of no relevance in deciding the case. The same applies to the fact that, due to severe weather conditions, neither the patent attorney nor any of the three relevant paralegals were present in the appellant's office on 1 March 2018.

1.6 Thus, the request for re-establishment does not contain a conclusive case setting out the grounds for the failure to pay the appeal fee in time. Rather, it gives an explanation of why the usual paralegals were not in a position to act. However, the present case is not one where no action has been taken at all, but rather one where the wrong action has been chosen. In this respect a conclusive case has not been submitted that explains why an attempt was (erroneously) made to pay the appeal fee using a form that was no longer accepted at the EPO.

1.7 Therefore, the situation on the day (illness of staff and upcoming storm) was merely the reason why the representative had to act himself. The failure to comply with the time limit was then caused by the representative's lack of awareness that there had been a change in the handling of payments at the European Patent Office. The request for re-establishment fails to give any explanation of the reasons for this real source of non-compliance with the time limit.

2. However, even if such an explanation had been given, as has been done later (see the letter dated 27 July 2018) the request for re-establishment would not have been allowable.

2.1 It can be taken as read that wide parts of the UK faced extremely poor weather conditions on 1 March 2018 (https://www.theguardian.com/uk-news/2018/mar/01/beast-from-east-storm-emma-uk-worst-weather-years). However, on the afternoon of 28 February 2018 the situation was not so extreme that there was an immediate need to evacuate the office or the like. The patent attorney in charge of the case was still able to perform his duties, albeit under pressure to let his staff leave early enough to get home safely.

2.2 For the reasons set out above, the cause of non-compliance with the time limit was the decision of the patent attorney to chose a payment method that was outdated at that stage.

2.3 The case law regarding isolated mistakes within a normally satisfactory system refers to systems where the representative has entrusted tasks such as the monitoring of time limits to well trained staff who operate under his or her supervision. However, as set out for instance in decisions T 1095/06, T 592/11 and R 18/13, a mistake by the representative himself or herself is not normally excusable.

2.4 In the present case the representative was forced by the circumstances to act himself, instead of his well trained and supervised staff. However, a representative acting himself or herself is expected always to be informed of the relevant procedural provisions. In the present case, it seems that the failure to comply with the time limit to pay the appeal fee was caused by the mistaken belief of the representative that an outdated way to make payments was still acceptable, which was not in fact the case. Thus, at the time of leaving the office, the representative was under the impression that everything necessary to comply with the time limit had been performed. As a consequence, the correct payment was only performed when the representative's firm was made aware of the mistake.

2.5 This mistake has been made under the stress of the situation, which might have slightly exceeded other stressful situations an attorney often has to face in the workplace. However the situation as submitted by the appellant cannot be equated with one where a patent attorney was incapable of taking sound decisions due to sudden serious illness or a sudden and unexpected bereavement, as in cases T 525/91 or T 387/11.

2.6 Article 122 EPC and the relevant case law do not excuse mistakes by the representative himself or herself that are the result of ignorance of the latest provisions, even if the representative does not normally perform the duty of paying fees himself or herself. As he or she is the person who is expected to instruct and supervise his or her staff, he or she must always keep informed of the latest developments on how to handle the payment of fees. As he or she is expected to remember what he or she has learned even in stressful situations, it cannot be accepted that the mistake has been made despite all due care having been taken.

2.7 Therefore, even if the appellant had presented its full and conclusive case within its initial request re-establishment could not have been granted.

3. Since the appeal fee has not been paid in due time, according to the reasons set out in decision G 1/18 the appeal is to be treated as not having been filed.

4. As a consequence, the appeal fee has been paid without any legal basis and is to be reimbursed.

Order

For these reasons it is decided that:

1. The request for re-establishment of rights is refused as inadmissible.

2. The appeal is deemed not to have been filed.

3. The appeal fee is to be reimbursed.

T 1875/15 - New allegations of fact

Key points

• The Board does not admit the new objection of the opponent.
• The headnote: “a board has in principle no discretion for not admitting late-filed arguments [following T1914/12]. However, if a late-filed objection includes new allegations of fact, the board has under Article 114(2) EPC the discretion not to admit it into the proceedings.” (note, this is the headnote, the actual text of the decision does not state so literally).
• The Board finds that the late-filed objection  “included a new allegation of fact”. The Board adds that a "fact" in the sense of Article 114(2) EPC has to be understood as “a piece of (allegedly) factual information, on which a party based its case”
• As a comment, I'm not sure whether "allegedly" here should perhaps qualify "information" rather than "factual".
• Board then holds the objection at issues inadmissible because it “included a new allegation of fact”. 
• As a comment, perhaps the Board could also have said that the new allegation of fact is inadmissible and that the objection based on that fact hence fails on the merits. 
• The Board finds that the opponent's assertion that “the skilled person would have interpreted the term "poly"-olefin" in [the application as filed] as to directly and unambiguously meaning "poly-alphaolefin"”, to be an ‘allegation of a fact’.
• I expect that question of whether or not assertions about how the skilled person interprets a text (application as filed, prior art document) are factual assertions, will be of great impact for the appeal framework generally.
• The attack at issue was an Art.100(c) attack. Hence, also added subject-matter objections can involve factual assertions, according to this Board.

EPO T 1875/15 -  link

Admittance of the new objection under Article 100(c) EPC

2. During the oral proceedings before the board, the respondent raised an objection under Article 100(c) EPC based on the feature "polyolefin having a kinematic viscosity from 3 to 20 cSt at 100°C" mentioned among the fluidizing agents required by claim 1 as granted (II, supra). This feature was not, the respondent argued, disclosed in the application as filed. It referred to page 45, lines 14 to 31, and to page 38, lines 20 to 21, of the application as filed and put forward that this passage did not provide a valid basis for this feature of claim 1. The respondent's objection rested on the allegation that the term "poly"-olefin" used in line 16 of page 45 of the application as filed together with the feature of having a kinematic viscosity from about 3 to about 20 cSt at 100°C would have been interpreted by the skilled person as "poly-alphaolefin". Thus the cited passage actually disclosed a poly-alphaolefin having a kinematic viscosity from 3 to 20 cSt at 100°C. Hence, it would not be a basis for the feature of a polyolefin having a kinematic viscosity from 3 to 20 cSt at 100°C included in claim 1 as granted.

2.1 Up to the oral proceedings, said feature had never been objected to under Article 100(c) EPC. It had in particular never been in dispute that "poly"-olefin" in line 16 of page 45 of the application as filed meant "poly-olefin" and it had never been argued that it actually had to be read as "poly-alphaolefin". As not disputed by the respondent, its objection thus amounted to a new objection under Article 100(c) EPC.

The respondent requested that this new objection be admitted into the proceedings. It brought forward (X, supra) that this new objection was a new argument. As such, no discretion was available to the board under Article 114(2) EPC for not admitting it.

As set out above, the new objection was raised for the first time during the oral proceedings. It is thus late-filed. According to Article 114(2) EPC, the European Patent Office may disregard facts or evidence which are not submitted in due time by the parties concerned.

2.2 The board acknowledged that in view of Article 114(2) EPC, it had in principle no discretion for not admitting late-filed arguments. This was also the conclusion reached e.g. in T 1914/12 (reasons, 7.2.3).

2.3 However, the respondent's objection included not only legal but also factual considerations.

2.3.1 The legal consideration underlying the objection was the following:

Article 100(c) EPC prejudices the maintenance of the patent as granted if the objected feature of granted claim 1 is not directly and unambiguously disclosed in the newly cited passage nor in the rest of the application as filed. The direct and unambiguous disclosure has to be judged with the eyes of the skilled person and their common general knowledge available at the priority date of the opposed patent.

2.3.2 The factual (and technical) consideration was the following:

What was the skilled person's common general knowledge at the priority date of the contested patent? How would the skilled person apply it to interpret the newly cited passage of the application as filed and what would be the result of this interpretation?

In the case in question, the factual and technical consideration was what the term "poly"-olefin" in line 16 of page 45 of the application as filed meant, and the result of this consideration was that it either had to be read as "polyolefin" or "poly-alphaolefin".

2.4 The respondent's allegation that the latter was true, such that the corresponding feature in claim 1 as granted was not based on the application as filed, was not an argument but rather an allegation of a fact, namely, the fact that the skilled person would have interpreted the term "poly"-olefin" in line 16 of page 45 of the application as filed as to directly and unambiguously meaning "poly-alphaolefin".

Therefore, the respondent's late-filed objection included a new allegation of fact. Thus, the board had under Article 114(2) EPC the discretion not to admit the respondent's late-filed objection.

2.5 This finding was in agreement with T 1914/12 (reasons, 7.1.4). As set out in that decision, a "fact" had to be understood as a piece of (allegedly) factual information, on which a party based its case.

The board's view in the present case was also in line with decisions T 0635/14 (reasons 3.1 to 3.3) and T 1381/15 (reasons 3), where the entrusted boards also regarded late-filed objections as new allegations of facts.

2.6 As the board had the discretion to admit or reject the respondent's late-filed objection, it had to decide how to exercise this discretion. In doing so, it had to take the Rules of Procedure of the Board of Appeal (RPBA 2007) into account. The late-filed objection was brought forward by the respondent during oral proceedings before the board, i.e. at the latest possible stage of the appeal proceedings. It thus represented an amendment of the respondent's case to be dealt with pursuant to Article 13(1) and (3) RPBA 2007.

Under Article 13(1) RPBA 2007, the board exercises its discretion in view of, inter alia, the complexity of the new subject-matter submitted, the state of the proceedings and the need for procedural economy.

Under Article 13(3) RPBA 2007, new allegation of facts submitted at oral proceedings shall not be admitted if they raise issues which the board or the other party cannot reasonably be expected to deal with without adjournment of the oral proceedings.

[...]

2.9 This completely new assessment of compliance with the issue of added matter at the oral proceedings would also have been contrary to procedural economy. Moreover, the appellant (and the board) could not reasonably have been expected to deal with it without adjournment of the oral proceedings.

2.10 In exercising its discretion under Article 114(2) EPC and with due regard to Article 13(1) and (3) RPBA 2007, the board thus decided not to admit the late-filed objection under Article 100(c) EPC raised by the respondent at the oral proceedings.

T 0702/15 - Always keep something pending

Key points

• The proprietor withdraws the appeal shortly before the oral proceedings. The opponent then requests a 'different apportionment of costs' (cost order against patentee). The Board is, of course, decide on the request for apportionment. The Board does not order a cost apportionment, because “an appellant is entitled to withdraw its appeal at any time. In view of the principle of free party disposition, this right may not be restricted.” As a comment, CLBA III.R.2.4 actually continues the cited sentence as follows: "this right may not be restricted, even implicitly by the threat of cost apportionment, on the grounds that oral proceedings have been scheduled and the opposing party cannot be notified in time".
• The opponent added that “[the patent in suit] was the parent application of four divisional applications, directed to similar subject matter. The appellant withdrew its approval of the text of those already granted; two of them were still in examination proceedings. By withdrawing its appeal, the appellant was preventing any decision on that subject-matter.”
• The Board does not see a ground for a cost apportionment in this. The Board adds that “Article 76(1) and Rule 36 EPC stipulate the conditions under which a divisional application can be filed. The board fails to see any basis in the EPC for a different treatment of a divisional application if a patent arising from an earlier application is no longer defended by its proprietor.”
• As a comment, I note that the OD's decision to revoke the patent is now final. As to whether such a decision has a res judicata or estoppel effect on the divsional, see CLBA II.F.2.4.3.

EPO T 0702/15 -  link

Reasons for the Decision

1. The appeal is admissible.

2. As the appellant in the present appeal proceedings has withdrawn its appeal, the sole issue remaining is the request of respondent 1 that all the costs incurred during these appeal proceedings be awarded against the appellant.

3. Costs (Article 104(1) EPC)

3.1 Under Article 104(1) EPC, each party in opposition proceedings bears the costs it has incurred, unless the opposition division, for reasons of equity, orders a different apportionment of costs. This principle applies equally to opposition-appeal proceedings in view of Article 111(1) EPC in conjunction with Rule 100(1) EPC (see T 2165/08 of 6 March 2013, Reasons 45).

3.2 Respondent 1 requested that the board award all of its costs against the appellant for the following reasons.

3.2.1 By withdrawing its appeal at a late stage, the appellant had obliged respondent 1 to perform a considerable amount of unnecessary preparatory work.

However, according to case law (Case Law of the Boards of Appeal of the EPO, 9th edition 2019, III.R.2.4), an appellant is entitled to withdraw its appeal at any time. In view of the principle of free party disposition, this right may not be restricted. As a rule, the benefits that respondents derive from the withdrawal of the appeal offset the costs they have incurred.

3.2.2 Respondent 1 also argued that the patent in suit had considerable economic value and was the parent application of four divisional applications directed to similar subject-matter. The appellant had also withdrawn its approval of the text of those two divisional applications already granted; the remaining two were still in examination proceedings. According to respondent 1, it was clear from the appellant's passivity with regard to these appeal proceedings that it had never intended to defend its case. It had not filed any response to the issues raised in the responses to the statement of grounds of appeal. It did not reply to the communication of the board in preparation for oral proceedings. It had also not requested interpretation. The withdrawal formed part of the patent proprietor's strategy of trying to avoid any substantive decision on the claimed subject-matter. A similar strategy had been used in the family of divisional applications arising from the European patent which resulted in appeal T 211/15. Intentionally prolonging legal uncertainty about the claimed invention should not be allowed.

However, respondent 1 is relying only on assertions about what the strategy of the appellant might have been. The present appeal is based on the decision of the opposition division that the patent in suit contained added subject-matter. The board had informed the parties in a communication annexed to the summons to oral proceedings that it intended to examine the issues of the admissibility of requests, added subject-matter and Rule 80 EPC, and to remit the case to the opposition division if any request before it did not show any of those deficiencies. The withdrawal of the appeal did not prevent the board from taking a decision on the patentability of the claimed subject-matter, since it was not minded to examine all of the issues raised in the opposition proceedings.

3.2.3 Lastly, respondent 1 objects to the fact that the EPO could grant patents based on divisional applications which related to subject-matter granted and then subsequently abandoned.

Article 76(1) and Rule 36 EPC stipulate the conditions under which a divisional application can be filed. The board fails to see any basis in the EPC for a different treatment of a divisional application if a patent arising from an earlier application is no longer defended by its proprietor.

In addition, the powers of a technical board of appeal are limited to examining the case before it. The EPC does not allow a technical board to instruct an examining division dealing with a case which is not the one under appeal. Under Article 18(1) EPC, only the examining division is responsible for the examination of the case before it.

Furthermore, the board fails to see any connection between the examination of divisional applications and the present request regarding a different apportionment of costs.

3.3 The board thus sees no reason to order a different apportionment of costs for the present proceedings.

Order

For these reasons it is decided that:

The request of respondent 1 for a different apportionment of costs is refused.

T 0314/17 - Ex officio examination in opposition appeal

 Key points

• This is an appeal of the opponent against the OD's decision to reject the opposition.
• The Board finds claim 1 of the main request to lack inventive step; the same applies to AR-1 and AR-2.
• “The Board would first note that although the auxiliary requests were filed with the reply to the appeal, the appellant [opponent] made no specific objections to them, also not in reply to the Board's preliminary opinion, where this fact was brought to the parties' attention. The appellant [opponent]  had however presented arguments with respect to the subject-matter of the dependent claims present in the main request, upon which claim 1 of auxiliary requests 3, 4 and 8 are based.  The Board, having considered the auxiliary requests ex officio, stated in item 5.4 of its preliminary opinion that E6 seemed to disclose the features regarding the two curvatures added to claim 1 of auxiliary requests 3 and 4, effectively depriving the claim of an inventive step. his corresponds to the attacks regarding dependent claims 3 and 4 made by the appellant [in the Statement of grounds]”.
• The Board gives further detailed reasons for lack of inventive step of the requests and confirms the preliminary opinion.
• The decision was issued without oral proceedings, the patentee withdrawing the request for oral proceedings and the Board revoking the patent.

EPO T 0314/17

https://www.epo.org/law-practice/case-law-appeals/recent/t170314eu1.html

2. Auxiliary requests 3 and 4 - Article 56 EPC

2.1 The Board would first note that although the auxiliary requests were filed with the reply to the appeal, the appellant made no specific objections to them, also not in reply to the Board's preliminary opinion, where this fact was brought to the parties' attention. The appellant had however presented arguments with respect to the subject-matter of the dependent claims present in the main request, upon which claim 1 of auxiliary requests 3, 4 and 8 are based.

2.2 The Board, having considered the auxiliary requests ex officio, stated in item 5.4 of its preliminary opinion that E6 seemed to disclose the features regarding the two curvatures added to claim 1 of auxiliary requests 3 and 4, effectively depriving the claim of an inventive step. This corresponds to the attacks regarding dependent claims 3 and 4 made by the appellant on page 7 of its grounds of appeal, where it objected to these claims on the basis of a lack of inventive step.

2.3 The respondent did not present any counter-arguments to the preliminary opinion of the Board and specifically asked for a decision of the merits of the case to be issued in writing without holding oral proceedings. The Board thus sees no reason to alter that preliminary conclusion, which is herewith confirmed on the more detailed reasoning following hereafter. Since the Board already indicated that the subject-matter of claim 1 of the main request lacked inventive step, specifically mentioning E6 among other prior art with a ratio A/B smaller than 1, and given that the Board noted that E6 was considered to indeed disclose the additional features of auxiliary requests 3 and 4, this conclusion could not come as a surprise but should rather be expected.

[...]

2.10 For the above reasons, the subject-matter of claim 1 of auxiliary requests 3 and 4 is obvious to a skilled person when starting from E1 and considering the teaching of E6. Auxiliary requests 3 and 4 are therefore not allowable due to lack of inventive step in their claimed subject-matter.

[...]

3.6 The subject-matter of claim 1 of auxiliary requests 5, 6, 7 and 8 therefore does not to fulfil the requirement of Article 123(2) EPC at least for the reasons given above. Auxiliary requests 5, 6, 7 and 8 are therefore not allowable.

3.7 In the absence of any request which meets the requirements of the EPC, the patent has to be revoked (Article 101(3)(b) EPC).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

T 2734/16 - Using patentee's documents for new attack

Key points

• In this opposition case, the patentee had filed documents W7 and W11 before the OD, with the argument that because W7 and W11 illustrate the kind of device as claimed, the other document D1 was not the closest prior art. The OD then did not admit the opponent's inventive step attack starting from W7 and W11. 
• The Board decides that the OD should have admitted the attack: “ ist der [opponent] im Rahmen der Waffengleichheit zuzugestehen, die ihr erst durch von der Gegenseite neu eingereichte Dokumente zur Kenntnis gebrachten Tatsachen in ihrem eigenen Sinne aufzugreifen und zu einem Gegenangriff mit einer neuen Angriffslinie gegen die erfinderische Tätigkeit zu verwenden. Da dieser Gegenangriff erst möglich geworden war, nachdem die [patentee] diese Dokumente zu ihrer Verteidigung eingereicht hatte, erscheint es bei Abwägung aller Umstände nicht sachgerecht, die Zulassung der neuen Angriffslinie unter dem Gesichtspunkt der Verspätung und der mangelnden Relevanz der Dokumente, auf die sie gestützt ist, abzulehnen.”
• On the other hand, the Japanese patent documents E11-E14 are not admitted as being late-filed. The fact that the documents are in the Japanese language, with no family members in other languages, is no reason for admitting them.
• “Die Kammer ist der Auffassung, dass dies die Verspätung nicht entschuldigen kann. Das EPÜ kennt keinen Unterschied betreffend den Stand der Technik in Abhängigkeit von der Sprache, sei sie nach europäischen Maßstäben lesbar oder nicht”

EPO T 2734/16 -  link

EPO Headnote
1. Eine neue Angriffslinie auf die erfinderische Tätigkeit, die als Reaktion und unter Verwendung der von der Patentinhaberin mit der Einspruchserwiderung eingereichten Dokumente verfolgt wird, ist nicht per se als verspätet anzusehen. Sie kann aus Gründen der Waffengleichheit in das Einspruchsverfahren zugelassen werden, auch wenn die Dokumente im Ergebnis nicht relevanter als andere Dokumente sind (Siehe Punkt 1.4.1).
2. Das späte Einreichen von zufällig bekannt gewordenen Entgegenhaltungen ist nicht schon allein deswegen zulässig, weil sie in der japanischen Sprache verfasst sind und deren Auffindbarkeit deswegen unter Umständen erschwert gewesen sein mag. Dies gilt umso mehr, wenn dem Einreichenden die Bedeutung japanischer Unternehmen auf dem fraglichen technischen Gebiet bekannt war und deshalb Veranlassung zu rechtzeitigen umfassenden Recherchen bestand (Siehe Punkt 1.4.2).

1.4 Erfinderische Tätigkeit - Artikel 56 EPÜ

1.4.1 Artikel 12(4) VOBK - Zulassung der Angrifflinie gestützt auf W7 und W11

Die Einspruchsabteilung hat die Dokumente W7 und W11 als verspätet vorgebrachte Tatsachen in Bezug auf die erfinderische Tätigkeit angesehen, die prima facie nicht relevant gewesen seien, und hat diese nicht zum Verfahren zugelassen (siehe Punkt 19.1 der Entscheidung).

T 2227/15 - Not admitting the attack

Key points

• The Board concludes that Art.13(1) RPBA 2020 applies also to submissions filed before 01.01.2020: “where the summons to oral proceedings or a Rule 100(2) EPC communication has been notified before 1 January 2020, Article 13(1) RPBA 2020 applies simultaneously with Article 13(1) and (3) RPBA 2007. Where such notification has been done after that date, solely Article 13 RPBA 2020 applies without exception”.
• The Board also issues an abridged decision (in part): “The Board concludes from this precondition of concurrence with (parts of) the decision under appeal as well as from the legislator's intention []  that [it can] refer [in the present decision] to those parts of the findings and reasons in the decision under appeal to which it agrees.”
• The opponent raised a novelty attack based on public prior use with the statement of grounds. The Board does not admit it under Art.12(4) RPBA 2007. The appellant had cited T560/89 and T258/84. 
• “the aforementioned decisions were issued several years before entry into force of the Rules of Procedure of the Boards of Appeal 2003 by which the provision equivalent to Article 12(4) RPBA 2007 was first introduced [OJ 2003, p.61], the Board notes that both decisions are not pertinent in the present case for evaluating admittance of the novelty attack pursuant to Article 12(4) RPBA 2007.” (T560/89 is cited in CLBA IV.C.4.5.3; T258/84 in IV.C.4.5.1; chapter IV of the CLBA is about first instance proceedings but they seem to be both cited for admissibility in appeal). The Board does not admit the attack.
• The Board concludes that claim 1 is novel over D1, as already found by the OD. “The [opponent-appellant] intended for the first time at the oral proceedings before the Board to argue against inventive step of the claimed subject-matter based on the teaching of D1 in combination with the common general technical knowledge of the person skilled in the art.”
• The Board does not admit the attack. “the Board concludes that admitting into the proceedings the line of argument relating to lack of inventive step of the claimed subject-matter would not only substantially add to and considerably change the complexity of the matter to be discussed and decided upon, but would be contrary to the need for procedural economy and would take the [patentee respondent] by surprise.”
• “Consequently, applying Article 13(1) RPBA 2020 as well as Article 13 RPBA 2007, in particular Article 13(1) and (3) RPBA 2007, the Board does not admit into the appeal proceedings the appellant's inventive step attack based on the combination of the teaching of D1 as the closest prior with the common general technical knowledge of the person skilled in the art”.

EPO T 2227/15 -  link

Reasons for the Decision

1. Revised Rules of Procedure of the Boards of Appeal (RPBA 2020) - Transitional provisions

The present proceedings are governed by the revised version of the Rules of Procedure which came into force on 1 January 2020 (Articles 24 and 25(1) RPBA 2020), except for Articles 12(4) to (6) and 13(2) RPBA 2020 instead of which Articles 12(4) and 13 RPBA 2007 remain applicable (Article 25(2) and (3) RPBA 2020).

The general applicability of the RPBA 2020 to the present proceedings includes Article 13(1) RPBA 2020, irrespective of the fact that the summons to oral proceedings was notified before 1 January 2020.

T 1621/16 - Combination of preferred amounts

Key points

• Claim 1 at issue is directed to a composition comprising two components. For each component, the claim is amended by adding an amount taken from a list of preferred amounts. Hence, two amounts from lists of preferred amounts are combined. Does this violate Art.123(2) EPC under the rule that “ a selection from two or more lists of a certain length ... confers novelty” (T12/81, not cited by the Board)?
• The patentee argues that these lists are ‘convergent lists’  in that “lists of options ranked from the least to the most preferred, wherein each of the more preferred alternatives is fully encompassed by all the less preferred and broader options in the list”; this is different from a normal list of the type “wherein the metal is gold, silver, or iron” (but similar to the case where the list is: "a solid material, preferably a metal, preferably iron or iron-based alloy, preferably stainless steel”.
• The Board: “The board considers that selections from lists of converging alternatives should not be treated in the same way as selections from lists of non-converging alternatives”.
• The Board reasons that “ a claim amended on the basis of multiple selections from lists of converging alternatives might be considered to meet the requirements of Article 123(2) EPC if” (i.e. necessary but not sufficient conditions): 1) the selection is “not associated with an undisclosed technical contribution” and 2) “the application as filed includes a pointer to the combination of features”.
• “[The] board concludes that the subject-matter of claim 1 at issue is clearly and unambiguously derivable from the application as filed, and so meets the requirements of Article 123(2) EPC, because the amendments to claim 1 are based on a combination of i) a single selection of a preferred element from a list of non-converging alternatives, ii) selections from lists of converging alternatives and iii) claims as originally filed, wherein the resulting combination of features is pointed to by examples of the application as filed and is not associated with an undisclosed technical contribution.
  
• update  08.04.2020: see also T 0375/15:
  The combination of an individual range from a first list with another individual range from a second list of ranges and relating to a different feature is not considered disclosed in the application as filed unless there is a clear pointer to such a combination. The indication that ranges are especially preferred is considered a clear indication for the intended parallel convergence of the ranges of the two lists, and the combination of these two especially preferred ranges is considered to satisfy the requirements of Article 123(2) EPC

EPO Headnote
1) When fall-back positions for a feature are described in terms of a list of converging alternatives, the choice of a more or less preferred element from such a list should not be treated as an arbitrary selection, because this choice does not lead to a singling out of an invention from among a plurality of distinct options, but simply to a subject-matter based on a more or less restricted version of said feature.

2) A claim amended on the basis of multiple selections from lists of converging alternatives might be considered to meet the requirements of Article 123(2) EPC if:
- the subject-matter resulting from the multiple selections is not associated with an undisclosed technical contribution, and
- the application as filed includes a pointer to the combination of features resulting from the multiple selections.


EPO T 1621/16  -  link

Reasons for the Decision

1. Main request - Article 123(2) EPC

1.1 The board has concluded that this request complies with the requirements of Article 123(2) EPC.

1.2 Claim 1 as originally filed read as follows:

"1. A liquid hand dishwashing detergent composition comprising:
(a) from 0.1 % to 20% by weight of the total composition of a chelant,
(b) from 18% to 80% by weight of the total composition of a surfactant selected from the group consisting of anionic, nonionic, cationic, amphoteric, zwitterionic, semi-polar nonionic surfactants and mixtures thereof; and
(c) a nonionic surfactant;
wherein the weight ratio of total surfactants to nonionic surfactant is from 2 to 10."

1.3 In comparison to above claim, claim 1 of the main request has been amended as follows:

"1. A liquid hand dishwashing detergent composition comprising:

(a) from [deleted: 0.1 % to 20%] 0.2% to 3% by weight of the total composition of [deleted: a chelant ]glutamic-N, N-diacetic acid;
(b) from [deleted: 18% to 80%] 15% to 25% by weight of the total composition of [deleted: a surfactant selected from the group consisting of anionic, nonionic, cationic, amphoteric, zwitterionic, semi-polar nonionic surfactants and mixtures thereof ]an anionic surfactant selected from the group consisting of alkyl sulfates and/or alkyl ethoxy sulfates with a combined ethoxylation degree of less than 5;
(c) from 3% to 20% by weight of the total composition of a nonionic surfactant selected from the group consisting of C8-C22 aliphatic alcohols with 1 to 25 moles of ethylene oxide; and
(d) from 0.5% to 10% by weight of the total composition of a surfactant selected from the group consisting of amine oxide and betaine surfactants and mixtures thereof,
wherein total surfactant level is from 18% to 45% by weight of the total composition, and
wherein the weight ratio of total surfactants to nonionic surfactant is from 2 to 10."

1.4 The appellant argued that the amendments were based on multiple selections from lists of converging alternatives (i.e. lists of options ranked from the least to the most preferred, wherein each of the more preferred alternatives is fully encompassed by all the less preferred and broader options in the list), and that these should not be considered to be equivalent to selections from lists of non-converging elements (i.e. mutually exclusive or partially overlapping alternatives), because selecting more or less preferred options did not lead to a singling out of an invention from among distinct alternatives but to more or less restricted versions of a single invention. The appellant also argued that selections from lists of converging alternatives were analogous to deletions of elements from lists, which according to established case law (T 615/95, Reasons, points 4.3 and 6) represented a restriction of the scope of protection and were allowable under Article 123(2) EPC.

T 1232/16 - No reasoned decision

Key points

• In this examination appeal, the application was refused on the ground of lack of inventive step.
• The appealed decision stated, in relevant part that “Claim 40 refers to "a predetermined condition". The following method steps in this claim depend on this first step to identify a predetermined condition. As this predetermined condition seems to comprise any possible condition it is not clear what the technical purpose would be of identifying and using this condition. (Article 56 EPC)”.
• The Board: “However, this statement at most deals with the contribution to inventive step of a single feature of the claim. That is however not a sufficient reason for concluding that the subject-matter of the entire claim lacks an inventive step. The board thus agrees with the appellant that the examining division failed to provide a detailed feature-by-feature analysis in the decision to reject claim 40 of the main and auxiliary requests, such that it is impossible to understand how and why the subject-matter was rejected based on the disclosure of document D2.”
• This is a substantial procedural violation. Nevertheless, the appeal fee is not reimbursed, because the ED had refused the application on the additional ground of lack of clarity, which ground was correctly raised and was addressed by amendments in appeal (by deleting the feature "via a network" ).
•  The Board furthermore indicates that, contrary to the appealed decision, a claim for a system "configured to ..." "is a standard way of defining apparatus features in functional terms" and is clear. 

EPO T 1232/16 -  link

Reasons for the Decision

1. Right to be heard - decision not reasoned

1.1 Rule 111(2) EPC EPC stipulates that a decision which is open to appeal must be reasoned, i.e. comprise a logical chain of argumentation explaining how the examining division came to its decision (cf. e.g. T 278/00, OJ EPO 2003, 546, point 2 of the reasons).

1.2 One of the grounds for refusing the application is that the subject-matter of claim 40 of the main request and of each of the auxiliary requests does not involve an inventive step within the meaning of Article 56 EPC. However, each part of the decision expressly dealing with this matter consists merely of a recital of the claim of the respective request (cf. points 1.2, 2.2, 3.2, 4.2, 5.2 and 6.2 of the reasons).

1.3 In an introductory section of the decision (cf. the top of page 5), the following is stated:

"Claim 40 refers to "a predetermined condition". The following method steps in this claim depend on this first step to identify a predetermined condition. As this predetermined condition seems to comprise any possible condition it is not clear what the technical purpose would be of identifying and using this condition. (Article 56 EPC)".