T 1171/16 - Weak presumption

Key points

• The Boards clarifies that for a weak presumption of sufficiency of disclosure of a patent, it is not a necessary requirement that the patent does not give any information whatsoever on how a feature of the invention can be put into practice.
• The Board finds that in the present case, the “single embodiment and a list of possible materials for various parts of the article"  in the patent “gives a skilled person little guidance”. The Board  then remarks that “even any such "weak", presumption that might exist has, in the Board's view, already been rebutted by the [opponent's] arguments"  regarding the lack of information.

T 1171/16  - link

Reasons for the Decision

1. Article 83 EPC

1.1 In its preliminary opinion (see items 2.1 to 2.6 of the Board's communication) the Board stated that the invention according to claim 1 of the main request seemed not to be sufficiently clearly and completely disclosed in a manner such that the skilled person can perform the invention over the whole range claimed.

1.2 Since no further arguments were received in reply to its preliminary opinion, the Board sees no reason to alter its provisional opinion, which is thus confirmed herewith.

1.3 The disclosure of the patent contains a single workable embodiment (Inventive Sample 1) for putting the invention into practice and, as pointed out by the respondent, paragraph [0052] discloses that the flexibility of the material may be improved by chemically treating or mechanically working (tenderizing) the material. However, the Board finds that this alone is not sufficient to guide the skilled person to reliably obtain further embodiments falling within the whole range claimed.

1.4 The respondent argued that paragraphs [0043]-[0055], [0064]-[0066], [0084] and [0086] disclosed several possibilities of adapting an absorbent system that would allow the skilled person to modify the ratio BW/MCB and the parameters Rewet or FPT without undue burden. However, the Board does not concur.

[...]

1.8 In regard to the respondent's citation of T 63/06 and its argument that this decision would only be applicable when the patent did not provide any information, it is noted that this decision states (see Reasons 3.3.1 to 3.3.4) that only a weak presumption of validity would be present when (as explained above) "the patent specification does not contain detailed information of how to put the invention into practice". A single embodiment and a list of possible materials for various parts of the article gives a skilled person little guidance. The cited decision however, contrary to the passage cited from the Case Law Book and the respondent's argument in this regard, does not conclude that, for the burden of proof to be shifted, it is necessary for the patent not to give any information whatsoever on how a feature of the invention can be put into practice.

In the present case, even any such "weak", presumption that might exist has, in the Board's view, already been rebutted by the appellant's [opponent's] arguments regarding the lack of information as to how the parameters BW, MCB, Rewet and FTP should be modified and how these would affect each other in respect of arriving at combinations of materials falling within the whole range claimed. As a consequence, the Board finds that the respondent [patentee] indeed had the burden of proof for its contrary assertion that the disclosure in the patent and/or trial and error attempts would indeed be sufficient to enable the skilled person to obtain embodiments falling within the whole range claimed.

1.9 For the reasons above, the invention of claim 1 of the main request fails to meet the requirements of Article 83 EPC. The main request is therefore not allowable.

1.10 Claim 1 of auxiliary requests 1 to 3 has the same wording as claim 1 of the main request and thus does not meet the requirements of Article 83 EPC for the same reasons as claim 1 of the main request. Correspondingly, auxiliary requests 1 to 3 are also not allowable.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

T 0101/17 - The costs of inadmissible requests

Key points

• The Board considers the claims as granted to be not novel over D3 and does not admit the auxiliary requests. The novelty attack was already in the notice of opposition, and the OD had considered the claims to be not novel in the preliminary opinion and in the impugned decision. The patentee appeals and auxiliary requests are filed with the Statement of grounds. The Board concludes that the requests should have been filed in the first instance proceedings and does not admit them (Article 12(4) RPBA 2007).
• The opponent requests an apportionment of costs. 
• “The respondent [opponent] submitted that although the auxiliary requests were found inadmissible, it had nonetheless been necessary to prepare for the scenario that they would be admitted and to subsequently address them content-wise. This took the representative a total of 35 hours. Such time and expense could have been avoided had the appellant-proprietor refrained from filing these requests and restricted its case to a defence of the claims as granted (as would have been the proper thing to do in the circumstances).”
• The Board does not grant that request. The Board cited T1848/12: “Preparations for discussing the admission of late-filed documents into the proceedings during the opposition-appeal proceedings and, if they are admitted, preparations for discussing their relevance in respect of the patentability of the claimed subject-matter are part of the normal work that can be expected of any party to the proceedings and/or its representative in opposition-appeal proceedings.”
• I note that T1848/12 does not say that ‘preparations for discussing their relevance in respect of the patentability of the claimed subject-matter’ are ‘part of the normal work’ for inadmissible requests. T1848/12  says so explicitly only for requests that are admitted.
• I'm also not sure if the remark in T1848/12 applies to the vexatious filing of requests (though the opponent does not seem to have argued that the filing of the requests in the present appeal was vexatious or an abuse of procedure, though see below).
• The present Board adds that: “The Board further observes that in order to establish any causal link between the respondent's [opponent's] expenses and the appellant-proprietor's behaviour, the respondent [opponent] would have to show that it was particularly the belated filing of requests that caused the expense rather than the filing of requests as such. As it was the appellant's [sic, I think ' opponent'] argument that the filing of the auxiliary requests in appeal (rather than at the stage of opposition) was abusive and improper, a comparison between timely and belated filing of the requests would be necessary in order to establish causality of damage in the form of attorney's fees.”
• In my view, the comparison could more logically be made to the patentee not filing the inadmissible requests in appeal. If we assume that filing the requests in the appeal stage was unreasonable because they were clearly inadmissible, it can also be said that a diligent patentee would have refrained from filing such obviously inadmissible requests. For Article 12(4) RPBA 2007 we assume that the patentee diligently (or at least consciously) decided to not file the requests before the OD, but the present Board assumes for Art.104 that a diligently acting patentee would have filed the requests. 
• With the present Board's analysis, the late filing of (numerous) requests (or documents) appears to be a rather low-risk strategy, even if the submissions are obviously inadmissible, with clear advantages (distracting and burdening the opponent) and few disadvantages (perhaps that the Boards holds all requests inadmissible whereas they would have admitted some if only few AR's were filed). 

EPO T 0101/17 -  link

4.3 In light of the foregoing approach that the Board endorses, it might be a convenient moment to take a look at the course of opposition proceedings in this case.

Already the notice of opposition alleged a lack of novelty of the patent as granted over document D3. In its annex to the summons to oral proceedings, the opposition took the provisional view that "the subject matter of independent claim 1 of the patent-in-suit lacks novelty also over D3", amongst other documents that it also saw as novelty destroying. The decision under appeal confirmed the finding that "the subject matter of claim 1 is not novel over D3". When the opposition division came to this conclusion during oral proceedings, the protocol notes that "the chairman gave the opportunity to the patent proprietor to file further requests. The patent proprietor confirmed that it did not wish to file any further request." It was only at the stage of appeal that the appellant-proprietor decided to file requests meant to overcome a potential lack of novelty of the patent as granted, and requested that, should the Board find any of these requests novel and compliant with Art. 123(2) EPC, it remit the case to the department of first instance for further examination of inventive step issues.

T 1609/15 - We tried to settle with the opponent

Key points

• Patentee disputes the alleged public prior use for the first time during the oral proceedings before the Board. The Board does not admit the argument.
• The Board does not accept the submitted justification for the late filing of the arguments, that patentee had tried to settle with the opponent until the oral proceedings.
• The Board: “das entsprechende Verhalten bzw. Strategie der Beschwerdegegnerin der gebotenen Verfahrensökonomie widerspricht”.
• I wonder if denying factual assertions of the other party counts as a 'fact' under T1914/12.
  
• As a separate procedural issue: both opponents appealed, the patentee did not appeal. Opponent 2 withdraws the appeal. The Board states that therefore Opponent 2 is therefore ‘am Beschwerdeverfahren nicht mehr beteiligt’. I wonder if the opponent isn't party as of right under Article 107, second sentence ("Any other parties to the proceedings shall be parties to the appeal proceedings as of right."). 

EPO T 1609/15 - link

Sachverhalt und Anträge

I. Die Einsprechende 2 hat gegen die Entscheidung, mit der ihr Einspruch gegen das europäische Patent Nr. EP 2 114 815 zurückgewiesen wurde, form- und fristgerecht Beschwerde eingelegt. Eine gleichfalls von der Einsprechenden 1 (Krones AG) wirksam eingelegte Beschwerde wurde von dieser mit Schriftsatz vom 28. November 2019 zurückgenommen, mit der Folge, dass diese Einsprechende damit am Beschwerdeverfahren nicht mehr beteiligt ist.

Entscheidungsgründe

2. Zulassung der in der mündlichen Verhandlung vorgebrachten Änderungen des Vorbringens der Beschwerdegegnerin

In der mündlichen Verhandlung argumentierte die Beschwerdegegnerin [patentee], dass die offenkundige Vorbenutzung "Altmühltaler Mineralbrunnen" insgesamt zu bestreiten sei, weil diese auf widersprüchlichen Aussagen von unglaubwürdigen Zeugen basiere und dass nicht bewiesen worden sei, dass die Anlage der Vorbenutzung "Altmühltaler Mineralbrunnen" im Betrieb das beanspruchte Verfahren ausführte.

T 0688/14 - The normal tasks of the skilled person and expectation of success

Key points

• In this opposition appeal, the Board concludes that the claim at issue is obvious. 
• The Board: “although the case law defines the skilled person as being cautious and having a conservative attitude [...], it also acknowledges that furthering the existing state of art belongs to the normal tasks of the skilled person and that routine adaptations or trials as well as the use of known alternatives do not go beyond what may be normally expected from an average person skilled in the art”
• “The question whether a skilled person would do something may be answered by assessing first whether there was any motivation or incentive for the skilled person to do it and, if this question is answered in the positive, to assess then the expectations of the skilled person for doing it.” (emphasis added). 
• This approach makes sense to me.
• As regards the expectations of the person skilled in the art, the board considers that they are always directly associated with the intended purpose and thus, intrinsically linked to the formulated technical problem.
  When the intended purpose or the technical problem are formulated in very ambitious terms, such as the achievement of a significant improvement or a surprisingly advantageous effect over the prior art, the expectations of the skilled person to succeed are correspondingly more difficult to be fulfilled.
  The expectations to succeed are certainly much greater, when the intended purpose or the technical problem are formulated in less ambitious terms, such as in the present case, namely the provision of a simple alternative to the method known from the prior art.
• About try-and-see: “the case law acknowledges that, in certain cases, a skilled person may adopt a "try and see" attitude and, in these cases, there is not need to have any sort of expectation” .

EPO T 0688/14 - link

[line breaks added for legibility]


25. The question whether a skilled person would do something may be answered by assessing first whether there was any motivation or incentive for the skilled person to do it and, if this question is answered in the positive, to assess then the expectations of the skilled person for doing it.

25.1 As regards the first question, although the case law defines the skilled person as being cautious and having a conservative attitude (cf. "Case Law", supra, I.D.8.1.3, 191), it also acknowledges that furthering the existing state of art belongs to the normal tasks of the skilled person and that routine adaptations or trials as well as the use of known alternatives do not go beyond what may be normally expected from an average person skilled in the art (cf. inter alia, T 455/91, OJ EPO 1995, 684, point 5.1.3.3 of the Reasons; T 659/00 of 1 July 2003, points 8 and 9 of the Reasons; T 769/03 of 23 September 2004, point 6 of the Reasons; T 1439/04 of 22 June 2006, point 3 of the Reasons).

In the present case, the skilled person was well aware of the commercial relevance of human factor VIII as reflected by the widespread interest for its industrial production (cf. document (3)). Thus, there is no doubt that a skilled person would be highly motivated to seek appropriate modifications, changes and alternatives to the methods for production described in the art.

In the present case, the proposed solution is part of the common general knowledge of the skilled person; it does not require the skilled person to turn to a particular prior art document, the combination of teachings from different technical fields, etc. Moreover, it neither takes incalculable risks nor goes against any prejudice, on the contrary, it relies on a basic technique that was widespread in the relevant technical field and, as put forward by  [opponent], was known to every undergraduate student.

25.2 As regards the expectations of the person skilled in the art, the board considers that they are always directly associated with the intended purpose and thus, intrinsically linked to the formulated technical problem. When the intended purpose or the technical problem are formulated in very ambitious terms, such as the achievement of a significant improvement or a surprisingly advantageous effect over the prior art, the expectations of the skilled person to succeed are correspondingly more difficult to be fulfilled. The expectations to succeed are certainly much greater, when the intended purpose or the technical problem are formulated in less ambitious terms, such as in the present case, namely the provision of a simple alternative to the method known from the prior art.

25.3 It is also worth noting the case law dealing with the assessment of an expectation of success for what in this case law has been called a "try and see" situation. According thereto, there is a difference between the expectation to succeed and the certainty to success, the latter not being required for deciding on a lack of inventive step (cf. "Case Law", supra, I.D.7.1, 185). Indeed, the case law acknowledges that, in certain cases, a skilled person may adopt a "try and see" attitude and, in these cases, there is not need to have any sort of expectation (cf. "Case Law", supra, I.D.7.2, 187). Whilst  [opponent] argues that this situation applies to the present case,  [patentee] argues that, in the present case, the skilled person would have adopted a sceptical attitude and not a "try-and-see" attitude.

25.4 The board agrees with   [patentee] that document (8) discloses that vWF not only overcomes the tendency of the recombinant factor VIII to associate with the CHO membrane but also to stabilize and protect it from proteolysis by acting, in the words of [patentee],  as a blanket or chaperone (cf. page S10, left-hand column, last full paragraph of document (8)). However, contrary to [patentee], the board does not consider that, in view of the effects of vWF, there were reasons for a skilled person to adopt a sceptical attitude when looking for a method for the production of recombinant human factor VIII without co-expression of vWF.

In the board's view, document (8) not only informs the skilled person of the presence of several problems when trying such a method but it also provides means and measures to overcome them, such as the selection of available host cell lines with low proteolytic activity. Indeed, these problems were already known in the art and means and measures to solve them were also provided therein, such as the use of protease inhibitors in document (22). None of these means and measures is excluded from the scope of claim 1 of the auxiliary requests. There was no reason for a person skilled in the art to ignore all the information at hand and to select the worst possible known system or method when facing a "try-and-see" situation. It is worth noting here that, in the present case, the skilled person was not looking for an improvement or a surprisingly advantageous effect, but only for an alternative method.

26. It follows from the above that the person skilled in the art could and, in the board's view, would have modified the system described in document (8) by applying conditions of high ionic strength, i.e. increasing the concentration of at least one of the ionic substances listed in claim 1.

27. As a further argument to support inventive step, [patentee] referred to document (18) as providing an alternative for replacing the vWF in the method disclosed in document (8) which was much closer to the co-expression system disclosed in document (8), namely a co-expression of human factor VIII with the antibody BO2C11 whose binding site for factor VIII includes or overlaps the factor VIII binding site for vWF. The board does not agree and considers that, as stated in the case law, "the mere fact that it is possible to imagine other, more or less obvious solutions does not necessarily imply that an invention involves an inventive step, or can be regarded as an inventive selection" (cf. T 214/01 of 7 March 2003, point 3.11 of the Reasons; T 190/03 of 29 March 2006, point 14 of the Reasons). In the present case, the alleged presence of another possible obvious solution is not relevant and does not change the findings of obviousness for the proposed solution, i.e. the method of claim 1.

28. [Patentee] has also referred to what has been called in the case law "secondary indicia" for supporting an inventive step (cf. "Case Law", supra, I.D.10, 243). The board is however not able to follow this argumentation.

28.1 Although the case law acknowledges that, in certain situations, a simple solution may be indicative of inventive step (cf. "Case Law", supra, I.D.10.7, 249), this is not always the case. In the decisions dealing with this situation, the simple solution did not lower the yield of the method and/or the quality of a product known in the art; the product being of commercial interest and produced in industrial settings. Moreover, in most cases, the simple solution brought about a surprising (functional) improvement and/or resulted in an improved effect. However, even though the commercial interest of human factor VIII was well-known (inter alia, document (3)) and reference is made in the patent to 10 L bioreactors (cf. paragraphs [0076] and [0150]; see also page 24, Example 11 of the patent), the claimed method is neither limited to the large-scale production in an industrial setting nor does it require to achieve any surprising effect or improvement at all.

28.2 [Patentee] has also referred to what has been called in the case law the "time factor", namely the time lapsed between the publication of the closest prior art (document (8), 1994) and the filing date of the patent (2006), as an additional indication of inventive step. Again, even though the case law acknowledges that the time factor may in certain cases be indicative of inventive step (cf. "Case Law", supra, I.D.10.3, 246), this is not always the case. The failure to adopt an obvious solution has been associated with a variety of possible causes, in particular, those related to commercial reasons such as the avoidance of investment costs involved in the adoption of a new technique on an industrial scale (cf. T 123/97 of 10 September 1998, point 2.4.5 of the Reasons; T 516/08 of 16 December 2009, point 10 of the Reasons). Moreover, in the present case, the time lapsed between the publication date of the industrial production of recombinant human factor VIII in serum-free conditions (mid- or in the late nineties; cf. documents (3) and (8)) and the priority date of the patent (early 2005) does not compare with the time lapsed in most of the cases underlying the relevant decisions referred to in the case law (over 20, 60, up to 100 years).

29. In view of all these considerations, the board arrives at the conclusion that the auxiliary request does not fulfil the requirements of Article 56 EPC.

Conclusion

30. In the absence of a request that fulfils the requirements of the EPC, the patent must be revoked.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

T 0184/16 - For plausibility it is enough

Key points

• This opposition appeal concerns plausibility of a medical use claim and product claim.
• “The appellant [opponent] argued that there was no evidence in the application as filed to show that the claimed compounds were suitable for SGLT2 inhibition.”
• The Board considers the claim to be sufficiently disclosed and inventive.
• “The board acknowledges that [...] a precondition for taking into account post-published evidence to demonstrate a certain effect is that it was already plausible at the filing date that said effect was obtained. This approach is based on the concept that in a first-to-file system the (earlier) filing date of the application, rather than the date at which the invention was made determines which of several persons who have independently invented something has the right to a European patent (cf. Article 60(2) EPC). Consequently, in such a system it is particularly important that the application makes it possible to conclude that the invention had been made, i.e. that a claimed effect is indeed obtained and thus the problem the application aims to solve is indeed solved, and not merely put forward at the filing date of the application (T 1329/04, point 10).”
• “In the present case, the application as filed does not contain any experimental evidence as regards the disputed plausibility, i.e. the plausibility of the claimed compounds being SGLT2 inhibitors.
  It is thus necessary to determine whether plausibility can nevertheless be acknowledged in view of the common general knowledge and the prior art.”
• The Board then turns to prior art document “D7 (claim 1) refers to aryl C-glucosides, i.e. compounds with the same core structure as the compounds referred to in claim 12. [D7 is cited in the present application as filed] D7 [] considers these aryl C-glucosides to be SGLT2 inhibitors. Furthermore, D7 [] cites thirteen different patent documents and scientific articles, all disclosing O-aryl glucosides as SGLT2 inhibitors.”
In view of the above, the board considers it plausible that the therapeutic effect defined in claim 12 is indeed obtained. The Board does not consider the Markush group of claim 12 to be a new family of compounds.
• “[T]he board considers it plausible that the claimed compounds result in SGLT2 inhibition. Therefore, post-published evidence D4 can be taken into account” for inventive step. The Board considers the claims to be inventive starting from D2 as the closest prior art. D7 is not mentioned in the context of inventive step.
• The Board sees no contradiction: “the board has acknowledged plausibility, i.e. it considers it plausible in view of the prior art that the claimed compounds have SGLT2 inhibitory properties. It is to be noted that this is not in contradiction of the finding that the claimed subject-matter is non-obvious in view of the prior art. The criteria for plausibility and obviousness are different. On the one hand, as set out above, for plausibility of a claimed effect to be acknowledged, it is enough if there are no prima facie serious doubts that the effect can be obtained and conversely no a priori reason and indication in the common general knowledge that the effect cannot be obtained. On the other hand, obviousness is decided in the framework of the problem-solution approach, where generally an important consideration is whether the claimed solution is suggested and thus made obvious by the prior art.”

EPO T 0184/16 -  link

Reasons for the Decision

1. The present decision is based on the claim request filed on 19 August 2015 and found to be allowable by the opposition division.

Sufficiency of disclosure

2. Claim 1 relates to a compound of formula (I) or a pharmaceutically acceptable salt thereof (IV, supra). Claim 12 relates to a compound inter alia of claim 1 for use in treating or delaying the progression or onset of "diabetes mellitus, diabetic retinopathy, diabetic neuropathy, diabetic nephropathy, delayed wound healing, insulin resistance, hyperglycemia, hyperinsulinemia, elevated blood levels of fatty acids, elevated blood levels of glycerol, hyperlipidemia, obesity, hypertriglyceridemia, Syndrome X, diabetic complications, atherosclerosis, or hypertension" (IV, supra).

T 1384/16 - Extending scope by deleting from list

Key points

• This opposition appeal deals with various issues, including sufficiency of use claims, admissibility of auxiliary requests, and extension of protection for claims specifying amounts.
  
  Sufficiency
• Claim1 as granted is directed to the “Use of sugar esters and/or fibers selected from pectin, [...] partially depolymerised fibers [...]  to reduce [...] the sensory cooling effect of erythritol and wherein the ratio of the combined weight of fibers and/or sugar esters to the weight of erythritol is from 1:5 to 1:300." Erythritol has a strong cooling effect when it dissolves in water, similar to mint flavors. This cooling effect is apparently not always desirable.
• The Board: “it is concluded that the results of the tests [in the patent and submitted by patentee] provide credible evidence that the tested compounds, in the given weight ratio, induce the claimed effect.[...] What remains to be established is whether it is credible that this effect can be achieved across the entire scope of the claim. This is so because, of all the fibres listed in claim 1, only [a few were tested]. During the appeal proceedings the appellant filed an experimental report (D21) showing that, unlike other tested fibres, inulin does not offset the cooling effect of erythritol in the claimed amount ratio.
  The question then arises as to whether the results observed with these fibres can be generalised to all the listed fibres.
• During the appeal proceedings the [patentee] filed an experimental report (D21) showing that, unlike other tested fibres, inulin does not offset the cooling effect of erythritol in the claimed amount ratio. This result indicates that not all fibres behave in the same manner when they are mixed with erythritol. This finding is not surprising since [...] fibres can differ considerably in terms of physico-chemical properties. [...] Consequently, in the absence of any evidence that all the fibres listed in claim 1 share a common property or structure which is not also shared by inulin, the results of the aforementioned tests cannot be generalised to all the fibres listed in claim 1. [....] Since no concept can be identified which makes it credible that all the fibres listed in claim 1 in the claimed amount ratio reduce the cooling effect of erythritol, the invention defined in claim 1 does not meet the requirement of sufficiency of disclosure”
• This appears a sufficiency objection of the 'AgrEvo type' (T939/92), or perhaps, in fact, a plausibility issue.

Extension of scope of protection

• AR-8 is held unallowable because its independent product claim 2 involves extension of scope of protection. In claim 2, the weight ratio of the listed fibres and/or sugar esters to erythritol ranges from 1:5 to 1:300. Claim 2 differs from claim 7 as granted in that “partially depolymerised fibres” is deleted from the list of fibers. 
• “The opposition division decided that this deletion resulted in an extension of the scope of protection, contrary to the requirements of Article 123(3) EPC. The respondent [patentee] has maintained this objection and referred to T 2017/07.” The Board agrees.
• “The problem underlying this objection is well known in the case law (see e.g. T 2017/07, mentioned by the respondent; also T 1360/11 and the decisions cited therein). As explained in T 1360/11 (Reasons 3.1), this problem arises when a granted claim directed to a composition defined in an open manner, typically by means of the term "comprising" or "including", and specifying the presence of a component belonging to a class or list of compounds in a quantity defined by a range, is amended by limiting the definition of the class or list of compounds. In such a case, in spite of the apparent limitation due to the explicit or implicit deletion of some members of the class or list of compounds, the result of the amendment is such that the deleted compounds, which according to the granted claim had to be present in an amount within a specific range, can still be present, but in an unspecified amount. In this case the protection conferred by the amended claim extends beyond that of the granted claim, contrary to the requirements of Article 123(3) EPC.”
• The Board had expressly identified this as a problem of AR-8 in the preliminary opinion; the OD had found the same. AR-17 filed during the oral proceedings to address the issue is not admitted: “there was no reason for the appellant to wait until the last minute in the oral proceedings in order to file a request addressing the aforementioned objections. ”
• The Board also does not admit AR-2 to 7 and AR-9 to 16 filed with the Statement of grounds, because they were not substantiated.
• “the statement setting out the grounds of appeal does not fulfil those requirements [ of Article 12(2) RPBA 2007]. It does not provide any argument as to why the aforementioned auxiliary requests overcome the objections on which the decision under appeal is based.”

EPO T 1384/16 -  link

Reasons for the Decision

Main request

1. Sufficiency of disclosure

1.1 Claim 1 of the granted patent relates to the use of specific fibres and/or sugar esters to reduce the cooling effect caused by erythritol.

1.2 The fibres which according to claim 1 can be used to achieve this effect are selected from: pectin, guar gum, xanthan gum, locust bean gum, alginate, carrageenan, soluble cocoa fibre, soluble fibre of guar gum, cellulose, cellulose derivatives, beta-glucan, acetylated distarch adipate, n-OSA starch, hydroxypropyl starch phosphate and partially depolymerised fibres. The ratio between the combined weight of the fibres and/or sugar esters and that of erythritol ranges from 1:5 to 1:300.

T 1050/16 - Parameter unclear, claim insufficiently diclosed

Key points

• In this opposition appeal, the Board considers the claim to be insufficiently disclosed because of the feature that “the length of the crotch potion is between 10% and 40% of the entire length of the article as measured in an extended state of the article”.
• The technical field at issue will now be no surprise to frequent readers: indeed absorbent (hygiene) articles; Board 3.2.06.
• The Board: “ it is not possible for the skilled person to establish the length of the crotch person as required by the features of claim 2 for any other shape than the specific shape shown in Figure 2 of the patent, since the patent does not teach the skilled person how to establish any boundaries of the crotch portion of the absorbent article in general.”
• “Without a teaching in the patent of how to establish the crotch portion and its boundaries, any limits then established by a skilled person would be nothing but entirely arbitrary when defining a crotch portion of the article and its length as required in claim 2 of auxiliary request 2. The skilled person is thus faced with an impossible burden.”
• The decision does not indicate any argument of patentee that the issue is at most a clarity issue and the Board does not comment on this.

EPO T 1050/16  - link


3. Auxiliary request 2 - Article 83 EPC

3.1 Claim 2 of auxiliary request 2 defines inter alia that the length of the crotch potion is between 10% and 40% of the entire length of the article as measured in an extended state of the article.

3.2 However, it is not possible for the skilled person to establish the length of the crotch person as required by the features of claim 2 for any other shape than the specific shape shown in Figure 2 of the patent, since the patent does not teach the skilled person how to establish any boundaries of the crotch portion of the absorbent article in general.

T 2277/19 - You get what you (don't) see

Key points

• This concerns a patentee appealing against the grant because after the grant he realized that the Druckexemplar is not the version that he thought would be granted.
• Board 3.2.02  does not follow T 1003/19 (Board 3.3.05) and T 2081/16 ( Board 3.5.03).
• The present Board: “in the board's view, there is no legal basis in the European Patent Convention for a distinction between the text referred to in a communication under Rule 71(3) EPC and that reflecting what the examining division actually intended. Moreover, Rule 71(6) EPC addresses the possibility that the text communicated under Rule 71(3) does not reflect the appellant's requests. In the board's judgement, Article 71(3) EPC thus imposes on the applicant a duty to check and verify this text. The fact that an applicant does not exercise its right to request amendments under Rule 71(6) EPC can therefore only be interpreted as approval of the communicated text, i.e. the text intended for grant. Whether the applicant notices a possible error has no effect on the fact that this approval is binding.”
• The Board refuses to refer questions to the Enlarged Board of Appeal: “The question does not warrant a referral to the Enlarged Board of Appeal, since the board has no doubt as to how to answer the question on the basis of the European Patent Convention”. 
• I note that the issue with the Druckexemplar present application appears to be a case of ‘unmarked Examiner's amendments’  in the Rule 71(3) Communication. I realize that ‘Examiner's amendments’ is USA terminology; for the EPO ‘amendments by the examining division of own motion’ is more appropriate. Though I suspect that it actually boils down to hiccups in the software systems used by the EPO in the preparation of the electronic Druckexemplar, in the sense that the Examiner does not forget to include changes he makes in the ‘special field provided at the bottom of page 1 of Form 2004C’, but rather that somehow pages are deleted or reinstated in the eDREX without any person in the EPO consciously taking an action to that effect.
• One may also ask whether the ‘the text communicated to him’ of Rule 71(5) is affected by a content of the "special field provided at the bottom of page 1 of Form 2004C" that is inconsistent with the Druckexemplar as included in the Rule 71(3) Communication.
• The principle of good faith may possibly require that, since the EPO provides a "special field at the bottom of page 1 of Form 2004C" for mentioning any amendments made by the examining division in the Rule 71(3) EPC Communication, the EPO actually uses that field, such that the applicant has a legitimate expectation that there are no further amendments than those mentioned in that field (i.e. if the field is empty, there are no amendments made by the EPO). Possibly an appeal against a grant can be used to invoke the protection of such legitimate expectations. 
• I use the opportunity to highlight that the marked-up text intended for grant is included in the Rule 71(3) Communication. The clean copy version is only placed in the (public) file. 

EPO T 2277/19 -  link

Reasons for the Decision

1. Admissibility of the appeal

Article 107 EPC, first sentence reads as follows: "Any party to proceedings adversely affected by a decision may appeal." It follows from this sentence that the appeal proceedings are open only to a party which has been adversely affected by the impugned decision.

In the present case, the appeal is not admissible since the appellant is not adversely affected by the decision to grant.

T 2864/18 - Appeal against grant

Key points

• The patentee appeals against the grant because there is a mistake in the description. The Board does not allow the appeal.
• The Board does not allow the appeal, in line with  G1/10.
• “Regarding the request for the analogous application of the reasoning given in decision T1003/19, the Board finds the facts underlying that case fundamentally different from the facts of the case at hand. In case T1003/19 the granted version did not correspond to documents either submitted or approved or deemed approved by the applicant. In the present case, the (then) applicant has given every appearance of having thoroughly checked the documents, and of approving them both explicitly (letter of 23 April 2018) and implicitly (payment of fees in reaction to the second communication under Rule 71(3) EPC). There is therefore no similarity in the facts of the two cases which would allow for an analogous treatment. The preceding reasons and considerations lead to the conclusion that the present appeal cannot succeed.”
• The cases can indeed be distinguished on the facts. In T1003/19, the seven pages of drawings as published (and never amended by the applicant) in some way became one page of drawings in the Rule 71(3) without this being identified as an amendment by the EPO. In the present case, with letter of 21.02.2017, an amended page 3 was filed (letter). However, that new page 3 should have in fact have been a replacement of original page 2 rather than original page 3 (see also para. IV of the present decision). So in the present case, there was no 'unmarked Examiner's amendment' unlike in T1003/19. 

EPO T 2864/18 - link

Reasons for the Decision

1. The appeal is admissible as the time limits specified in Article 108(1) EPC were observed and the grounds for the appeal, although rather sketchy, nevertheless allow the Board to understand the alleged adverse effect and the remedy sought.

2. However, as indicated in the Board's communication in preparation of the oral proceedings, the requested remedy is not allowable.

3. The appellant's submissions appear to be factually correct as far as "the duplication of page 2 incorrectly marked as page 3" is concerned. However, the argument that the correction, namely the replacement of the wrong page by the correct one, is allowable according to the decision of the Enlarged Board of Appeal (in the following EBA) G1/10 (OJ EPO 2013, 194) is not persuasive.

T 1518/17 - The role of the CPA

Key points

• In this opposition appeal, the question was whether the problem-solution approach was to be applied from one closest prior art document, or two times from the two proposed starting point documents.
• The Board: “Two documents have been proposed as closest prior art, namely D2 and D5. [...] According to the problem-solution approach the first step is to identify the closest prior art, i.e. a document disclosing subject-matter conceived for the same purpose or aiming at the same objective as the claimed invention and having the most relevant technical features in common [...]. 
  Both D2 and D5 as well as the patent in suit relate to propylene based compositions for injection moulding to prepare articles for similar end uses, even if the precise property profile required differs. Nevertheless both documents in principle qualify as a suitable starting point for consideration of inventive step.”
• “A further criterion is that the closest prior art should have most features in common, i.e. require the minimum of modification. [In the present case] neither document can be considered as having more features in common or being a more promising starting point”
• “It is correct, as argued by the [patentee], that D2 does not present any consideration of elongation at break, whereas the patent in suit and D5 do consider this property.”
   
• The Board: “In this context, it is recalled that even if prior art for the same purpose is available it is not excluded that a document relating to a similar purpose might be considered to be either a better or at least an equally plausible choice as closest prior art if it were apparent that the subject-matter thereof could be adapted to the purpose of the claimed invention []. In the present situation this is clearly the case since, as noted above, both the patent in suit and D2 are directed to the provision of injection moulded articles with good impact properties, also at low temperature.” (emphasis added, note that the 'were apparent' phrase appears to look forward to the outcome of the test).
• “Accordingly either of D2 or D5 can be qualified as the closest prior art and it is necessary to consider inventive step based on each of these documents. In such circumstances where two documents are both suitable to serve as the closest prior art it is necessary that an inventive step be demonstrated with respect to each. A finding of obviousness in respect of one document will necessarily lead to the conclusion that the requirements of Article 56 EPC are not met even if carrying out the same exercise on the basis of the other document would lead to a different conclusion.”
• “On that basis the composition of claim 1 does not involve an inventive step starting from D2 as the closest prior art. In view of the conclusion reached, there is no need to perform the analysis starting from D5 as the closest prior art ”

EPO T 1518/17 -  link



2. Main request - inventive step

2.1 Closest prior art

The patent in suit relates to polypropylene compositions having an optimum balance of properties in particular improved elongation at break and impact strength at room and low temperatures (paragraphs [0001], [0006], [0012]). The compositions are intended for the production of moulded, in particular injection moulded, articles (paragraph [0029]).

Two documents have been proposed as closest prior art, namely D2 and D5.

D2 relates to polypropylene resin compositions with low shrinkage, excellent impact strength, high stiffness and scratch resistance (title, paragraph [0001]). In particular the document addresses the problem of avoiding shrinkage upon moulding (paragraph [0006]). Among the possible fields of use of the compositions is in body parts such as bumpers or trim and other interior components for automobiles (paragraph [0007]).

As observed by the appellant, elongation at break is not discussed in the document.

T 2069/18 - The rationale for renewal fees

Key points

• The applicant requests a refund of the renewal fees paid during seven years of inactivity of the EPO.
• The Board refuses the application. The invention appears to relate to user interface software for touch displays for vehicles.
• The Board considers the request for refund admissible but unallowable.
• The Board: “Der Antrag auf Rückzahlung von 7 Jahresgebühren ist entgegen der Auffassung der Prüfungsabteilung zulässig. Wie die Prüfungsabteilung als solches im Ergebnis zwar zutreffend gesehen hat, ist eine Rechtsgrundlage für einen solchen Antrag nicht gegeben. Dies hindert jedoch nicht die verfahrensrechtliche Zulässigkeit eines solchen Antrags, sondern gegebenenfalls seine Begründetheit.”
• The Board explains that the renewal fees ensure both that only economically valuable patent applications (and patents) are kept in force and, together with the other fees, the general financing of the EPO. The renewal fees become due independently of any activity of the EPO other than the mere keeping of the file (r. 7.11).
• The inactivity was from May 2007 to February 2016. The application was handled by in house counsel of the applicant.

EPO Headnote
Die ursprünglich mit Rechtsgrund angeforderten und gezahlten Jahresgebühren wandeln sich durch eine zögerliche Tätigkeit des Amts im Prüfungsverfahren nicht nachträglich in rechtsgrundlos geleistete um (Punkt 7 der Entscheidungsgründe).


EPO T 2069/18 -  link



6. Da keiner der vorliegenden Anträge gewährbare Ansprüche beinhaltet, bleibt die Beschwerde in dieser Hinsicht ohne Erfolg.

7. Antrag auf Rückzahlung von Jahresgebühren

7.1 Die Prüfungsabteilung hat mit der angefochtenen Entscheidung auch den Antrag der Anmelderin auf Rückzahlung von 7 Jahresgebühren wegen wenigstens 7jähriger Untätigkeit der Abteilung im Prüfungsverfahren als unzulässig verworfen. Dazu hat sie als Begründung ausgeführt, dass die von der Anmelderin zitierten Vorschriften keinerlei Rechtsgrundlage für die Rückzahlung der mit Rechtsgrund gezahlten Jahresgebühren ergäben.

T 2475/17 - Ordering a different ED composition

Key points

• In this examination appeal, the ED had based its decision on a wrong version of the pending claims. The Board acknowledges this as a substantial procedural violation and remits the case. The applicant had requested the Board to order a different composition of the ED after the remittal.
• The Board recalls a body of case law according to which the Board are not competent to order a different composition of the first instance department after remittal. 
• “Die Kammern haben mehrmals festgestellt, dass das EPÜ keine Rechtsgrundlage bietet, die es den Kammern erlauben würde, sich an die Stelle der Amtsleitung zu setzen und eine Änderung der Zusammensetzung des erstinstanzlichen Entscheidungsorgans anzuordnen [...]. Da die Zusammensetzung des erstinstanzlichen Organs dem Präsidenten des Amts bzw. seinen Vertretern und nicht dem Organ selbst obliegt, kann Artikel 111 (1) EPÜ ein solches Vorgehen in der Tat nicht rechtfertigen.”
• The Board acknowledges that there is an exception in those cases where the composition of the first instance department was the root cause for the substantial procedural violation, in particular, if a justified concern exists that one or more members of the first instance department are not impartial.
• “Zum anderen gab es auch Fälle, in denen die Kammer eine Verletzung des rechtlichen Gehörs festgestellt und den Fall mit der Auflage an die erste Instanz zurückverwiesen hat, die Zusammensetzung des erstinstanzlichen Organs zu ändern. Beispiele dafür sind [T628/95, T433/93, T95/04 and T2362/08]. Im Gegensatz zu den Fällen, in denen die Zusammensetzung des erstinstanzlichen Organs den Erfordernissen von Artikel 19 (2) EPÜ nicht entsprochen hatte, kann hier nicht ipso facto von einer impliziten Notwendigkeit der Änderung der Zusammensetzung gesprochen werden. Die Kammer ist also nur dann befugt, eine Änderung der Zusammensetzung anzuordnen, wenn sie zum Schluss gelangt, dass die Zusammensetzung des erstinstanzlichen Organs die eigentliche Ursache für die Verletzung des rechtlichen Gehörs darstellt und die Verletzung des rechtlichen Gehörs nur durch eine Änderung der Zusammensetzung geheilt werden kann, also insbesondere in dem Fall, in dem die berechtigte Besorgnis besteht, dass ein oder mehrere Mitglieder des erstinstanzlichen Organs befangen sind. Wie schon dargelegt, ist die bloße Tatsache, dass das rechtliche Gehör verletzt wurde, nicht ausreichend, um eine solche Besorgnis zu rechtfertigen.
• T628/95: OD had not appointed oral proceedings as requested; no mention at all of impartiality.
• T433/93 hn.2 “If a party has reasonable grounds to suspect that the same composition of opposition division would be tainted by the previous decision and therefore partial, at the request of that party the case should be reheard before a different composition of opposition division.” R.2: “In the present case, since the opposition division has already issued a written decision containing reasons for revoking the patent, in the board's judgment the proprietor has reasonable grounds to suspect that the same composition of opposition division would have difficulty in rehearing and deciding the case without being tainted by its previous decision (as reflected by the proprietor's request for rehearing before a different composition). It is therefore clearly in the interest of the proper administration of justice within the EPO that this case should be reheard and re-decided by a different composition of opposition division.”
• T95/04 : “The Examining Division has decided in the decision under appeal that the subject-matter of the claims is not new and further expressed its view that the application does not contain any patentable subject-matter.”
• T2362/08: “However, after substantial procedural irregularities in the first proceedings, it is fundamental that the parties have no ground to suspect in the further proceedings that they have not received a fair hearing, as they might well do if the same opposition division were again to revoke the patent even after conducting the proceedings in an impeccable way.”

EPO T 2475/17 -  link

Entscheidungsgründe

1. Wesentlicher Verfahrensfehler (Artikel 113 (2) EPÜ)

1.1 Die Begründung in der angefochtenen Entscheidung zum Anspruch 1 des damaligen Hauptantrages beruht nicht auf dem Wortlaut des Anspruchs 1 in der von der Anmelderin vorgelegten Fassung.

1.2 Die ursprüngliche eingereichte Fassung der Anmeldung hatte 31 Ansprüche.

[...]

1.4 Die von der Kammer unterstrichenen Merkmale fehlen in der Wiedergabe des Anspruchs im Abschnitt 15.2 in der angefochtenen Entscheidung. Diese fehlenden Merkmale werden auch nicht in der Begründung bezüglich der mangelnden erfinderischen Tätigkeit des Anspruchs 1 berücksichtigt, so dass diese Entscheidung einerseits nicht ausreichend begründet ist und sich andererseits nicht mit der von der Anmelderin vorgelegten Fassung des Anspruchs 1 auseinandersetzt.

Somit liegt bereits ein wesentlicher Verfahrensfehler vor (Artikel 113 (2) EPÜ und Regel 111 (2) EPÜ).

T 3003/18 - Why the description must be adapted to the claims

Key points

• The EPO frequently requires that the description is amended to be consistent with the claims as granted or as amended in opposition. But why? E.g. the USPTO does not have such a requirement at all (and in fact, US clients may not always know beforehand how strictly this requirement is applied by the EPO).
• In this opposition appeal, the opponent “submitted that these amendments to the description of the patent as granted were not occasioned by a ground for opposition under Article 100 EPC, and that for this reason the amendments were contrary to Rule 80 EPC.”
• The Board: “compared with claim 1 as granted, present claim 1 has been amended to require that the fiber optic connector of the claimed fiber optic plug [is selected from three particular types of connectors], and that this amendment [of the claim] was occasioned by the grounds for opposition of lack of novelty and of inventive step raised under Article 100(a) EPC by the opponents during the proceedings.” The amendments of the description make the description consistent with the amended claim. 
• The Board: “Furthermore, according to Article 101 (3) EPC the amendments to the patent as granted shall meet the requirements of the EPC, and in particular the requirements of Article 84 EPC according to which the claims shall be supported by the description, together with the requirements of Rule 42 (1) (c) EPC according to which the description shall disclose the invention as claimed.” (emphasis added) 
• Rule 42(1)(c) prescribes that “the description shall ... disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, and state any advantageous effects of the invention with reference to the background art”.
• Article 84, second sentence specifies that “[The claims] shall be clear and concise and be supported by the description.”. The EPO publication of the EPC does not crosslink Article 84 to Rule 42 or vice versa (link). It's the third requirement of Article 84, second sentence, that matters here ('shall be supported by the description'). 
• Article 101(3) specifies that the "the patent and the invention to which it relates meet the requirements of the [EPC]", not that the “the amendments to the patent as granted shall meet the requirements of the EPC”, but perhaps the present Board tries to reflect the holding of G3/14 that “the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC”
• Upon first reading, the prescriptive part of Rule 42(1)(c) may appear to be the ‘in such terms’ phrase, but the Board leaves out the comma and recognizes an independent requirement that “according to [Rule 42(1)(c)] the description shall disclose the invention as claimed.”
• The 'supported by the description' requirement should of course not be confused with Article 83 EPC or Article 123(2) EPC. 

EPO T 3003/18 -  link



4. Description - Rule 80 and Articles 123(2) and 76(1) EPC

4.1 Amended pages 3 and 4 of the description marked "18:12" correspond to pages 3 and 4 of the description of the patent specification amended as follows:

i) the expressions "according to an embodiment of this invention", "of this invention", and "according to one embodiment of this invention" in the passages in column [0012] and [0014] referring to Fig. 1, 2 and 9 have been deleted; and

ii) the passage in paragraph [0016] reading "[...] depending upon the type of fiber optic connector. Although the fiber optic plug may include a variety of fiber optic connectors including MTRJ connectors, SC-DC connectors, Unicam**TM connectors, SC connectors, LC connectors, and the like, the fiber optic plug 10 of the illustrated embodiment is shown to include an MTP connector by way of example, but not of limitation" has been amended to read "[...] depending upon the type of fiber optic connector, the fiber optic connectors being MTRJ connectors, SC connectors, or LC connectors. The fiber optic plug 10 of the illustrated embodiment is shown to include an MTP connector by way of example, but falling outside of the scope of the claimed invention."

T 0193/20 - Withdrawal of appeal

Key points

• The appellant writes “that it had decided not to file the grounds of appeal”, does not file a Statement of grounds, and requests 100% reimbursement of the appeal fee under Rule 103 EPC. 
• This request is refused. The Board: “the withdrawal of the appeal must be expressed by an explicit and absolutely clear statement.”
• “ The above-mentioned intention not to file the grounds of appeal cannot be considered an unambiguous withdrawal of the appeal either. In fact, the filing (or non-filing) of the statement of grounds of appeal and the withdrawal of an appeal are separate, distinct procedural steps.”
• The appellant withdrew the appeal by letter dated 6 March 2020, i.e. “within two months of notification of the communication issued by the board on 31 January 2020 under Rule 100(2) EPC”.
• Hence, the appeal fee is reimbursed at 50% under (what is now) Rule 103(3)(b) EPC (the appeal was withdrawn within the period for response set in the Rule 100(2) Communication).

EPO T 0193/20 - link

Summary of Facts and Submissions

I. European patent application no. 13 181 664.7 was refused by the examining division by decision dated 16 August 2019.

II. The applicant (hereinafter "appellant") filed a notice of appeal by letter dated 14 October 2019 and paid the appeal fee.

III. By letter dated 19 December 2019, the appellant communicated that it had decided not to file the grounds of appeal. It requested reimbursement of the appeal fee pursuant to Rule 103(1)(b) EPC.

IV. On 31 January 2020, the board issued a communication under Rule 100(2) EPC. In this communication, the board expressed the preliminary opinion that the appellant, on the basis of the wording used in its letter dated 19 December 2019, had merely stated its intention not to file the statement of grounds of appeal, but it had not withdrawn the appeal.

The appellant was informed that any observations had to be filed within two months of notification of the communication.

V. The appellant replied to the board's communication by letter dated 1 March 2020, in which it contested the board's findings.

VI. By letter dated 6 March 2020, the appellant withdrew the appeal.

VII. The appellant's requests

The appellant requested reimbursement of the appeal fee in full pursuant to Rule 103(1)(b) EPC (main request). In the alternative, it requested reimbursement of 50% of the appeal fee pursuant to Rule 103(2)(b) EPC.

Reasons for the Decision

Main request - reimbursement of the appeal fee in full pursuant to Rule 103(1)(b) EPC

1. The appellant conceded (see letter dated 1 March 2020) that the appeal had not been explicitly withdrawn in its letter dated 19 December 2019 (III, supra). However, it argued that by taking the reference to Rule 103(1)(b) EPC into account, it was clear that a withdrawal of the appeal was intended. Moreover, as not filing the grounds of appeal inevitably meant that the appeal was not admissible, it was clear that a statement indicating that the grounds of appeal would not be filed also indicated a withdrawal of the appeal.

2. The board disagrees for the following reasons.

2.1 According to Rule 103(1)(b) EPC, the appeal fee shall be reimbursed in full "if the appeal is withdrawn before the filing of the statement of grounds of appeal and before the period for filing that statement has expired" (emphasis added by the board).

2.2 The withdrawal of an appeal in proceedings with just one appellant, as in the present case, is a procedural step decisive for the outcome of the appeal proceedings. In fact, upon withdrawal of the appeal by the sole appellant, appeal proceedings are immediately terminated (G 8/91, OJ 1993, page 346, Order). It follows that the withdrawal of the appeal must be expressed by an explicit and absolutely clear statement.

2.3 In its letter dated 19 December 2019, the appellant stated that it had "decided not to file the Grounds of Appeal". Even in view of the request for reimbursement of the appeal fee in accordance with Rule 103(1)(b) EPC included in the above letter, this statement merely conveys the appellant's intention not to file the statement of grounds of appeal, but does not imply an unambiguous withdrawal of the appeal. The above-mentioned intention not to file the grounds of appeal cannot be considered an unambiguous withdrawal of the appeal either. In fact, the filing (or non-filing) of the statement of grounds of appeal and the withdrawal of an appeal are separate, distinct procedural steps.

2.4 The appellant withdrew the appeal by letter dated 6 March 2020, i.e. after the period for filing the statement of grounds of appeal pursuant to Article 108 EPC had expired. As a consequence, the requirements of Rule 103(1)(b) EPC have not been met. Thus, the appellant's main request cannot be allowed.

Auxiliary request - reimbursement of 50% of the appeal fee pursuant to Rule 103(2)(b) EPC

3. The appellant withdrew the appeal by letter dated 6 March 2020, i.e. within two months of notification of the communication issued by the board on 31 January 2020 under Rule 100(2) EPC (IV, supra).

It follows that the requirements of Rule 103(2)(b) EPC for reimbursement of 50% of the appeal fee have been met.

As a consequence, the appellant's auxiliary request is allowed.

Order

For these reasons it is decided that:

Reimbursement of 50% of the appeal fee is ordered.

T 3247/19 - Fast appeal

Key points

• In this examination appeal, the Statement of grounds was filed 27.11.2019 and the Board allowed the appeal with the decision of 04.03.2020 (in addition, decisions with a case number well above 3000 still look unfamiliar to me).
• It makes sense to me that incoming ex parte appeals are reviewed to see which ones can be directly allowed.
• The Board considers the claim to be sufficiently disclosed.
• “The Board considers that, in the present application, it is within the bounds of the common general knowledge of the skilled person to provide an automatic cutting unit capable of cutting cardboard in two directions. In the application the use of a laser cutting unit is suggested, however the skilled person is also generally aware of other types of cutting units having fixed or rotary blades and suitable for cutting cardboard. Cutting units using laser cutters, fixed or rotating blades and operating transversely, longitudinally or vertically are known to the skilled person, whether they are moved via simple or complicated guide systems or carried by a manipulator such as a robot.”
• The Board remits the case for consideration of the other patentability requirements, in line with the request of the applicant.

EPO T 3247/19 - link

Reasons for the Decision

Review of the decision under appeal - sufficiency of disclosure

1. In the contested decision, the examining division decided that the application did not disclose the claimed invention in a manner sufficiently clear and complete for the person skilled in the art to carry it out.

2. The examining division found that there was no disclosure of a system for automatically packaging items as the application does not disclose any detailed embodiment of a system/machine. Specifically (point 1.1.1 of the Grounds for the Decision), the examining division objected to the application having insufficient information regarding the cutting unit for adjustably shortening the end portions of the side and bottom panels of the pre-folded (already erected) box. The examining division further held that the mere mention of a laser cutting unit as a possible cutting unit was not sufficient to enable the skilled person to build a system which shortens the end portions of the side and bottom panels of the open side of a pre-folded box.

3. The appellant argued (statement of grounds of appeal, point II.2.1) that in the penultimate paragraph of page 6 of the description, laser cutting units are given as an example of a possible cutting unit. They further argued that laser cutting of cardboard was very well known to the skilled person at the date of filing of the application, as shown by the prior art section of document D19, and that a robot laser cutter (such as shown in document D18) could, without undue effort, be set up by the skilled person to cut the side and bottom panels of a pre-folded box.

4. According to the established case law of the boards of appeal a finding of lack of sufficiency of disclosure should be based on serious doubts, substantiated by verifiable facts (Case Law of the Boards of Appeal, 9**(th) edition 2019, II.C.9).

T 1072/11 - Slowest appeal of 2019

Key points

• Notice of appeal filed 17.01.2011; Statement of grounds 24.03.2011. Next action of the Board: notification of the decision on 24.06.2019 allowing the appeal.
• The Board considers inventive step of the claimed "matching unit" comprising a computer entity. The Board allows the appeal, without oral proceedings, and remits the case to the Examining Division for a search.
• “ As has already been outlined above (see point 1), no Search Report was established for the application and D1 was introduced during substantive examination with the summons for oral proceedings before the first instance.  
• “The European Patent Office acting as International Searching Authority issued a declaration of non-establishment of the International Search Report under Article 17(2)(a) PCT and Rule 13ter.1(c) and 39 PCT, because the claims on file at that date related to subject-matter that did not require an international search under the PCT provisions.”
• “Since a corresponding set of claims for the subject-matter of the present main request has been presented only at a later stage during oral proceedings before the first instance, i.e. at the end of the first instance proceedings, there is no indication that a systematic search for pertinent prior art has been carried out for the present set of claims.  However, according to the jurisprudence of the Boards an additional search for pertinent prior art may be dispensed with only if the technical features of the claims are considered to be "notorious", i.e. generic and so well known that they cannot reasonably be refuted [...]. In the Board's judgment, the aforementioned distinguishing features [...] go beyond the mere notorious knowledge (for example the commonly encountered use of a computer, a network, an electronic database) and cannot be considered "notorious". [...] Thus, present claim 1 cannot be definitively assessed for inventive step without knowledge of the relevant documented prior art. Thus, the main request requires a search for relevant prior art. Hence the matter must be remitted for an additional search and further examination. ”
• The Examining Division has summoned for oral proceedings to take place on 02.04.2020, cancelled on 25.03, refusal decision issued 06.04.2020 for lack of inventive step in view of D1 in combination with the newly introduced prior art document D2.
• Actually, the appeal decision in 2019 with the longest pendency was T 1201/10 (link ; Notice of appeal filed 15.02.2010) but in that case, the applicant filed numerous requests for interruption of the proceedings during the appeal (they were all denied, but still I can understand it causes the delay). 

EPO T 1072/11 - link

Reasons for the Decision

Introductory remarks

1. The application was refused based on lack of inventive step in view of D1 (US 6098051 A1), a publication introduced during the examination proceedings with the summons for oral proceedings before the first instance. However, no complete search for pertinent prior art was carried out before the first instance. The European Patent Office acting as International Searching Authority issued a declaration of non-establishment of the International Search Report under Article 17(2)(a) PCT and Rule 13ter.1(c) and 39 PCT, because the claims on file at that date related to subject-matter that did not require an international search under the PCT provisions. The applicant entered into the European phase before the European Patent Office on the basis of amended claims. No supplementary European Search Report was established. According to Article 153(6) EPC the declaration replacing the International Search Report took the place of the European Search Report in analogy to Rule 63 EPC.

The present main request corresponds to a set of claims submitted during oral proceedings before the first instance as an auxiliary request adding further features. The Board has no indication that a systematic search for pertinent prior art has been carried out for the claimed subject-matter according to the present main request.

T 2659/17 - OD should have heard witness of other party

Key points

• The opposition is based on alleged public prior use by the opponent selling certain installations to two (or three) customers. The question was whether there was an implicit secrecy agreement. The opponent files three declarations (of employees) stating that there was no secrecy agreement and offers the persons making the declarations as witnesses. The OD considers the prior use to be proven, without hearing the witnesses and maintains the patent in amended form. The patentee appeals. The opponent withdraws the opposition during the appeal, but the Board still has to decide on the appeal.
• The Board concludes that the OD should have heard the witnesses and has violated the right to be heard of the Patentee by refraining from doing so.
• The puzzling aspect is that the Board's decision nowhere states that the Patentee had requested the hearing of the witnesses (the minutes of the OD neither state so). So there is a violation of the right to be heard of patentee by not hearing the witnesses offered by the opponent and (presumably) without any request of the patentee to hear those witnesses.
• The Board: “Wie in der Entscheidung T 474/04 bereits von der Beschwerdekammer festgestellt wurde, hat eine Versicherung an Eides statt eine geringere Beweiskraft als eine Zeugenaussage []. Daher soll eine Entscheidung nicht auf der Versicherung an Eides statt allein beruhen, sondern ist die Person, die die Erklärung abgegeben hat, als Zeuge zu vernehmen, sofern dies der Beteiligte anbietet (vgl. ,,Richtlinien für die Prüfung im Europäischen Patentamt" in Kapitel E-IV.1.2). [note, GL E-IV 1.2 actually state: “If the alleged facts are contested by the other party, the opposition division does not generally base its decision on such a statement, but summons the person making the statement as a witness, if so offered by the party. ”
  Dies gilt im vorliegenden Fall umso mehr, da der Inhalt der Versicherungen an Eides statt von der Inhaberin in Frage gestellt wurde und eine Zeugeneinvernahme der angebotenen Zeugen eingefordert wurde. [Note, the Board here does not state which party had requested the hearing of the witnesses]
  Daher hätte die Einspruchsabteilung die Zeugen laden und vernehmen müssen - nicht zuletzt um der Inhaberin die Möglichkeit zu gewähren, den Inhalt der Erklärungen an Eides statt überprüfen und eventuell widerlegen zu können.
  Durch die Verwehrung der Zeugenbefragung wurde die Inhaberin darin behindert, das letztlich entscheidende Beweismittel zu entkräften. Dies ist umso gravierender, da die Vorbenutzungen durch die Einsprechende erfolgte und somit die Beweismittel dafür somit weitgehend der Verfügungsmacht und dem Wissen der Einsprechenden unterlagen.”
• In T 474/04 "the patent was revoked on the basis of contested submissions made in declaration D14, in spite of Respondent 02 [opponent] expressly offering, and the Appellant [Patentee] expressly requesting, that its author be heard." (r.4, r.5). As said, it's not clear to me if in the present case, the patentee had expressly requested that the author of the declaration (affidavit) be heard as a witness by the OD. However, such a request of the 'respondent to the affidavit' appears in fact not necessary in view of the GL. The underlying consideration here is that the party formally requesting the hearing of the witnesses must make a deposit for the reimbursement of the expenses of the witnesses (Rule 122(1) EPC; the amounts at issue are not insignificant). Employees of the opponent that are heard as a witness upon request of the patentee may be less inclined to waive their right to compensation (GL E-IV 1.9).
• According to the GL, the party submitting the affidavit must offer the person making the affidavit as a witness; otherwise, "the opposition division will not pursue this evidence further" if the other party contests the facts that are evidenced in the affidavit (GL E-IV 1.2). A question could be whether ‘offering’  the witness is the same as ‘requesting’ the hearing of a witness in the sense of Rule 117 EPC (and Rule 122(1) EPC).
• As noted with approval by the Board in T 474/04, r.7, 8, GL E-IV 1.2 recommend that if "the alleged facts are contested by the other party, the Opposition Division does not generally base its decision on such a statement, but summons the person making the statement as a witness, if so offered by the party".
• The issue in the present case then boils down to a conclusion of the Board that the OD had not correctly applied the established case law that a finding of fact can not be based solely on a contested affidavit. Whether this error of the OD is a substantial procedural violation is a separate matter. However, the OD appears to have misapplied a rule of evidence law rather than Art. 113(1) EPC.

Tacit secrecy agreement

• The Board notes that a tacit secrecy agreement can exist due to the particular circumstances of the sale of a device.
• The Board notes that in the present case, the sold devices were individually built for the customers and were significantly adapted for the specific customers (r.14.1). “Derartige individuell für einzelne Kunden angefertigte Maschinen können im Einzelfall der impliziten Geheimhaltung unterliegen, da ein spezielles Vertrauensverhältnis zwischen Käufer und Verkäufer bei der individuellen Planung und maßgeschneiderten Fertigung der Maschine besteht.” 
• The Board then notes that the construction drawings were marked as 'confidential'. In this way, “Es ist somit nicht eindeutig und zweifelsfrei durch die Einsprechende nachgewiesen worden, dass die Lieferung der Maschinen an die Firmen Faigle und Hauri nicht unter einer Geheimhaltungsvereinbarung erfolgte. Die beiden Käufer der Maschinen können daher nicht ohne Zweifel als Öffentlichkeit angesehen werden, so dass die Vorbenutzungen nicht zwingend öffentlich erfolgten.”. 
• The Board notes that the standard of proof is 'up to the hilt' because the alleged prior use was in the sphere of the opponent (r.9). The Board then concludes that: “So lange hier jedoch noch ein Zweifel besteht, ist angesichts des anzusetzenden Beweismaßstabes davon auszugehen, dass die Firmen Faigle und Hauri mit ihren Mitarbeitern nicht als Öffentlichkeit gelten können, so dass der Verkauf Faigle und der Verkauf Hauri keinen Stand der Technik nach Artikel 54(2) EPÜ darstellen.”.
• The Board does not expressly discuss T2037/18, but possibly it can be said that the burden of proof for showing the absence of a tacit secrecy agreement was shifted to the opponent after the Patentee had successfully made a prima facie case that there was a tacit secrecy agreement based on the construction drawings of the sold device being marked confidential (and the customized nature of the sold equipment).
• I wonder if the customizations do perhaps point to confidentiality obligation of the builder/seller of the equipment rather than the customer, whereas T2037/18 assumes a confidentiality obligation of the buyer (I assume that the patented features were common to the sold devices, i.e. not part of the customisations or client requests and that the patented features were developed by the seller independently of the customers).

EPO T 2659/17 - link

Sachverhalt und Anträge

I. Die Beschwerdeführerin (Patentinhaberin) legte Beschwerde gegen die Zwischenentscheidung der Einspruchsabteilung ein, wonach das Streitpatent sowohl in der erteilten Fassung, als auch in geänderter Fassung gemäß Hilfsantrag 1 und 2 nicht patentfähig war, jedoch das Streitpatent auf Basis des Hilfsantrags 4 in geänderter Fassung aufrechterhalten wurde.

a) Insbesondere hatte die Einspruchsabteilung zwei geltend gemachte offenkundige Vorbenutzungen als bewiesen angesehen und entschieden, dass der Gegenstand des Hauptantrags nicht neu gegenüber diesen Vorbenutzungen sei.

b) Zum Beweis der offenkundigen Vorbenutzungen reichte die Einsprechende im Rahmen des Einspruchsverfahrens eine Reihe schriftlicher Dokumente ein und bot die Vernehmung von mehreren Zeugen an. Zudem wurden eidesstattliche Versicherungen der angebotenen Zeugen eingereicht.

Entscheidungsgründe

1. Die Einsprechende hat ihren Einspruch zurückgenommen.

1.1 Da die Beschwerde von der Patentinhaberin gegen die Entscheidung der Einspruchsabteilung eingelegt worden ist, hat diese Rücknahme keinen Einfluss auf die Anhängigkeit dieses Beschwerdeverfahrens. Die Kammer muss daher die Entscheidung der Einspruchsabteilung inhaltlich prüfen.

1.2 Allerdings hat die Rücknahme des Einspruchs durch die Beschwerdegegnerin zur Folge, dass die Einsprechende hinsichtlich der Sachfragen nicht mehr am Beschwerdeverfahren beteiligt ist. Da kein Antrag auf Kostenverteilung vorliegt, hat die Einsprechende ferner auch keinen Parteistatus mehr (T 789/89, ABl. EPA 1994, 482).

Zulässigkeit der Beschwerde

2. Die Zulässigkeit einer Beschwerde ist dann gegeben, wenn die Beschwerde und die Beschwerdebegründung den Erfordernissen der Artikel 106 - 108 EPÜ, sowie der Regel 99 EPÜ entspricht.

2.1 Die Einspruchsabteilung hatte den Hauptantrag zurückgewiesen, da der Gegenstand des Anspruchs 1 nicht neu gegenüber den beiden geltend gemachten Vorbenutzungen war.

2.2 Die Beschwerdeführerin hat in der Beschwerdebegründung die öffentliche Zugänglichkeit der beiden geltend gemachten Vorbenutzungen in Frage gestellt. Entsprechend wären die beiden Vorbenutzungen kein Stand der Technik gemäß Artikel 54(2) EPÜ und könnten daher im Gegensatz zur Entscheidung der Einspruchsabteilung auch nicht neuheitsschädlich sein, bzw. die erfinderische Tätigkeit in Frage stellen.

2.3 Die Beschwerdebegründung enthält somit zumindest eine vollständige Argumentationslinie, warum die Entscheidung zum Hauptantrag aus Sicht der Beschwerdeführerin aufzuheben ist und erfüllt somit die Erfordernisse der Regel 99(2) EPÜ.

2.4 Die Beschwerde ist daher zulässig.

Zulässigkeit des Einspruchs

3. Die Zulässigkeit eines Einspruchs ist dann gegeben, wenn die Einspruchsschrift den Erfordernissen der Artikel 99 und 100 EPÜ, sowie der Regel 76 EPÜ entspricht.

T 2069/17 - Different technical fields

Key points

• This examination appeal concerns the inventive step of the ‘method for imaging a biological sample’ of claim 1.
• D3 is the closest prior art and discloses a method for imaging a biological sample. “Document D3 fails to disclose the features relating to the corrective optics, i.e. that corrective optics are removably inserted between the detector and the flow cell [...] The technical effect of this difference is that spherical aberration is compensated for and the problem to be solved is therefore to improve image quality.”
• “Document D6 discloses a microscope for imaging different layers of a sample in a sandwich configuration. D6 further identifies a change in optical medium as the cause for aberration [...] and states that corrective optics are inserted to compensate spherical aberration due to a change in the optical medium [.] Therefore, corrective optics have been employed in document D6 for the same purpose as in claim 1. It would be obvious to the person skilled in the art, namely when the same result is to be achieved as in claim 1, to apply corrective optics with corresponding effect in the imaging method disclosed in document D3, thereby arriving at a method for imaging a biological sample according to claim 1.”
• “The appellant argued that D6 disclosed a specific type of microscope which recorded the track of cosmic rays. Thus, the technical fields of D6 and D3 differed significantly and the skilled person would not consult document D6 when starting from a sandwiched flow cell as disclosed in D3.”
• “The board is of the opinion that document D6 relates to optical microscopes in general (see title and column 1, lines 10 to 16: "Field of the Invention") and offers a solution (insertion of corrective optics) for the correction of spherical aberration that occurs due to imaging of layers at different levels (see claim 1,  [...]). Therefore, the skilled person would consider document D6 and apply its teachings in order to solve the objective technical problem.”
• D6 is US 4,563,062.
• As a comment, I think that this is a case which illustrates that the credibility of the EPO depends on how good the technical members of the Board can assume the role of the notional skilled person. I don't know whether a skilled person working in the field of D3 (link) would consult D6. I note that the Board does not expressly identify the skilled person. I would say it is the skilled person working with the technology of D3. D3 is a patent application carefully drafted to not overly restrict the scope of application of the claimed device, though the focus of D3 appears to be DNA microarrays (‘Scientists use DNA microarrays to measure the expression levels of large numbers of genes simultaneously or to genotype multiple regions of a genome’; Wikipedia). So the skilled person would likely be an engineer involved in the design of microscopes for reading out such DNA microarrays. Perhaps this would be an optical engineer; perhaps it would be another kind of engineer. Similarly, D6 is a patent carefully stating the 'field of the invention' of the claimed optical system in the most general terms. In the very next paragraph, it acknowledges as prior art "an emulsion chamber is one of the known apparatus for recording the track of cosmic rays." At least prima facie, D6 does not seem to be the kind of handbook that illustrates basic principles of optical engineering in general. But perhaps an optical engineer would search broadly for any literature addressing the optical problem at issue, irrespective of the precise application (assuming that the skilled person of D3 is an optical engineer instead of a biologist). 

EPO T 2069/17 - link

Reasons for the Decision

1. Main request - Inventive Step - Article 56 EPC

1.1 Closest prior art

Document D3 represents the closest prior art and discloses a method for imaging a biological sample, where the biological sample comprises a flow cell (100) with a first biological sample (21) disposed on a first surface (20) and a second biological sample (11) disposed on a second surface (10) of the flow cell, such that the first and second surfaces face each other (see paragraphs [0024] to [0026] and figures 1 and 3). The biological samples are excited by a radiation source and radiation emitted from the two surfaces is detected (see paragraphs [0012] "Fluoreszenzmessungen" and [0036] "Fluoreszenzdetektion"). According to D3, the fluorescence measurements are performed at the flow cell through the first surface (see paragraphs [0035]), i.e. the flow cell is mounted as a whole on an imaging station such that the first surface (20) is disposed between the detector and the second surface (10). This is confirmed by the statement that the measuring time is reduced due to fluorescence measurements at the first and second surfaces (see paragraph [0012]).

T 1533/15 - Lateness alone can be sufficient

Key points

• In this opposition appeal, Board 3.3.02 applies the RPBA 2007 to hold inadmissible two test reports filed by Patentee, as well a large number of auxiliary requests.
• However, the Board first discusses admissibility of the appeal of the patentee. The OD gave a very short statement in its decision why the feature that the composition is "for use in coating a food or beverage can" did not make the claimed subject-matter novel over D2.
• The Board: “the patentee's statement [in its Statement of grounds] made it clear why it thought the opposition division's reasoning was wrong. This is all the more true since in view of the extremely short statement given by the opposition division to explain its conclusion about lack of novelty of claim 20 as granted (2.2 supra), the patentee could have only speculated what the reasoning behind this conclusion was. The reasons provided by the patentee in its statement of grounds of appeal were therefore considered sufficient by the board to meet the requirements of Rule 99(2) EPC.”
• The Board considers that the feature does not make the claim novel over D5. In particular, the composition does not need to be suitable as coating for a can; the patent itself indicates that the coating may contain additional components besides the claimed composition.
  
  Test reports filed one month before oral proceedings Board
• The Board decided to not admit D23. “D32a-c were filed on 10 December 2019, i.e. only one month prior to oral proceedings. On the basis of these new items of evidence, the patentee alleged a new fact [], namely, that the surfactant AOT-75 as contained in the latex polymer of D5's example 18, would render this latex polymer unsuitable for coating food and beverage cans. Therefore, the patentee's submission amounted to a new allegation of fact, based on new evidence, late-filed in appeal proceedings. It thus represented an amendment of the patentee's case, which can only be admitted at the board's discretion pursuant to Article 13(1) and (3) RPBA 2007. [....] Moreover, the patentee did not dispute that D32a-c were already known to it on 9 August 2019. The patentee could give no reasons why it waited until one month prior to oral proceedings to file these documents.
• As a comment, for the admissibility of new evidence (as D23 is), it does not matter if this is a new allegation of fact (although evidence is of course used to support factual allegations). Article 114(2) EPC expressly states that that the EPO ‘may disregard [late-filed] facts or evidence’. The new allegation of fact is the argument based on the surfactant AOT-75. It seems useful to distinguish between the evidence and the alleged fact: factual allegations and supporting evidence are not always introduced simultaneously. 
• The Board also did not admit another test report D33. “The board considered that D33 did not represent a timely reaction to test report D23 filed by the opponent. In fact, D23 had been filed on 14 March 2016 with the opponent's response to the patentee's statement of grounds of appeal. The patentee thus waited almost four years before submitting D33 only one month prior to oral proceedings.”
  
  Cancelling independent granted claim one month before oral proceedings Board
• The Board had found that independent product claim 20 as granted was not novel. The patent as granted had also method claims 1 and 14. The Board does not admit the auxiliary requests wherein claim 20 is deleted, under ARt. 13(1) RPBA 2007.
• “As stated by the Enlarged Board of Appeal (R 16/09, reasons, 2.2.4), lateness alone can outbalance the further criteria mentioned in Article 13(1) RPBA 2007 and become decisive when exercising the discretion to admit or not, inter alia, late-filed claim requests (R 16/09, reasons, 2.2.12; see also T 0253/10, reasons, 2.3). Hence, the very fact that auxiliary requests 1, 1A, 2A, 2C and 3A to 14A have been filed extremely late in the present appeal proceedings was sufficient reason alone not to admit these requests.”
• Before the OD and with the SoG, patentee had filed AR's wherein claims 1 and 14 were amended. “This led the opponent and the board to believe that those requests contained all the amendments the patentee considered to be necessary”
• “This belief was reinforced by the fact that until one month prior to oral proceedings before the board, the patentee never manifested any intention to go in a different direction, namely, to delete granted claim 20 while leaving claims 1 and/or 14 unamended”
• “This change of direction was further aggravated by the fact that the newly filed auxiliary requests were not convergent.”
• “The opponent (and the board) was thus confronted with a target that was moved almost at the end of the appeal proceedings. This implied high complexity both in procedural and technical terms which was a further reason for not admitting auxiliary requests 1, 1A, 2A, 2C and 3A to 14A into the proceedings.”
• “Moreover, the notice of opposition (page 11, point 2.16.2) already contained the opponent's novelty objection against granted claim 20 in view of D5's example 18. This objection was accepted by the opposition division, which also found the subject-matter of claim 20 to be not novel over said example 18. Consequently, the patentee could and should have filed auxiliary requests 1 and 1A already before the department of first instance. This was even more true when considering that during oral proceedings before the opposition division, the patentee was informed (minutes of oral proceedings before the opposition division, page 1, point 2, last paragraph) that remaining independent claims, i.e. inter alia claims 1 and 14, were found to be novel by the opposition division. At that point in time, the patentee could and should have filed requests not containing claim 20 anymore.”

EPO T 1533/15 - link

Reasons for the Decision

Applicable Rules of Procedure of the Boards of appeal

1. On 1 January 2020, the previously applicable Rules of Procedure of the Boards of appeal were replaced by new Rules of Procedure. The present decision has been issued after the new Rules of Procedure entered into force.

1.1 Hereinafter, the requirement that the statement of grounds of appeal and the reply thereto should contain the party's complete case will be addressed. This requirement is present in Article 12(2) of the previous Rules of Procedure (hereinafter Article 12(2) RPBA 2007) and Article 12(3) of the new Rules of Procedure (hereinafter Article 12(3) RPBA 2020) and is expressed with a substantially identical wording. According to Article 25(1) of the transitional provisions of the new Rules of Procedure, for any appeal pending on the date of entry into force like the present one, the new Rules of Procedure shall apply subject to certain exceptions dealt with in paragraph 25(2) and (3) RPBA 2020. Article 12(3) RPBA 2020 is not among those exceptions. Hence, Article 12(3) RPBA 2020 rather than Article 12(2) RPBA 2007 applies and will be referred to in the following.

1.2 In subsequent sections of the present decision, admittance of several submissions under the Rules of Procedure will be discussed, with these submissions having been filed after the summons to oral proceedings had been issued and before the entry into force of the new Rules of Procedure. For such a situation, Article 25(3) of the transitional provisions of the new Rules of Procedure applies. According to this provision, Article 13(2) of the new Rules of Procedure shall not apply and instead Article 13 of the previous Rules of Procedure shall continue to apply. This means that at least Article 13(1) and (3) of the previous Rules of Procedure (hereinafter Article 13(1) and (3) RPBA 2007) applies and will be relied upon by the board in the following sections addressing admittance.