T 0072/16 - Tacit secrecy agreement

Key points

• This case is about proofing a tacit secrecy agreement in opposition. The OD heard a witness on the matter. 
• “The opposition division arrived at the conclusion that on the basis of the evidence on file and the testimony of the witness, Mr. Krajewski, Aspen Aerogels, Inc. (hereinafter: Aspen) shipped 48 pipe sections manufactured as shown in the video D11 to Technip France (hereinafter: Technip) on 27 January 2005 and that Technip received and used them without being bound by confidentiality. According to the testimony, [seller] Aspen was bound by confidentiality, but it was not reciprocal. The opposition division was convinced that neither an express confidentiality agreement nor an implicit obligation of confidentiality existed.”
• “The board does not question the opposition division's conclusion insofar as Aspen shipped 48 pipe sections manufactured as shown in the video D11 to Technip on 27 January 2005 and that Technip received and used them. This statement appears also not to be contested by the respondent/proprietor. However, the board considers that, during the oral proceedings before it, the respondent has convincingly demonstrated on the basis of documents D12, D13, D14 and the testimony of Mr. Krajewski, that said sale and shipment of 48 panels on 27 January 2005 was carried out under an explicit non-disclosure-agreement binding both Aspen and Technip or that there was at least an implicit confidentiality agreement, and that this has not been disproved by the appellant [opponent].”
• The Board: “there is no reason to apply a standard of proof stricter than that of "balance of probabilities". According to the established jurisprudence of the boards of appeal, the stricter standard of "beyond reasonable doubt" should be applied when all the evidence in support of the alleged prior public use lies within the power and knowledge of the opponent, while the patent proprietor has barely any or no access to it at all []. However, neither has it been established in the present case that all the evidence for the alleged prior use lies within the power and knowledge of the appellant, nor is there any evidence before the board that Aspen is a company belonging to a group the opponent is part of or any indication of similar circumstances that would justify that Aspen be assimilated to the appellant.”
• The Board considers it proven that the shipped pipe sections were " a development product, a prototype supplied in the course of an ongoing collaboration programme between these two partners." The documentary evidence indicates an NDA. The witness testimony does not refute this.
• “the board does not doubt the witness's credibility or whether the testimony corresponds to the witness's true recollection. However, the probative value of the statements concerning the existence of a NDA []is not persuasive in this respect when compared to the evidence on file, in particular with regard to the confidentiality clause in D13, page 2. [...] It is not surprising that the witness, an engineer, not an IP specialist, was not aware of all the confidentiality requirements binding the other party, as also stated in document D12. This is also consistent with his declarations on his role in the project [...]”

EPO T 0072/16 - link

Summary of Facts and Submissions

I. The opponent filed an appeal against the decision of the opposition division on the amended form in which European patent No. 2 293 920 ("the patent") can be maintained.

The opposition division admitted the following evidence in support of an alleged prior use:

D11: Demonstration video of Aspen Aerogels Inc.;

D11a: Signed declaration by Mr Mark Krajewski;

dated 7 October 2013

D12: Signed declaration by Mr Mark Krajewski;

dated 30 October 2014

D13: Product Assembly Specification of Aspen

dated 22 November 2004

D14: Bill of Lading from Shipco Transport

dated 27 January 2005.

The opposition division also heard a witness (Mr Mark Krajewski). The minutes of the taking of evidence by hearing the witness will be referred to as document "MMK" in what follows.

II. The oral proceedings before the board were held on 20 February 2020.

III. The appellant (opponent) requested that the decision under appeal be set aside and the patent be revoked.

The respondent (patent proprietor) requested that the appeal be dismissed (main request), or that the decision under appeal be set aside and the patent be maintained in amended form on the basis of the sets of claims filed as first and second auxiliary requests in response to the statement of grounds of appeal by letter of 13 July 2016.

IV. In the decision under appeal the opposition division evaluated the evidence related to the alleged public prior use as follows:

"[2.2.1] Mr. Krajewski's testimony was free of contradictions. He acknowledged gaps in his memory, which is natural after more than 10 years. He was nevertheless able to recite the events around the manufacture of the pipe section from his own immediate experience. He was part of the team manufacturing the 48 pipe sections later shipped to Technip, France according to D14, and he was the videographer of D11. The opposition division therefore considered his testimony to be credible.

T 1625/17 - What substantiation entails

Key points

• The Board does not admit the AR's filed by patentee which aim to overcome the lack of inventive step of the main request because the requests were submitted with insufficient substantiation. 
• The substantiation for AR-1 was that the claims were "inventive, for essentially the same reasons given for the Main Request, above".
• The Board: “Under Article 12(2) RPBA 2007, the statement of grounds of appeal and the reply must contain a party's complete case.  This would have required in the present case to explain whether and how the additional features contained in the independent claims introduced additional distinguishing features over the closest prior art, were meant to lead to a different formulation of the problem successfully solved over it, and to a different assessment of the obviousness of the claimed solution, in particular why the additional features were not already implied by the measures whose obviousness was argued by the opposing parties in relation to the requests of higher ranking. ”
• “This would also have necessitated an indication of the pertinent passages of the relevant prior art and their assessment in order to allow for the Board and the opposing parties to make a link between the arguments submitted by the patent proprietor and the disclosure of those documents, allowing thereby the Board and the opposing parties to understand whether the amendments inserted by the patent proprietor could overcome the lack of inventive step found in respect of the auxiliary requests of higher ranking. ”

• “This is not only true in respect of the objection of inventive step over D3 addressed in the present decision, but also in respect of the additional objections for lack of inventive step starting from the disclosure of any of D8/D7, D8/D32 or D10 which have been raised against the main request and fully substantiated by opponents 1 and 2. ”
• “The submissions made by the patent proprietor in respect of the auxiliary requests, devoid of a clear analysis, require therefore from the Board and the opposing parties an unreasonable effort to form an opinion of whether the elements of reasoning invoked by the patent proprietor if considered in a full analysis of inventive step would be convincing or not, which contrary to the RPBA runs counter the requirements of a fair procedure and efficient processing of the case. ”

EPO T 1625/17 -  link



5th and 10th auxiliary requests

10. The 5th auxiliary request comprises only the methods defined in claims 8 and 9 of the present main request, whereas the 10th auxiliary request comprises only said methods, but restricted to their first embodiment. As indicated above, both the first and second embodiments of those method claims lack an inventive step. The 5th and 10th auxiliary requests are therefore not allowable either for the same reasons as outlined for the main request.

1st to 4th, 6th to 9th and 11th to 14th auxiliary requests

11. The 1st auxiliary request differs from the main request in that the independent claims define that the primer composition is applied in wet form. The patent proprietor indicated that the claims of the 1st auxiliary request were "inventive, for essentially the same reasons given for the Main Request, above" (statement of grounds, top of page 5).

T 2012/17 - Not addressing the applicant's arguments

Key points

• In this examination appeal for a software-related invention, “the contested decision neither explicitly nor implicitly addresses the appellant's arguments with respect to at least two crucial points of dispute. It follows that the Examining Division infringed the appellant's right to be heard and thus committed a substantial procedural violation.”
• The appeal fee is reimbursed.
• The Board remits the case. " It is therefore questionable whether document D1 is a suitable starting point for assessing inventive step of the subject-matter of claim 1 of the main request. However, inventive step still has to be assessed with respect to documents D2 to D5."

EPO T 2012/17 - link

Reasons for the Decision

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

2. The invention

2.1 The application relates to "web applications" which are to be downloaded to user terminals such as mobile phones. According to paragraph [0018] of the published application, the term web application refers to "a set of information material from which web pages may be constructed". Examples of such information are "images, text, code segments in markup languages such as HTML and XHTML, stylesheets such as CSS, script languages such as JavaScript, video and audio, as well as various browser plug-in content such as Flash, Silverlight and Java Applet content".

2.2 The invention seeks to provide web applications customised to user-specific parameters and terminal-specific properties (paragraph [0006]). Essentially, this is achieved by providing, at an application server, a customisable web application template and, in response to requests specifying user-specific parameters and a user-terminal type, creating the customised web application on the basis of the template, the user-specific parameters and terminal-specific properties corresponding to the user-terminal type.

T 0682/16 - Non-human genetically engineered organisms

Key points

• This is a kind of Oncomouse case (opposition appeal T315/03) with a claim directed to non-human organisms comprising a host cell comprising a genetic construct. The Board applies Art. 53(a) and Rule 28(d) in great detail in the preliminary opinion (here) but that opinion does not become case law, alas, since patentee restricts to AR-2 cancelling the claims to the organism. 
• The genetic construct is a gene expression system that can be used to express a gene of interest in the cell. This is similar to T 0606/03. 
• The Board finds a likelihood of animal suffering is established because the claim is so broad so as to encompass cases wherein the genetically engineered animal suffers.
• On the other hand, a medical benefit is not credible because of the breadth of the claim.
• The Board applies the 'correspondence principle'.
• The Board also refers to the 'real test' of T 19/90 (Oncomouse examination appeal).
• The Board comments on the case where, for the purpose of Art.53(a), a claim covers both allowable and non-allowable embodiments.
• Claim 45 directed to the isolated host cell was not opposed.

• Over to the procedural stuff. The decision states that " Several oppositions were filed" and that " An appeal was lodged by one of the opponents (appellant).". The OD found that only a single opposition fee was paid and that there was a joint opposition filed by nine legal persons. I'm not aware that it would be established case law that an individual member of the 'group of joint opponents' may appeal individually. However, the Board does not comment on this in any detail.

• A question for trainees. In the present case, the letters for the joint opponents in the first instance proceedings were signed (only) by a Mr. Then. Mr. Then is neither a professional representative nor a lawyer. Explain why this is not a problem and explain the facts you have to assume for reaching this conclusion. What kind of evidence could the opposition division request from Mr. Then to show his entitlement to act in the proceedings? (normally, the question works out the same in appeal, but see the particularity above, so I limit the question to the first instance proceedings).
• Mr. Then showed up alone at the oral proceedings before the opposition division (besides the professional representative for the patentee) and wishes to present opponents' case. Would this be a problem?

EPO T 0682/16 -  link

Reasons for the Decision

Admissibility of the joint opposition and of the appeal

1. In reply to the statement of grounds of appeal, the respondent contested the decision of the opposition division on the admissibility of the joint opposition and requested the board to dismiss both, the opposition and the appeal, as inadmissible.

2. In its communication pursuant to Article 15(1) RPBA 2007, the board drew the parties' attention to the opposition division's summary in both, its summons to attend oral proceedings and the decision under appeal, of the facts and submissions on the basis of which the respondent argued against the admissibility of the joint opposition (cf. pages 2 to 4 of the Summons to attend oral proceedings; pages 3 to 6 of the decision under appeal). The board further noted that these facts and submissions were not contested in appeal and, indeed, were identical to those put forward by the respondent in appeal proceedings.

3. After consideration of the facts and submissions as well as of the respondent's arguments and the evidence on file, the board informed the parties that it saw no reason to deviate from the findings of the opposition division as regards this issue, namely that "Testbiotech e. V., represented by Mr. Then [as executive director of Testbiotech e.V.], continues to be regarded as opponent and common representative of the joint opposition" (cf. bottom of page 6 in the Summons to attend oral proceedings, and pages 6 to 8 of the decision under appeal).

4. Since the parties have not contested the board's provisional opinion on this issue, the board thus considers the joint opposition and the appeal to be admissible.

Admission of the main request into the appeal proceedings

5. The main request was filed (as auxiliary request 2) in response to the communication pursuant to Article 15(1) RPBA 2007, wherein the parties were informed of the board's provisional opinion on the issues of the appeal. The main request is thus an amendment of the respondent's case and may be admitted into the proceedings only at the discretion of the board (Article 13(1) RPBA 2020).

6. The appellant has not provided any reasons against the admission of this request into the appeal proceedings.

7. By deleting claims 48 to 53, the respondent addressed all issues raised by the appellant and by the board in its communication. The main request does not give rise to new objections and contributes to the efficiency of the procedure.

8. Therefore, the board, in the exercise of its discretion (Article 13(1) RPBA 2020), admits the main request into the appeal proceedings.

Main request

9. In the present case, the opposition was only directed against claims 48 to 53 to the extent that they related to "a non-human organism" comprising a host cell of claim 45.

10. The main request no longer contains claims directed to "a non-human organism". Thus, it overcomes all grounds of opposition. This has also been acknowledged by the appellant.

11. Therefore, the patent can be maintained on the basis of the main request and a description to be adapted thereto (Article 111(2) EPC).

Order

For these reasons it is decided that:

1. The joint opposition and the appeal are admissible.

2. The decision under appeal is set aside.

3. The case is remitted to the opposition division with the order to maintain the patent on the basis of claims 1 to 51 according to the main request filed on 8 April 2020 and a description to be adapted thereto.

T 2884/18 - Required level of substantiation

Key points

• The appeal of the opponent is inadmissible due to lack of substantiation of the Statement of grounds under Rule 99(2) EPC. The Statement of grounds was signed by a professional representative. 
• The opponent asserts that public prior use "  BMW E87" was proven, but does not address the conclusion of the OD that claim 1 was inventive over that prior use in view of the other cited documents.
• There is a further prior use "BMW F25". “Die Beschwerdeführerin [opponent] versäumt es nämlich, unter Punkt 4 der Beschwerdebegründung in Bezug auf die angebliche offenkundige Vorbenutzung BMW F25 im einzelnen zu zeigen, wo jedes der Merkmale von Anspruch 1 in der Zeichnung der Anlagen 2 und 25 offenbart sei, sondern bestreitet insoweit nur mit einem pauschalen Verweis auf diese Zeichnungen die Neuheit des gesamten Gegenstands von Anspruch 1.”
• According to the Board, it is not enough to merely argue that public prior use took place, the opponent must also substantiate how it anticipates the claim, even if the OD had only decided that in their view it was not proven that the public prior use took place. 
• “Um einen Mangel an Neuheit zu begründen, ist es i.d.R. notwendig, sich mit den einzelnen Merkmalen eines Anspruchs auseinanderzusetzen. Das bedeutet nicht, dass man sich immer mit allen einzelnen Anspruchsmerkmalen detailliert auseinandersetzen muss: insbesondere für Merkmale, die im Vorverfahren nie bestritten wurden, oder deren Verwirklichung im Stand der Technik eine reine Selbstverständlichkeit ist, kann eine detaillierte Begründung entfallen. Die Begründung muss jedoch ausreichen, um objektiv erkennen zu können, aus welchen Gründen alle beanspruchten Merkmale im Stand der Technik verwirklicht sein sollen. 
• Wie unten noch in Detail erläutert wird, ist im vorliegenden Fall der pauschale Verweis auf die Zeichnungen in der Beschwerdebegründung nicht ausreichend, um die diesbezügliche Argumentation der Beschwerdeführerin nachvollziehen zu können.”
• By analogy, if the OD decides to not admit an auxiliary request, the patentee should probably both specifically give reasons why the OD's decision on admissibility is wrong, and why the claims of the request are allowable.

EPO Headnote

Ein vollständiger Sachvortrag, wie ihn Artikel 108 EPÜ und Artikel 12 VOBK seit jeher verlangen, erfordert bei kumulativ aufeinander aufbauenden Argumentationslinien die Darlegung sämtlicher Tatsachen, die erst gemeinsam das behauptete rechtliche Ergebnis tragen (hier: Offenkundigkeit der Vorbenutzung und neuheitsschädliche Vorwegnahme aller Merkmale der Erfindung durch diese bei Beschwerde gegen die Einstufung einer Erfindung als neu im Sinne von Artikel 54 EPÜ).

Erst dann ist dargelegt, dass die Entscheidung aufgehoben werden sollte, vgl. T 922/05, Gründe Nr. 3 und 4, für den spiegelbildlichen Fall einer Beschwerde gegen eine Entscheidung, die mehrere alternative Gründe für die fehlende Patentfähigkeit einer Erfindung aufzählt.

Wird von mehreren kumulativ zur Änderung der Entscheidung darzulegenden Tatsachen nur eine ausreichend substantiiert, ist die Beschwerde unzulässig.

EPO T 2884/18 - link

Entscheidungsgründe

1. Die Beschwerde wird als unzulässig verworfen - Regel 101(1), Artikel 108, Satz 3 und Regel 99(2) EPÜ.

2. Nach Artikel 108, Satz 3 und Regel 99(2) EPÜ hat die Beschwerdeführerin in ihrer Beschwerdebegründung darzulegen, aus welchen Gründen die angefochtene Entscheidung aufzuheben oder in welchem Umfang sie abzuändern ist und auf welche Tatsachen und Beweismittel sie ihre Beschwerde stützt.

T 0989/15 - The rejoinder in appeal

Key points

• As to the present case: “the appellant [patentee] affirmed at the oral proceedings that the preliminary opinion of the board did not include any issues not already raised by the respondents in their replies of 15 December 2015 and 21 January 2016 to the statement setting out the grounds of appeal. The relevant objections of added subject-matter, lack of clarity and lack of novelty were therefore known to the appellant at the latest at the beginning of 2016, i.e. just short of four years before the preliminary opinion of the board was issued. As a consequence, there can be no doubt that the appellant could have replied to the objections earlier, in particular in direct reply to the respondents' letters of reply mentioned above.”
• “In fact, through the statement in its letter dated 3 December 2015 requesting "to provide the proprietor with an opportunity to reply to [a reply of the opponent directed to the proprietor's arguments and claim sets]", the appellant had expressed its intention to react to objections at an early stage of the appeal proceedings.
• In contrast, the appellant opted to wait until it had received the board's preliminary opinion given in the communication of 3 January 2020. Only after that the appellant filed a rejoinder.”
• The procedural step of the rejoinder of the appellant is implicitly specified in Art.15(1) paragraph 1, second sentence RPBA; see also Explanatory Note 13(2): “The intention behind the two-month minimum waiting time [between the respondent's response and the summons] is to give a party the opportunity to react to another party’s written reply with submissions falling under the less strict second level of the convergent approach, i.e. Art. 13(1).”
• “The board concurs with respondent II [opponent] that a party to appeal proceedings must always be prepared for the board to reverse a conclusion reached by the department of first instance in the proceedings leading to the impugned decision. The fact that the opposition division in point 5.1.4 of its decision gave a positive opinion, that the amendment of feature I met the requirements of Article 123(2) EPC, was in itself not a sufficient reason for the appellant to not file an appropriate fall-back position with its initial appeal submissions.”
• The OD had revoked the patent, finding that claim 1 of AR-2 was not novel. The Board's remark raises the interesting issue whether patentee should really address Art.123(2) - that was decided in its favour by the OD - in its Statement of grounds (thereby going against the idea of convergence at the first level) or in the rejoinder.
• I suggest using the term 'initial appeal submissions' as umbrella term for the Statement of grounds and the response of the respondent under reply under Art. 12(1)(c) RPBA

• This decision of Board 3.2.05 has verbatim the same headnote as recent decision T 0954/17 of Board 3.4.02, with different parties. 
• Which raises an interesting issue about the independence of the Board, incidentally.
• Erratum 26.07.2020 Which perfectly makes sense because the legal member was the same in both cases.  The idea of multiple Technical Boards of Appeal sharing a legal member is indeed improving the consistency of the case law.   
• For an analysis of the headnote, I refer to T 0954/17.

EPO - T 0989/15 link

Reasons for the Decision

Procedural status of parties

1. Under Article 107, second sentence, EPC, the parties to proceedings before the department of first instance are also parties to the ensuing appeal proceedings, even if they have not filed an appeal. Therefore, where more than one party to opposition proceedings lodges an appeal and one of them subsequently withdraws its appeal, it becomes a party as of right under Article 107 EPC, provided the other appeal(s) is(are) admissible.

2. Accordingly, after withdrawing its appeal during the oral proceedings before the board, opponent 2 became a party as of right under Article 107 EPC to the present appeal proceedings, i.e. respondent II.

Admittance of the appellant's main request and first to fourth auxiliary requests

3. The main request and the first to fourth auxiliary requests were filed with the letter dated 17 January 2020 as the fourth to eighth auxiliary requests. Thus, these requests were filed after the parties had been summoned to oral proceedings.

In the present case, the summons to oral proceedings was notified before the date on which the RPBA 2020 entered into force, i.e. 1 January 2020. Thus, in accordance with Article 25(3) RPBA 2020, Article 13(2) RPBA 2020 does not apply to the question whether to admit the appellant's requests filed on 17 January 2020 into the appeal proceedings. Instead, Article 13 of the Rules of Procedure of the Boards of Appeal in the version of 2007 (RPBA 2007, see OJ EPO 2007, 536 and EPC, 16th edition, June 2016, pages 601 to 629) continues to apply.

4. Pursuant to Article 13(1) RPBA 2007, any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the board's discretion. This discretion is to be exercised in view of, inter alia, the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. Article 13(3) RPBA 2007 adds that amendments sought to be made after the oral proceedings have been arranged will not be admitted "if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings".

5. Article 13(1) RPBA 2007 merely lists examples of factors to be considered by the board when exercising its discretion and not an exhaustive set of criteria which must be cumulatively met, such that other considerations and well-established criteria relevant to the admissibility issue can also be taken into account (see Case Law of the Boards of Appeal of the European Patent Office ("Case Law"), 9th edition 2019, V.A.4.1.2). Nor do these criteria have to be met cumulatively. According to the case law of the boards of appeal developed in the context of Article 13(1) and (3) RPBA 2007, for amendments within the meaning of Article 13 RPBA 2007, such as facts and evidence submitted late, further criteria may also be applied, for example the relevance of the late-filed submission, the reasons for the late filing, whether the late filing has to be regarded as an abuse of procedure, and whether it is a legitimate reaction to the decision at first instance (see e.g. Case Law, 9th edition 2019, V.A.4.13). According to established case law, discretion has to be exercised equitably, i.e. all relevant factors which arise in the particular circumstances of the case have to be considered, and, in exercising this discretion, the circumstances of the specific case have to be taken into account (see Case Law, 9th edition 2019, V.A.4.3).

Essentially, it is a matter for each party to submit all facts, evidence, arguments and requests relevant for the enforcement or defence of its rights as early and completely as possible, in particular in inter partes proceedings, in order to act fairly towards the other party and, more generally, to ensure due and swift conduct of the proceedings (see Case Law, 9th edition 2019, V.A.4.1.2 and V.A.4.2.1). According to the established case law of the boards of appeal, amending a party's case at a late stage in the proceedings can be justifiable if it is an appropriate and immediate reaction to unforeseeable developments in the previous proceedings which do not lie in the responsibility of the party submitting the amendment (see Case Law, 9th edition 2019, V.A.4.4.2).

6. The present requests were submitted by the appellant "to address all objections put forward by the BoA and those of the opponents" (page 1 of the letter dated 17 January 2020).

Yet, the appellant affirmed at the oral proceedings that the preliminary opinion of the board did not include any issues not already raised by the respondents in their replies of 15 December 2015 and 21 January 2016 to the statement setting out the grounds of appeal. The relevant objections of added subject-matter, lack of clarity and lack of novelty were therefore known to the appellant at the latest at the beginning of 2016, i.e. just short of four years before the preliminary opinion of the board was issued. As a consequence, there can be no doubt that the appellant could have replied to the objections earlier, in particular in direct reply to the respondents' letters of reply mentioned above.

In fact, through the statement in its letter dated 3 December 2015 requesting "to provide the proprietor with an opportunity to reply to [a reply of the opponent directed to the proprietor's arguments and claim sets]", the appellant had expressed its intention to react to objections at an early stage of the appeal proceedings.

In contrast, the appellant opted to wait until it had received the board's preliminary opinion given in the communication of 3 January 2020. Only after that the appellant filed a rejoinder.

7. In this context the board wishes to remark that a communication under Article 15(1) RPBA 2020 is intended to set out the preliminary opinion of the board as guidance for the oral proceedings. Where the board's communication contains a preliminary opinion based solely on the issues raised by the parties and their arguments, that communication cannot be taken as a justifiable trigger for submitting new requests that the parties could have filed earlier (see also Case Law, 9th edition 2019, V.A.4.7).

8. The board concurs with respondent II that a party to appeal proceedings must always be prepared for the board to reverse a conclusion reached by the department of first instance in the proceedings leading to the impugned decision. The fact that the opposition division in point 5.1.4 of its decision gave a positive opinion, that the amendment of feature I met the requirements of Article 123(2) EPC, was in itself not a sufficient reason for the appellant to not file an appropriate fall-back position with its initial appeal submissions.

9. Also, the argument that the appellant could not have been expected to file an auxiliary request in reaction to each and every objection raised by the other parties does not persuade the board. In the present case, respondents I and II each brought forward one objection of added subject-matter to claim 1 of the then main request in their letters of reply dated 15 December 2015 and 21 January 2016. Given the circumstances of the case, it would not have posed an undue burden on the appellant as the losing party to file an auxiliary request addressing at least these two issues in an attempt to provide a fall-back position in case the board were to concur with the respondents.

10. By filing the claim requests at such a late stage of the appeal proceedings, the requirements of due process and the need for procedural economy were therefore not satisfied.

11. With the main request and each of the first to third auxiliary requests, the appellant filed an amended dependent claim 2 with the added feature:

"walls (26, 27) of the meandering channel (24) that are positioned next to each other have a distance (d) equal to two times an amplitude (a) of the sine wave".

The appellant argued that this amendment was a reaction to the view of the board expressed in point 11.3 of its preliminary opinion, in particular that "the amplitude configuration in pending claim 2 of the main request ... depends on the anti-symmetric feature, according to the claiming sequence in granted claims 4 and 5" (letter dated 17 January 2020, point 1.2.3.1). The amendment was alleged to have a basis on page 24, lines 28 to 31, of the description as originally filed.

12. Instead of addressing the objection of added subject-matter in respect of claim 2, which was raised by respondent I and referred to by the board in its preliminary opinion, the appellant chose to incorporate entirely new subject-matter taken from the description into the claim.

Admitting these requests would have meant having to analyse dependent claim 2 anew with respect to the requirements of the EPC, in particular Articles 84 and 123(2) EPC. Such an analysis would have been complex, requiring a substantial amount of time at this late stage of the appeal proceedings, contrary to the need for procedural economy.

The board is of the view that, at such a late stage, it is not reasonable for the other parties to be expected to deal with subject-matter never before presented in the proceedings, although it could easily have been done so at an earlier stage of the appeal proceedings, and that does not appear to be a clear reaction to the objections on file.

13. In this respect, the fourth auxiliary request differs from the higher-ranking requests because claim 2 under dispute is now deleted.

The fourth auxiliary request also seems to address the objection raised by respondent II in respect of feature I and summarised in point 11.2 of the preliminary opinion of the board, in that further features of the detailed description of Figure 3b were added to claim 1. The board further observes that the "initial thoughts" of respondent II "on whether the claims of the new requests would be 'clearly allowable'" (see the letter dated 5 February 2020) did not take issue with the fourth auxiliary request. This may be regarded as tantamount to a prima facie finding that the amendments successfully address the issues raised without giving rise to new ones.

Admittedly, in its letter dated 5 March 2020 (pages 13 and 14), respondent II saw a lack of clarity in view of the word "size" in feature J and alleged a lack of inventive step having regard to document E1. However, these issues correspond to a full assessment of the compliance of the request with the requirements of the EPC, rather than a prima facie consideration with the aim of deciding on its admittance. This is underpinned by the statement in the second paragraph on page 3 of that letter, in which respondent II expressed "that we hope to discuss at the oral proceedings if the first appellant's late-filed auxiliary requests are admitted into proceedings".

14. In view of the above, the board, in exercising its discretion in accordance with Article 13(1) and (3) RPBA 2007, decided not to admit the main request and the first to third auxiliary requests into the appeal proceedings for the reasons that they were filed at a very late stage and introduced new and complex issues in respect of features taken from the description.

15. The fourth auxiliary request, on the other hand, was admitted into the appeal proceedings by the board, exercising its discretion in accordance with Article 13(1) and (3) RPBA.

16. Furthermore, in some recent decisions where, as in the case now before the board, Article 13 RPBA 2007, and not Article 13(2) RPBA 2020, was held to apply, it was also considered that Article 13(1) RPBA 2020 applied in addition, because this is not excluded by Article 25 RPBA 2020 (see e.g. decisions T 634/16 of 10 January 2020, points 7 to 14 of the Reasons, and T 32/16 of 14 January 2020, points 1.1.1 to 1.1.3 of the Reasons).

In the present case, however, the board does not consider it necessary to apply the criteria set out in Article 13(1) RPBA 2020 in addition to those which it may take into account when exercising its discretion under Article 13 RPBA 2007 (see points 4 and 5 above).

16.1 In cases where the summons to oral proceedings has been notified on or after 1 January 2020, Article 13(2) RPBA 2020 implements the third level of the convergent approach applicable in appeal proceedings (see document CA/3/19, section VI, Explanatory remarks on Article 13(2), first paragraph, first sentence; see also Supplementary publication 2 to OJ EPO 2020). Article 13(2) RPBA 2020 imposes the most stringent limitations on appeal submissions which are made at an advanced stage of the proceedings, namely after expiry of a period set by the board of appeal in a communication under Rule 100(2) EPC or, where no such communication is issued, after notification of a summons to oral proceedings (see document CA/3/19, section VI, Explanatory remarks on Article 13(2), first paragraph, second sentence). Where an amendment is made to a party's appeal case at this advanced stage of the proceedings, Article 13(2) RPBA 2020 provides that it will, in principle, no longer be taken into account unless the party concerned has shown compelling reasons why the circumstances are exceptional. If such circumstances are shown to exist, the board of appeal may, in exercising its discretion, decide to admit an amendment made to the appeal case at this advanced stage of the proceedings (see document CA/3/19, section VI, Explanatory remarks on Article 13(2), third paragraph, last sentence).

16.2 With regard to the question whether, at the third level of the convergent approach, the provisions of Article 13(1) RPBA 2020 are to be applied in addition to those of Article 13(2) RPBA 2020, the board notes that Article 13(2) RPBA 2020 does not contain any explicit reference to the first paragraph of this article. However, the Explanatory remarks on Article 13(2) RPBA 2020 contain the following guidance:

"At the third level of the convergent approach, the Board may also rely on criteria applicable at the second level of the convergent approach, i.e. as set out in proposed new paragraph 1 of Article 13." (Document CA/3/19, section VI, Explanatory remarks on Article 13(2), fourth paragraph; emphasis added by the board.)

From this the board concludes that, at the third level of the convergent approach, the boards of appeal are free to use or not use the criteria set out in Article 13(1) RPBA 2020 when deciding, in the exercise of their discretion in accordance with Article 13(2) RPBA 2020, whether to admit an amendment made at this stage of the proceedings.

In this respect, Article 13(2) RPBA 2020 and Article 13(1) RPBA 2020 are also differently worded. In contrast to Article 13(2) RPBA 2020, the legislator has clarified in Article 13(1) RPBA 2020, by means of the explicit reference in the second sentence to new Article 12(4) to (6) RPBA 2020, that the criteria specified in these paragraphs and already applicable at the first level of the convergent approach also apply accordingly to any submissions made at the stage when the second level of the convergent approach applies (see also document CA/3/19, section VI, explanatory remarks on Article 13(1), second paragraph, second sentence).

16.3 Where, as in the present case, Article 13 RPBA 2007, and not Article 13(2) RPBA 2020, applies to a discretionary decision taken at the third level of the convergent approach, the board's view is that it is likewise free to use the criteria of Article 13(1) RPBA 2020 in addition. It is not apparent from either the transitional provisions of Article 25 RPBA 2020 or the explanatory remarks why the use of the criteria of Article 13(1) RPBA 2020 should be any different when Article 13 RPBA 2007, rather than Article 13(2) RPBA 2020, is to be applied at the third level of the convergent approach.

16.4 At the same time, however, the board considers that the criteria of Article 13(1) RPBA 2020 correspond in essence to those developed by the case law in the context of Article 13(1) RPBA 2007 (see also decisions T 634/16, point 14, second paragraph, of the Reasons, and T 32/16, point 1.1.3, second paragraph, of the Reasons). Since the board had already based its discretionary decision under Article 13(1) and (3) RPBA 2007 whether to admit the fourth auxiliary request into the appeal proceedings on criteria set out in Article 13(1) and (3) RPBA 2007, as well as those developed by the case law in the context of those provisions (see points 4 to 14 above), it saw no reason to apply the criteria of Article 13(1) RPBA 2020 in addition.

[...]

Conclusion on the appeal

21. Since none of the appellant's main request and first to fourth auxiliary requests is allowable, the appeal is to be dismissed.

Reimbursement of appeal fee

22. The appellant requested reimbursement of the appeal fee.

23. Rule 103(1)(a) EPC stipulates that the appeal fee has to be reimbursed where the board deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

24. The precondition for reimbursement of the appeal fee pursuant to Rule 103(1)(a) EPC, namely that the appeal be allowable, is not met in the present case. According to established case law, "allowable" is to be understood in the sense that the board, in substance at least, "follows" the relief sought by the appellants, in other words that it allows their requests (J 37/89, OJ EPO 1993, 201, Reasons, point 6). That is not however the case here, since the appeal is to be dismissed (see point 21 above).

25. The request for reimbursement of the appeal fee is therefore to be refused.

Apportionment of costs

26. The appellant requests "apportionment of costs for all costs relating to the entire appeal proceedings" for the reason that the opposition division rejected a further auxiliary request as "fallback position" to a claim including the additional feature of original claim 2. According to the appellant, the lack of novelty of such claim had not been argued prior to the date of the oral proceedings before the opposition division.

27. Under Article 104(1) EPC, each party to opposition proceedings must bear the costs it has incurred. However, the board may, for reasons of equity, order a different apportionment of costs. According to established case law (see Case Law, 9th edition 2019, III.R.2), a different apportionment of costs is justified if the conduct of one party is not in keeping with the care required. In view of the provisions of Article 104(1) EPC and established case law, the board has no doubt that the conduct of the opposition division cannot justify a different apportionment of costs. Thus, Article 104(1) EPC does not apply in the present case. Article 16 RPBA 2020, which applies in accordance with Article 25(1) RPBA 2020, is also not applicable in the present case, since this provision refers to "a party".

28. The request for apportionment of costs is therefore to be refused.

Order

For these reasons it is decided that:

1. The appeal is dismissed.

2. The request for reimbursement of the appeal fee and the request for apportionment of costs are refused.

T 0876/16 - Acting courteously to the Board

Key points

• In this opposition appeal, the Board cancels oral proceedings scheduled for Monday on Friday afternoon by fax. On Thursday, the Registrar had contacted the opponent by phone about whether it maintained its request for oral proceedings (and an assistant of a representative forgot to send out the written confirmation of the withdrawal of the request for oral proceedings). 
• The patentee's representative shows up on Monday morning and requests an apportionment of costs. The Board does not grant this request, because the representative works in a Munich firm.
• "Den Vertretern der Beteiligten [Patentee]  wurde am Nachmittag des 6. März 2020 per Faxschreiben von der Geschäftsstelle der Kammer vorab mitgeteilt, dass der anberaumte Termin für die mündliche Verhandlung am 9. März 2020 aufgehoben wurde.
  Dies mag sehr kurzfristig gewesen sein, aber aus Sicht der Kammer dennoch rechtzeitig genug, um den Vertreter der Beschwerdeführerin, der Mitglied in einer Kanzlei in München ist, noch rechtzeitig vor seiner geplanten Anreise nach Haar zu informieren.
  Die Tatsache, dass die Kanzlei ihren Vertreter nicht rechtzeitig von der Aufhebung der mündlichen Verhandlung informierte, kann nicht der Gegenseite zur Last gelegt werden."
• Importantly, the Board qualifies the failure of the representative of the opponent to confirm the withdrawal of the request of oral proceedings, announced by phone, to be a violation of Article 6 of the epi Code of Conduct, and includes a remark to this effect in the decision. 
• "In all dealings with the European Patent Office and its employees, a member shall act courteously, and shall do everything possible to uphold the good reputation of this Institute and its members." (Article 6 CoC)
• Article 7(5)(e) Code specifies that "breaches of the Code should be brought to the notice of the Disciplinary Committee in writing."

T 0876/16 - link

5.3 Den Vertretern der Beteiligten [Patentee]  wurde am Nachmittag des 6. März 2020 per Faxschreiben von der Geschäftsstelle der Kammer vorab mitgeteilt, dass der anberaumte Termin für die mündliche Verhandlung am 9. März 2020 aufgehoben wurde. Dies mag sehr kurzfristig gewesen sein, aber aus Sicht der Kammer dennoch rechtzeitig genug, um den Vertreter der Beschwerdeführerin, der Mitglied in einer Kanzlei in München ist, noch rechtzeitig vor seiner geplanten Anreise nach Haar zu informieren. Die Tatsache, dass die Kanzlei ihren Vertreter nicht rechtzeitig von der Aufhebung der mündlichen Verhandlung informierte, kann nicht der Gegenseite zur Last gelegt werden.

5.4 Die Kammer betrachtet das Vorgehen des Vertreters der Beschwerdegegnerin, der trotz gegenteiliger Zusage keine schriftliche Bestätigung seiner am Telefon getätigten Aussagen eingereicht hat, als Verletzung der Höflichkeitspflicht gemäß Artikel 6 der epi-Richtlinien für die Berufsausübung. Dessen ungeachtet kann auch dieses Verhalten keine Kostenentscheidung nach Artikel 104 (1) EPÜ rechtfertigen.

5.5 Aus den oben genannten Gründen ist die Kammer der Ansicht, dass eine Kostenentscheidung nach Artikel 104 (1) EPÜ zugunsten der Beschwerdeführerin nicht gerechtfertigt ist. Der Antrag der Beschwerdeführerin auf Kostenverteilung ist daher zurückzuweisen.

Entscheidungsformel

Aus diesen Gründen wird entschieden:

1. Die angefochtene Entscheidung wird aufgehoben.

2. Das Patent wird widerrufen.

3. Der Antrag der Beschwerdeführerin auf Kostenverteilung wird zurückgewiesen.

T 0036/19 - Grant after 20 years possible

Key points

• In this examination appeal, the divisional application was filed in 2010, the parent having a filing date of 28.01.1999.
• The Board: “As the term of a European patent amounts to 20 years from the date of filing (Article 63(1) EPC), a patent which may eventually be granted for the present application will have already expired. The Board nevertheless considers that the appellant still has a legitimate interest in the continuation of the grant and the appeal proceedings. Since a European patent application already confers rights after its publication pursuant to Article 67 EPC, a grant decision by the European Patent Office, even if taken only after expiry of the patent term, may become relevant for the determination of these rights.”
• The Board does not indicate any legal basis and the EPC does not contain any provision for terminating the grant procedure without a grant, i.e. in effect refusing the application, in case the applicant has no ‘legitimate interest’, but Art.125 EPC may, of course, take care of this if the national laws of many Contracting States have such a requirement. 
• Pending referral G4/19 (double patenting; T0318/14, r.7) touches on this issue, G1/05 r.13.4 mentions that: “The [Enlarged] Board accepts that the principle of prohibition of double patenting exists on the basis that an applicant has no legitimate interest in proceedings leading to the grant of a [] patent”.
• I note that applicants pay significant renewal fees and other fees to the EPO for any pending application, so at least subjectively they have some interest to incur the costs of the EPO grant proceedings. 

EPO T 0036/19 - link

Reasons for the Decision

Admissibility of appeal


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


Procedural issue


2. The filing date of the present (divisional) application is 28 January 1999. As the term of a European patent amounts to 20 years from the date of filing (Article 63(1) EPC), a patent which may eventually be granted for the present application will have already expired. The Board nevertheless considers that the appellant still has a legitimate interest in the continuation of the grant and the appeal proceedings. Since a European patent application already confers rights after its publication pursuant to Article 67 EPC, a grant decision by the European Patent Office, even if taken only after expiry of the patent term, may become relevant for the determination of these rights.


The application


3. The application relates to World Wide Web (WWW) page retrieval and to methods for performing such retrieval using a "minimally restrictive" syntax (description of the application as filed, page 1, lines 3 and 4).


[...]


10. Thus, the present invention relates to a method of enabling a user to enter a "substantially" free-form designation of a WWW site, preferably in the user's native language, and directly obtain the information from the site, without the necessity of using an exact site address (description, page 11, lines 10 to 13).

[...]


Third auxiliary request

[...]


In the Board's understanding the new feature implies that, according to claim 1, the entered information is "translated" to a URL address by automatically submitting it over the Internet as a query to a web search engine and retrieving the address of a single hit (i.e. search result). [...]


19.3 Hence, the subject-matter of claim 1 is not rendered obvious by document D3.

Remittal


20. The following documents, cited in the communication of the Examining Division of 21 April 2016, have not been considered in the decision under appeal:


D10: "ISYS HindSite - Text Search & Retrieval Browser Plug-in", 10 December 1997, retrieved from https://web.archive.org/web/19971210161525/http://www.isysdev.com/products/hindsite.htm;


and


D11: C. Thomas and G. Fischer: "Using Agents to Improve the Usability and the Usefulness of the World-Wide Web", Proceedings of the Fifth International Conference on User Modeling, 1996.


The Examining Division might consider these documents for assessing novelty and inventive step of the third auxiliary request.


20.1 Furthermore, the feature added to claim 1 of the third auxiliary request was taken from the description and may not yet have been searched.


20.2 Therefore the case is to be remitted to the department of first instance for further prosecution on the basis of the third auxiliary request. The Board expects that in view of the filing date of the present application (see point 2 above) the department will deal with it expeditiously.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.

T 0954/17 - Art. 13(1) optional for very late submissions

Key points

• Similarly as held in T 0584/17, the Board analyses that the boards of appeal are free to use or not use the criteria set out in Article 13(1) RPBA 2020 when deciding, in the exercise of their discretion in accordance with Article 13(2) RPBA 2020, whether to admit an amendment made at this stage of the proceedings. 
• “This also holds true when Article 13 RPBA 2007, rather than Article 13(2) RPBA 2020, is to be applied” (in the present case, the summons were notified before 01.01.2020).
• “In the present case, however, the board does not consider it necessary to apply the criteria set out in Article 13(1) RPBA 2020 in addition to those which it may take into account when exercising its discretion under Article 13 RPBA 2007”
• “The [opponent's new] objection under Article 123(2) EPC is not complex and could have been dealt with by the board or the patent proprietor during the oral proceedings without the need for adjournment. Therefore, the board exercised its discretion under Article 13(1) and (3) RPBA 2007 and decided to admit the opponent's objection into the appeal proceedings.”
• “The board is of the opinion that the amendment to claim 1 meets the requirements of Article 123(2) EPC.”

EPO Headnote
At the third level of the convergent approach applicable in appeal proceedings in accordance with the revised version of the Rules of Procedure of the Boards of Appeal (RPBA 2020), the boards of appeal are free to use or not use the criteria set out in Article 13(1) RPBA 2020 when deciding, in the exercise of their discretion in accordance with Article 13(2) RPBA 2020, whether to admit an amendment made at this stage of the proceedings. This also holds true when Article 13 RPBA 2007, rather than Article 13(2) RPBA 2020, is to be applied. (See points 3.7 to 3.11 of the Reasons)

EPO T 0954/17 -  link

Reasons for the Decision

3. Admission of the opponent's objection under Article 123(2) EPC

3.1 By comparison with claim 1 of the patent as granted, claim 1 of the present request additionally defines the following:

"... that the presence of the slit member (500) causes the scintillator unit (300) to be irradiated with X-rays (S2) having a narrower width than the X-rays (S1) emitted by the X-ray emission device (200)".

3.2 The opponent argued that claim 1 did not meet the requirements of Article 123(2) EPC because the feature added from the description (paragraph [0072]) was taken out of its context and therefore constituted an unallowable intermediate generalisation.

T 2141/16 - Conditional withdrawal request oral proceedings

Key points

• The Board finds that a withdrawal of a request for oral proceedings by the appellant can be a ground for partial reimbursement of the appeal fee even if the withdrawal is conditional (in this case “on the condition that auxiliary request 6, but not any higher-ranking request, be held allowable”.
• The Board also appears to find that the respondent does not need to withdraw its request for oral proceedings within the one-month time limit, i.e. that even if after the expiry of the one month period, there is still a valid and pertinent request for oral proceedings (of the respondent), which is only later withdrawn such that oral proceedings are cancelled the appeal fee is to be reimbursed at 25%. 
• The respondent withdrew its request for oral proceedings well after one month after notification of the preliminary opinion, however within the possible extension due to COVID-19. The Board simply does not refer to the date of the respondent's letter.

EPO T 2141/16 - link

IX. Both parties requested oral proceedings. In a written communication issued in preparation for the oral proceedings dated 24 March 2020, the board expressed the preliminary opinion that the claims of the main request and auxiliary requests 1 to 5 did not meet the requirements of the EPC and that the claims of auxiliary request 6 met those requirements.

X. In its letter dated 28 April 2020, the appellant stated that its request for oral proceedings was withdrawn on the condition that auxiliary request 6, but not any higher-ranking request, be held allowable.

XI. In a reply [dated 26.05.2020] to the board's communication, the respondent stated that its request for oral proceedings was withdrawn on the condition that auxiliary request 6 be held allowable and that, on this condition, auxiliary request 6 was its main request and the higher-ranking requests were withdrawn.

XII. The oral proceedings were cancelled.

3. Reimbursement of the appeal fee

The appellant withdrew its request for oral proceedings within the time limit set under Rule 103(4)(c) EPC, and no oral proceedings took place. Thus, the appeal fee is to be reimbursed at 25%.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division with the order to maintain the patent with the following claims and a description to be adapted where necessary:

Claims 1 to 7 of the main request, filed as auxiliary request 6 under cover of the respondent's reply to the grounds of appeal dated 23 March 2017.

3. The appeal fee is reimbursed at 25%.

T 0161/18 - Neural network both obvious and insufficiently disclosed

Key points

• Claim 1 is directed to a method of determining the cardiac output from an arterial blood pressure curve measured at the periphery of the patient, using  a neural network. The description explains that the neural network is trained using a broad sample of patients. However, no suitable entry data is specified. 
• The Board judges that therefore the skilled person can not carry out the training and concludes that the application is insufficiently disclosed.
• However, the Board adds that the claim is also not inventive, in a kind of reverse sufficiency squeeze. Normally, opponents argue (if the patent allegedly lacks details) that the claim is either insufficiently disclosed or obvious (and patentees have to argue that the skilled person can reduce to practice the claim based on the general teaching in the patent using common general knowledge while that same common general knowledge did not make the claim obvious). 
• The Board is not convinced of the technical effect of using a neural network (improving reliability and precision of the conversion) because of the lack of information about the training day. Therefore,  the objective technical problem is providing an alternative. The solution (using a neural network) would be obvious in view of  second document D8. I
• D8 is a technical paper, so perhaps it can be said that at the same time, the use of a neural network was insufficiently disclosed and obvious (because D8 provides an enabling disclosure of the neural network and a motivation to apply it in the context of the blood pressure conversion, yet is not CGK). 

EPO Headnote (neural network translation)😏

1. The present invention, based on machine learning, in particular in connection with an artificial neural network, is not sufficiently disclosed since the training of the artificial neural network according to the invention cannot be carried out due to a lack of disclosure.

2. Since in the present case the claimed method differs from the prior art only by an artificial neural network, the training of which is not disclosed in detail, the use of the artificial neural network does not lead to a special technical effect which could justify inventive step.

EPO Headnote (original)

1. Die vorliegende, auf maschinellem Lernen insbesondere im Zusammenhang mit einem künstlichen neuronalen Netz beruhende Erfindung ist nicht ausreichend offenbart, da das erfindungsgemäße Training des künstlichen neuronalen Netzes mangels Offenbarung nicht ausführbar ist.

2. Da sich im vorliegenden Fall das beanspruchte Verfahren vom Stand der Technik nur durch ein künstliches neuronales Netz unterscheidet, dessen Training nicht im Detail offenbart ist, führt die Verwendung des künstlichen neuronalen Netzes nicht zu einem speziellen technischen Effekt, der erfinderische Tätigkeit begründen könnte.

EPO T 0161/18 - link

Entscheidungsgründe

[...]

2. Ausreichende Offenbarung (Artikel 83 EPÜ)

2.1 Artikel 83 EPÜ erfordert, dass die Erfindung in der europäischen Patentanmeldung so deutlich und vollständig zu offenbaren ist, dass der Fachmann sie ausführen kann. Dafür muss die Offenbarung der Erfindung in der Anmeldung es dem Fachmann ermöglichen, die der beanspruchten Erfindung innewohnende technische Lehre anhand seines allgemeinen Fachwissens zu reproduzieren.

T 2113/16 - Partial reimbursement appeal fee

Key points

• The Board clarifies that a preliminary opinion issued under Art.15(1) 2nd para RPBA 2020 is a ‘communication issued by the Board of Appeal in preparation for [the] oral proceedings’ in the sense of Rule 103(3)(a) and Rule 103(4)(c) and its notification triggers a period of one month for withdrawing the appeal or the request for oral proceedings in order to benefit from a partial refund of the appeal fee at 50% respectively 25%.

EPO T 2113/16 - link

IX. Die Parteien wurden zu einer mündlichen Verhandlung geladen. Die Kammer erließ eine Mitteilung nach Artikel 15(1) VOBK datiert vom 24. März 2020, in der sie ihre vorläufige Meinung erläuterte und erklärte, dass der Hauptantrag gewährbar erscheint.

Daraufhin zog die Beschwerdeführerin mit Schreiben vom 27. April 2020 ihren Antrag auf mündliche Verhandlung zurück. In der Folge wurde der Termin zur mündlichen Verhandlung aufgehoben.

Entscheidungsgründe

4. Rückzahlung der Beschwerdegebühr

Der Antrag der Beschwerdeführerin auf mündliche Verhandlung wurde fristgerecht zurückgenommen. Es fand auch keine mündliche Verhandlung statt. Die Beschwerdegebühr ist daher in Höhe von 25% zurückzuzahlen (Regel 103(4)c) EPÜ).

Entscheidungsformel

Aus diesen Gründen wird entschieden:

1. Die Beschwerde wird zurückgewiesen.

2. Die Beschwerdegebühr wird in Höhe von 25% zurückgezahlt.

T 2279/16 - Written submissions and not attending oral proceedings

Key points

• In this examination appeal, the Board issues Summons dated 13.02.2020 and a preliminary opinion on 21.04.2020. On 18.05.2020, the applicant writes that they will not attend oral proceedings and files two auxiliary requests. The oral proceedings are then cancelled.
• A first question is whether the auxiliary requests are to be admitted and whether Art.13(2) RPBA 2020 applies.
• “It is not explicitly stated in Article 13(2) RPBA 2020 whether this provision still applies if, following notification of a summons to oral proceedings, the oral proceedings are subsequently cancelled. In the Board's opinion, at least in the case where the cancellation of oral proceedings has been occasioned by an appellant's statement that it will not be represented at the oral proceedings, Article 13(2) RPBA 2020 is applicable.”
• " there is nothing in the wording of the article to indicate any exceptions to this, or that the effects of Article 13(2) RPBA 2020 are dependent on the subsequent procedural history of the case."
• Hence, the reason for inadmissibility under Article 13(2) is not that the submission are made too close to the oral proceedings. 
• Accordingly, a postponement of the oral proceedings most likely does not reopen the 'second stage' of Article 13(1) RPBA
• A question is whether this statement also applies to a remittal to the OD. Are submissions filed after notification of the summons by the Board (e.g. further auxiliary requests), as a rule admissible or not when the case is remitted to the OD without the Board taking a decision on the admissibility of these submissions?
• The Board also comments on the purpose of oral proceedings: “the purpose of oral proceedings is to allow a party to state its case before the Board”.
• The requests are not admissible under Art.13(2) RPBA. “the fact that the Board in this case issued a preliminary opinion in which it came to the same conclusion as the Examining Division does not constitute "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020”. The Board found the claims to lack inventive step over the same combination of documents as the Examining Division.
• The Board can decide to hold the requests inadmissible without holding oral proceedings and without inviting the appellant to comment. “Moreover, oral proceedings pursuant to Article 116(1) EPC to be held on 4 June 2020 and to which the appellant had been duly summoned would have provided the appellant with a further opportunity to be heard pursuant to Article 113(1) EPC on all issues, including the admission of any new requests. It was the appellant's own decision to forgo that right by announcing that it would not be represented at oral proceedings.”.

EPO T 2279/16 -  link

6. The Board therefore concludes that the subject-matter of claim 1 of the main request does not involve an inventive step within the meaning of Articles 52(1) and 56 EPC.

7. Auxiliary Requests

7.1 In its communication pursuant to Article 15(1) RPBA 2020, the Board stated: "The appellant is reminded of the provisions of Article 13 RPBA 2020" (point 5.2). Article 13(2) RPBA 2020 states the following:

"Any amendment to a party's appeal case made after the expiry of a period specified by the Board in a communication under Rule 100, paragraph 2, EPC or, where such a communication is not issued, after notification of a summons to oral proceedings shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned."

In the present case, a summons to oral proceedings pursuant to Rule 115(1) EPC dated 17 February 2020 was sent. Receipt of the summons was acknowledged by the appellant by means of a fax dated 18 February 2020. Auxiliary requests 1 and 2 were filed with the letter dated 18 May 2020, hence "after notification of a summons to oral proceedings".

T 0908/19 - Rule 79 vs Rule 116

Key points

• In this opposition appeal, the OD had admitted AR-1 because it was filed within the time limit set under Rule 116(1) EPC. Therefore, the requests were not considered to be late filed.
• The opponent points out that essentially that the relevant time limit is that of Rule 79 EPC.
• The Board confirms that AR-1 is admissible, but now on the ground that AR-1 filed with the written submissions under Rule 116 is identical "as regards its content" to a request filed with the Rule 79 EPC response.
• “Consequently this auxiliary request was filed in due time in accordance with Rule 79(1) EPC, even if refiled at a later date and complemented with an adapted description. As the request was filed in time the question whether it is "clearly allowable" is not relevant. The Board is therefore unable to see any error in law in the opposition division's consideration of this request (though it may have overlooked the date of first filing the request)”
• As a comment, I note that the Board here confirms that ‘filed in time’ means the Rule 79(1) date, i.e. the period of typically four months for Patentee to file the response, not the Rule 116 date for written submissions.
• Perhaps the OD had indeed “overlooked the date of first filing the request” as the Board suggests. In practice, many OD’s appear to treat Rule 116 EPC - incorrectly in my view - as giving Patentee's a right to auxiliary requests one/two months before the oral proceedings, such that any request filed by the Rule 116 deadline is admissible. 
• I note that although 5 requests had been filed with the Rule 116 date, only 1 request had been submitted with the Rule 79 response. Nevertheless, the OD decided to admit all five requests as not being late filed. However, the Board considers AR-1 to be allowable so that it does not have to deal with whether or not AR-2 to AR-5 were correctly admitted by the OD. 

EPO T 0908/19 -  link


Decision OD

Reasons for the Decision

1. The appeal is admissible.

2. Background

The invention concerns a method of transporting compost inoculated with mycelium of mushrooms for human consumption. In order to transport the compost at a temperature of less than 20°C, a mass of compost is subjected to subatmospheric pressure and water vapour is removed from the mass of compost resulting in a cooled mass of compost. The mass of compost is subjected to said subatmospheric pressure and for a time that results in a temperature of the mass of compost of less than 15°C before said cooled mass of compost is transported. By evaporating water in the compost and substantially eliminating that evaporated water from the compost, the temperature of the compost can be lowered effectively and quickly (paragraph 6 of the published patent specification).

3. Admissibility of auxiliary request 1

The appellant contests admission of the auxiliary requests by the opposition division as it should have exercised discretion by applying the criterion of "clear allowability".

The Board disagrees. The present auxiliary request 1 is identical with auxiliary request 1 underlying the impugned decision. It is undisputed that an auxiliary request was filed on 30 October 2017 within the Rule 79(1) EPC time limit with the proprietor's timely reply to the opposition, and that an identical request, as regards its content, was filed as auxiliary request 1 with their submission of 23 August 2018. Thus the then opponents were aware of the subject of this request in due time at the earlier date of filing of this request. They can therefore not reasonably argue that they did not have sufficient opportunity to respond thereto e.g. by providing new facts and evidence. The situation described in the Guidelines E-V,2.1 and H-II, 2.7.1 therefore does not apply. This is not changed by the fact that the request was formally refiled at a later date (together with an adapted description). Consequently this auxiliary request was filed in due time in accordance with Rule 79(1) EPC, even if refiled at a later date and complemented with an adapted description. As the request was filed in time the question whether it is "clearly allowable" is not relevant. The Board is therefore unable to see any error in law in the opposition division's consideration of this request (though it may have overlooked the date of first filing the request), let alone a serious error that might, for example, have justified an immediate cancellation of the decision under appeal.

Auxiliary request 1 was therefore validly admitted into the opposition proceedings by the opposition division.

T 0073/17 - Not attending oral proceedings and appeal fee

Key points

• The Board finds that in order to benefit from the 25% partial reimbursement of the appeal fee under Rule 103(4)(c), a party must expressly withdraw the request for oral proceedings. 
• The Board concludes that " der Gesetzgeber offenbar einen Unterschied zwischen einer bloßen Ankündigung der Nichtteilnahme an einer mündlichen Verhandlung und einer ausdrücklichen Rücknahme des Antrages auf mündliche Verhandlung unterscheidet. Vor diesem Hintergrund versteht die Beschwerdekammer die konkrete Formulierung der Regel 103 (4) c) EPÜ. Diese nennt explizit eine Rücknahme des Antrages auf mündliche Verhandlung als eine zwingende Voraussetzung für die anteilige Rückzahlung und lässt eben nicht allein das Nichtstattfinden einer mündlichen Verhandlung dafür genügen."
• The Board also clarifies that the "communication issued by the Board of Appeal in preparation for these oral proceedings" of R.103(3)(a) is the Communication under Art. 15(1) RPBA (second paragraph, i.e. the preliminary opinion).
• The Board also clarifies that the active withdrawal of the appeal more than one month after notification of the preliminary opinion does not give rise to 50% refund, even if the oral proceedings are cancelled.

EPO T 0073/17 - link








9. Anteilige Rückzahlung der Beschwerdegebühr

9.1 Durch die am 1. April 2020 in Kraft getretene Neufassung der Regel 103 EPÜ sind neue Tatbestände für eine anteilige Rückzahlung der Beschwerdegebühr eingeführt worden. Nach dem vorliegend relevanten Absatz 4 dieser Regel wird die Beschwerdegebühr in Höhe von 25 % zurückgezahlt, wenn

"a) die Beschwerde nach Ablauf der Frist nach Absatz 3 Buchstabe a, aber vor Verkündung der Entscheidung in der mündlichen Verhandlung zurückgenommen wird,
b) die Beschwerde nach Ablauf der Frist nach Absatz 3 Buchstabe b, aber vor Erlass der Entscheidung zurückgenommen wird,
c) ein etwaiger Antrag auf mündliche Verhandlung innerhalb eines Monats ab Zustellung einer von der Beschwerdekammer zur Vorbereitung der mündlichen Verhandlung erlassenen Mitteilung zurückgenommen wird und keine mündliche Verhandlung stattfindet."

9.2 Die Einsprechende hat ihre Beschwerde in ihrem Schriftsatz vom 25. Mai 2020 mehr als einen Monat ab Zustellung der Mitteilung der Beschwerdekammer gemäß Artikel 15 (1) VOBK 2020 vom 14. Januar 2020 zur Vorbereitung der ursprünglich für den 6. Juli 2020 anberaumten mündlichen Verhandlung zurückgenommen.

T 2012/17 - Not addressing applicant's arguments

Key points

• In this examination appeal, “the contested decision neither explicitly nor implicitly addresses the appellant's arguments with respect to at least two crucial points of dispute. It follows that the Examining Division infringed the appellant's right to be heard and thus committed a substantial procedural violation.” The appeal fee is reimbursed.
• The Board recalls that “The right to be heard under Article 113(1) EPC encompasses the right of a party to have its comments considered in the written decision (see decision T 763/04 []). Although a decision does not have to address each and every argument of a party in detail, it must comment on the crucial points of dispute to give the losing party a fair idea of why its arguments were not considered convincing (see decision T 1557/07 []).”
• The Board remits the case because, although “it is [...] questionable whether document D1 is a suitable starting point for assessing inventive step of the subject-matter of claim 1 of the main request”, inventive step still has to be assessed with respect to documents D2 to D5.

EPO T 2012/17 -  link

3.3.2 In its decision, however, the Examining Division did not acknowledge the step of the application server creating the customised web application as one of the differences. Nor did it explain why it disagreed with the appellant on this point.

3.4 Hence, the contested decision neither explicitly nor implicitly addresses the appellant's arguments with respect to at least two crucial points of dispute. It follows that the Examining Division infringed the appellant's right to be heard and thus committed a substantial procedural violation.

3.5 The inventive-step objection being the only ground for the refusal, this procedural violation was causal for the appeal. Reimbursement of the appeal fee under Rule 103(1)(a) EPC is therefore equitable.

4. Remittal

4.1 Given that in document D1 an "application template" is customised by a developer/user (or "an independent customization provider 120") who may essentially freely rewrite the template with the help of a development environment (see page 5, lines 11 to 15; page 16, line 18, to page 18, line 8; Figure 6), the templates of document D1 appear to be unsuitable for automated customisation. It is therefore questionable whether document D1 is a suitable starting point for assessing inventive step of the subject-matter of claim 1 of the main request.

4.2 However, inventive step still has to be assessed with respect to documents D2 to D5.

Moreover, the precise technical meaning of, inter alia, the term "web application" and the feature "wherein execution of the web application requires a respective copy of the web application at the user terminal and an application server" may need further investigation in light of the technical explanations and examples given in the application and the common general knowledge of the skilled person.

4.3 Hence, it is appropriate to remit the case to the Examining Division for further prosecution on the basis of the main request. In addition, the appeal fee is to be reimbursed.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.

3. The appeal fee is to be reimbursed.