T 2472/17 - Non-invasive collecting of intestinal cells

Key points

• Claim 1 reads: “A non-invasive method for collecting a sample of intestinal or bowel cells or cell fragments the method consisting of: (a) taking a swab of mucocellular layer material which originates from said bowel or intestine and is excreted during defaecation, from the surface of the anal area in the vicinity of the exterior opening of the anal canal, wherein said swab is taken following defaecation before cleaning the area, and (b) placing said swab of mucocellular layer material into a medium for sample storage or lysis"
• “The application relates to the provision of a method for collecting a sample of colorectal mucocellular layer for detecting diagnostically informative disease biomarkers ...  [this] may be crucial in detecting colorectal cancer”. 
• The Board considers the claim to be inventive and remits the case with the order to grant the patent. 
• The Board does not discuss the requirement of Articles 52 and 57 that the claimed invention should be industrially applicable. 

EPO T 2472/17 - link

4. Inventive step

4.1 The application relates to the provision of a method for collecting a sample of colorectal mucocellular layer for detecting diagnostically informative disease biomarkers (page 1, lines 6 to 9). Analysing the mucocellular layer containing exfoliated cells, cell fragments and biomolecules reflecting the state of the colorectal mucosa may be crucial in detecting colorectal cancer (page 8, lines 2 to 10).

To this end, a non-invasive method for collecting a sample of intestinal or bowel cells or cell fragments comprising taking a swab of mucocellular layer material originating from the bowel or intestine from the surface of the anal area in the vicinity of the exterior opening of the anal canal, with this swab being taken following defaecation, is taught (page 13, lines 1 to 7).

4.2 Document (2) is the closest prior art.

[...]

T 0277/17 - No procedural acts by phone

Key points

• 
  
• The Board explains that under Rule 103(4)(c) (withdrawal request oral proceedings), “any reimbursement has to be ordered ex officio by the board if the requirements of the provision are met”, no request is necessary.
• “Rule 103(4)(c) EPC refers to "the communication issued by the Board of Appeal in preparation for the oral proceedings". The provision therefore presupposes that the board has indeed issued a communication. However, in particular the provision (i) is silent on the possible content or nature of the communication except that it is "issued ... in preparation for the oral proceedings", and (ii) leaves it open whether, once a first communication has been issued in preparation for the oral proceedings, any second or further such communication re-opens the period for requesting reimbursement. However, these points, and their application in respect of the date of the entry into force of the provision, do not need to be considered further in the present case, since there are other reasons why no reimbursement of the appeal fee is to be ordered.”
• In particular, the letter with the withdrawal of the request for oral proceedings was filed after the one month period.
• “ the appellant's [earlier] statement on the telephone relating to non-attendance at oral proceedings was made outside the framework of oral proceedings, and so cannot have any legal effect”
• This is so because: “Proceedings before the boards of appeal are primarily in writing (cf. Article 12 RPBA and Rule 100(2) EPC), and any submitted document must in particular have been transmitted to the EPO in a permitted manner and validly signed (cf. Rule 2(1) and Rule 50(3) EPC). Where oral proceedings pursuant to Article 116 EPC are arranged in accordance with Rule 115(1) EPC, they take place before the board, during which a party may make procedurally relevant oral submissions.”
  
• Finally, claim 1 was considered to be unclear because “one of the features characterising the pharmaceutical aqueous solution of claim 1 of the main request is a viscosity of less than about 1000 cPs” without specifying the temperature. 
• “It is part of the basic knowledge in thermodynamics that viscosity is a function of temperature and that, in liquids, viscosity usually increases as temperature decreases. Thus, the characterisation of a liquid by a viscosity value without indicating the temperature at which viscosity has been measured makes little sense.” The applicant submitted that implicityl 20C was used, but to no avail. 
• “To the board's knowledge, there is no convention in the scientific community that when the measuring temperature of a viscosity value is not given it should be understood that it is 20°C. The convention is, rather, that because of the dependency of viscosity on temperature a viscosity value must always be accompanied by the temperature at which it has been measured.”

EPO T 0277/17 -  link




2. Main request - Clarity (Article 84 EPC)

2.1 One of the features characterising the pharmaceutical aqueous solution of claim 1 of the main request is a viscosity of less than about 1000 cPs.

2.2 It is part of the basic knowledge in thermodynamics that viscosity is a function of temperature and that, in liquids, viscosity usually increases as temperature decreases. Thus, the characterisation of a liquid by a viscosity value without indicating the temperature at which viscosity has been measured makes little sense.

Claim 1 does not indicate the temperature at which its aqueous solution is characterised by having a viscosity of less than about 1000 cPs. This introduces a lack of clarity, since a solution that fulfils the viscosity condition of claim 1 at a given temperature could not do so at lower temperatures, and vice versa. Consequently, the fact that claim 1 does not give the temperature at which viscosity is measured renders the claim unclear.

2.3 The appellant has not disputed the relationship between viscosity and temperature. Its argument was, rather, that claim 1 was clear because, in the absence of a temperature being given, the skilled person would understand that this was 20°C.

The board cannot accept this argument, which is merely an unsupported assertion. To the board's knowledge, there is no convention in the scientific community that when the measuring temperature of a viscosity value is not given it should be understood that it is 20°C. The convention is, rather, that because of the dependency of viscosity on temperature a viscosity value must always be accompanied by the temperature at which it has been measured.

2.4 Hence, the board holds that claim 1 of the main request lacks clarity, contrary to Article 84 EPC.

[...]

7. Reimbursement of the appeal fee (Rule 103(4)(c) EPC)

7.1 The appellant had initially requested oral proceedings. The request was subsequently withdrawn, enabling the board to decide on the case without holding oral proceedings.

7.2 Pursuant to Rule 103(4)(c) EPC, as in force since 1 April 2020, the appeal fee shall be reimbursed at 25% if any request for oral proceedings is withdrawn within one month of notification of the communication issued by the board in preparation for the oral proceedings, and no oral proceedings take place. The amended provision applies to any pending appeal pursuant to Article 2(2) of the Decision of the Administrative Council of 12 December 2019 amending Rule 103 EPC (CA/D 14/19, see OJ EPO 2020, A5), and thus to the present appeal case.

A request by the party concerned for a reimbursement is not a prerequisite of Rule 103(4)(c) EPC. Accordingly, any reimbursement has to be ordered ex officio by the board if the requirements of the provision are met.

Rule 103(4)(c) EPC refers to "the communication issued by the Board of Appeal in preparation for the oral proceedings". The provision therefore presupposes that the board has indeed issued a communication. However, in particular the provision (i) is silent on the possible content or nature of the communication except that it is "issued ... in preparation for the oral proceedings", and (ii) leaves it open whether, once a first communication has been issued in preparation for the oral proceedings, any second or further such communication re-opens the period for requesting reimbursement. However, these points, and their application in respect of the date of the entry into force of the provision, do not need to be considered further in the present case, since there are other reasons why no reimbursement of the appeal fee is to be ordered.

7.3 For a reimbursement of the appeal fee pursuant to Rule 103(4)(c) EPC the request for oral proceedings must have been withdrawn within one month of notification of the communication issued by the board.

The withdrawal of the request for oral proceedings by the appellant's letter received on 24 June 2020 was made too late. Calculated from notification of the communication dated 13 May 2020, receipt of the letter was outside the one-month period under Rule 103(4)(c) EPC, which had expired on 23 June 2020 pursuant to Rule 126(2) and Rule 131(2),(4) EPC.

The fact that the board was informed on 22 June 2020 - and therefore still in good time - that no one would attend the oral proceedings for the appellant did not have any legal consequences. The question which arises in this context, namely whether or not the statement of non-attendance at oral proceedings qualifies as a withdrawal of the request for oral proceedings - within the meaning of Rule 103(4)(c) EPC or in general - does not need to be addressed further.

Proceedings before the boards of appeal are primarily in writing (cf. Article 12 RPBA and Rule 100(2) EPC), and any submitted document must in particular have been transmitted to the EPO in a permitted manner and validly signed (cf. Rule 2(1) and Rule 50(3) EPC). Where oral proceedings pursuant to Article 116 EPC are arranged in accordance with Rule 115(1) EPC, they take place before the board, during which a party may make procedurally relevant oral submissions.

In the present case, the appellant's statement on the telephone relating to non-attendance at oral proceedings was made outside the framework of oral proceedings, and so cannot have any legal effect, irrespective of whether the fact that the registrar had received it could in any case be considered equivalent to receipt by the board. Nor does the fact that the registrar minuted the statement and passed it on to the board mean that it subsequently became a written submission by the appellant.

Only upon receipt of the appellant's letter on 24 June 2020 was there a procedurally relevant submission on the part of the appellant, but this fell outside the one-month period under Rule 103(4)(c) EPC.

7.4 Before arriving at the present negative findings, there was no need for the board to provide the appellant with the opportunity to comment on the question of reimbursement of the appeal fee. No request for reimbursement of the appeal fee had been submitted by the appellant, the board's conclusion instead being in conformity with such a request not having been made, so there was no request to reject. Furthermore, the question of reimbursement of the appeal fee does not entail any legal or further financial disadvantage for the appellant.

Order

For these reasons it is decided that:

The appeal is dismissed.

J 0010/19 - Interruption of proceedings

Key points

• This is an opposition case with interruption of proceedings due to insolvency of the joint proprietor. The case is procedurally difficult. 
• A share of the patent right was transferred to Solar World GmbH on 11.07.2017. This company was declared insolvent on 01.08.2017. Oral proceedings before the OD took place on 12.09.2017. The OD decided that the patent in amended for met the requirements of the EPC, written decision dated 06.11.2017. The EPO was informed about the insolvency in the course of other proceedings and issued the interruption on 04.01.2018 with retroactive effect to 01.08.2017.
• With decision T 1389/18 of 17.12.2018, the Board had dismissed the appeals of the opponent and the patentees against the decision of the OD as moot because the OD's decision was non-existent due to the interruption.
• The patentees requested on 25.01.2018 that the interruption decision be set aside, alternatively that the date of resumption of the proceedings is set on 08.08.2017.
•  The Legal Board of Appeal reasons that the declaration of the interruption of proceedings because of insolvency of the patentee is retroactive. However, it can only be cancelled with ex nunc effect. Cancelling with retroactive effect is also not possible in individual cases after balancing the interests of the parties. Rather, whether or not cancelling with retroactive effect is possible is question of law that needs to be answered in the general (my summary of the headnote).
• The Legal Board: “Eine Rückwirkung der Aufhebung der Unterbrechung würde dagegen zu einer nachträglichen Wirksamkeit der Rechtsakte führen. Dies widerspräche Sinn und Zweck der Regel 142 EPÜ, die mit der Unterbrechung des Verfahrens dem Schutz der Verfahrensbeteiligten unabhängig von ihrer Rolle im Verfahren dient und auf deren Geltung sowohl der Anmelder oder Patentinhaber und auch Einsprechende und weitere Verfahrensbeteiligte vertrauen dürfen. [....] Es bestünde die Gefahr der Fristenverkürzung oder gar des Fristablaufs zum Nachteil der betreffenden Beteiligten, wenn bei nachträglicher Feststellung selbst einer rechtswidrigen Verfahrensunterbrechung die Unterbrechungswirkung nachträglich außer Kraft gesetzt würde.”

EPO Headnote

Die Feststellung der Unterbrechung eines Verfahrens wegen der Insolvenz eines Patent(mit)inhabers erfolgt zwar regelmäßig rückwirkend. Sie kann aber nur mit Wirkung ex nunc aufgehoben werden. Eine rückwirkende Aufhebung kommt auch nicht im Einzelfall unter Abwägung der betroffenen Interessen in Betracht. Vielmehr handelt es sich dabei um eine Rechtsfrage, die allgemein zu beantworten ist.

EPO headnote translation (informal)

The finding of the interruption of the proceedings because of insolvency of a (joint) patent proprietor has retroctive effect generally. However, it can only be retracted with effect ex nunc. A retroactive retraction of an interuption is not to be considred, not even in individual cases on the balance of interests. Rather, this pertains to a legal question that is to be answered on a general level. 


EPO J 0010/19  J 10/19 -  link

Sachverhalt und Anträge

I. Die Beschwerde richtet sich gegen die Entscheidung der Rechtsabteilung, den Antrag der Beschwerdeführerin (Patentinhaberin) auf Zurücknahme der Unterbrechung des Verfahrens gemäß Regel 142 (1) b) EPÜ, hilfsweise der Festsetzung der Wiederaufnahme des Verfahrens am 8. August 2017, zurückzuweisen.

Dem liegt folgender Sachverhalt zugrunde:

II. Gegen die Erteilung des europäischen Patents 220689 wurden am 26. bzw. 27. Mai 2015 fünf Einsprüche eingelegt. Die Einsprechenden 2 und 3 haben ihre Einsprüche während des Einspruchsverfahrens zurückgenommen.

III. Mit Wirkung vom 11. Juli 2017 wurde der Rechtsübergang eines Mitinhaberanteils an dem Patent zugunsten der Solar World Innovations GmbH in das Europäische Patentregister eingetragen. Über das Vermögen dieser Gesellschaft wurde am 1. August 2017 das Insolvenzverfahren nach deutschem Recht eröffnet.

IV. Am 12. September 2017 fand vor der Einspruchsabteilung eine mündliche Verhandlung über die Einsprüche statt, und zwar ausweislich der Niederschrift unter Beteiligung verschiedener Vertreter der damals eingetragenen Patentinhaberinnen "Solar World Innovations GmbH et al." sowie der noch beteiligten Einsprechenden. Am Ende der mündlichen Verhandlung erließ die Einspruchsabteilung eine Zwischenentscheidung, nach der das Patent in eingeschränkter Form auf der Grundlage der Ansprüche des Hilfsantrags 3 den Erfordernissen des EPÜ genügte. Die Zwischenentscheidung wurde am 6. November 2017 zur Post gegeben.

T 1255/18 - Two lists principle is only an aid

 Key points

• The Board finds the claims to lack basis in the (parent) application as filed. The issue is that the claim specifies a combination of features which are only disclosed individually in the application as filed.
• The Board: “While conditions have been developed by the case law, such as the so-called "two-lists principle" (indeed starting from decision T 12/81 of 9 February 1982 in the context of the novelty analysis as cited by the appellant), they are not meant to be additional or alternative conditions to be checked, but only a possible aid in certain cases to verify whether the gold standard is satisfied and should thus not lead to a different result than when applying the gold standard directly.”
• “Allowing the various restrictions introduced into present claim 1 without there being any - even implicit - indication in the parent application as filed that the combination of newly introduced features was envisaged would be unfair to third parties. In particular, it would give an applicant who filed a broad speculative claim an unwarranted advantage over other applicants who were the first to attribute any significance to a specific combination of features encompassed by said broad original claim, e.g. a specific combination of features falling within the ambit of present claim 1 which does not overlap with the examples of the parent application.”
• The application claims the priority of a US application.

https://www.epo.org/law-practice/case-law-appeals/recent/t181255eu1.html

3. Even if the Board, to the benefit of the appellant, considered that the passages cited by the appellant provided a basis in the parent application as filed for feature (3), one could not conclude that the claimed subject-matter meets the requirements of Article 76(1) EPC for the following reasons.

3.1 The appellant did not indicate any explicit single disclosure for the claimed combination of features, but rather relied on various separate passages of the earlier application as filed relating to each of said features individually. The mere fact that each of the features of claim 1 of the main request would as such, i.e. when read in isolation, be disclosed in the earlier application as filed is not sufficient to conclude that the skilled person would implicitly derive the presently claimed combination of features directly and unambiguously from the application as filed, using common general knowledge. In this context "implicitly" means that the skilled person would have found a disclosure for said combination of features as objectively and necessarily implied by the explicit content of the application as originally filed as a whole.

J 0006/19 - Retraction of withdrawal

Key points

• The applicant withdrew an already published Euro-PCT patent application with a letter filed on 19.12.2018. On 20.12.2018, the EPO issued the Form 205 "Closure of the procedure". The withdrawal was “published in the European Patent Register early in the morning of 21 December 2018.” 
• The applicant requested a correction of the withdrawal on 21.12.2018 received at 10:57 hrs.
• The applicant submitted that the correction request was timely filed, inter alia because it was “entitled to the protection of its legitimate expectation that its request for retraction would be filed in due time because it relied on the advice given orally on 20 December 2019 by the formalities officer that this request could be filed "...within two days", i.e. until 21 December 2018”.
• The Legal Board does not allow the appeal (against the decision to refuse the requested correction).
• The Legal Board: “In this case, the withdrawal appeared in the European Patent Register early in the morning of Friday, 21 December 2018, after the publication run. The public had thus already been officially notified of the withdrawal of the application when the request for retraction of the withdrawal was received by the EPO on 21 December 2018 at 10.57 hrs. Furthermore, at the time of the official notification, the public had no reason to suspect that the withdrawal could be erroneous and later retracted. As already noted, the request for withdrawal was unqualified, unambiguous and unconditional. And the request for retraction of the withdrawal, filed on 21 December 2018, would not have been available for file inspection until at least the following day, 22 December 2018.”
• As to the argument based on legitimate expectations, the Legal Board notes the following.
• “The principle of the protection of legitimate expectations governs all procedural action taken by EPO employees vis-à-vis parties to proceedings, including telephone calls, which are not part of the formal procedure ”
What was said during the phone call was not decisive, because the Legal Board recalls that “in any case the authorised representative is expected to be aware of the relevant law and case law”.
• “In particular [representatives] are expected to know that a filed document is likely to become visible in the European Patent Register once it has been coded by the EPO (see FAQ - European Patent Register on the EPO website). In this case, Form 2058, "Closure of the procedure in respect of application n° 15848194.5", was issued on 20 December 2018. The appellant could then have expected the withdrawal to be published early in the morning of the following day, after the publication run. Thus, it was the appellant's own responsibility to file the request for retraction before the withdrawal appeared in the Register.”
• The cited FAQ is probably this one. It includes the remark that: "When will a document or correspondence become visible in the European Patent Register? For publicly available outgoing communications: on the day after the date of despatch. For publicly available incoming communications: once the filed document has been coded by the EPO. Please note that the date displayed alongside a document in the All documents view is the date of receipt by the EPO."
• Therefore the request for correction was not timely filed, according to the Legal Board.

Disclosure: my firm was involved.

EPO J 0006/19 -  link

Text of the decision omitted here because it contains personal details (names of persons involved).

T 0471/16 - Proofing

Key point

• “2.1 The appellant requested that a technical expert, Prof. [R.], be allowed to provide an expert testimony during the oral proceedings. However, the Board considers itself to be sufficiently competent to decide the merits of the case without use of the technical assistance of experts, either provided by the parties or appointed independently by the Board. The Board therefore did not proceed to the hearing of the expert.”

EPO T 0471/16 -  link

the declaration of Prof. [R.] at issue:
https://register.epo.org/application?documentId=EZE6S6J87859DSU&number=EP10728679&lng=en&npl=false

2. Hearing of technical expert

2.1 The appellant requested that a technical expert, Prof. [R.], be allowed to provide an expert testimony during the oral proceedings.

2.2 However, the Board considers itself to be sufficiently competent to decide the merits of the case without use of the technical assistance of experts, either provided by the parties or appointed independently by the Board. The Board therefore did not proceed to the hearing of the expert.

T 0633/16 - Wikipedia without version

Key points

• The Board does not admit Wikipedia citations, inter alia because “[the party has not indicated the versions of the Wikipedia extracts it refers to (e. g. the version online the day before the priority of the opposed patent or the version online the date of the statement of grounds of appeal).”
• Nevertheless, “the Board is of the view that the passages cited from these Wikipedia extracts disclose not more than the common general knowledge of the skilled person at the priority date of the opposed patent”. 

EPO T 0633/16 - link

3.2 Admission of the appellant's Wikipedia citations

The respondent requested to disregard the Wikipedia citations "Gabriel Lippmann", "Holography" and "Heat sealer" and the appellant's arguments based thereon, because they had not been cited during the opposition proceedings and were not attached as annexes to the statement of grounds of appeal (contrary to Article 12(2)(a) RPBA 2007).

The Board notes that the appellant has not indicated the versions of the Wikipedia extracts it refers to (e. g. the version online the day before the priority of the opposed patent or the version online the date of the statement of grounds of appeal). 

Neither had it attached the extracts as annexes to the statement of grounds of appeal, contrary to the requirements of Article 12(3)(a) RPBA 2020 in combination with Article 25(1) RPBA 2020. Therefore, the Board disregards these Wikipedia extracts (Article 12(4) RPBA 2007 in combination with Article 25(2) RPBA 2020). 

In any case, the Board is of the view that the passages cited from these Wikipedia extracts disclose not more than the common general knowledge of the skilled person at the priority date of the opposed patent.

T 1501/15 - Admissibility of documents before the OD

Key points

• The OD did not admit D3 into the proceedings as being late filed and not prima facie relevant.
• The patentee had in response to the opposition filed AR-1 wherein granted claims 11 and 14 were combined, to create novelty over E2 which is an Art.54(3) prior right.
• The opponent filed D3 by the Rule 116 date. 
• The OD considered D3 to be late filed, because it could have already been filed with the Notice of opposition or shortly after the response of the patentee.
• The Board considers the OD's remark that that D3 was not filed earlier, i.e. not closely after the response of the patentee, to be an insufficient ground for the discretionary decision to hold D3 inadmissible. 
• The Board does not explain why.  
• However, the minutes of the oral proceedings before the OD don't show the opponent had expressed itself on the discretionary decision of the OD or on the lack of prima facie relevance.
• The Board, in the original: “Ausweislich der Niederschrift haben die Einsprechenden sich jedoch weder zur Ermessensausübung der Einspruchsabteilung noch zur fehlenden Prima facie-Relevanz von E3 in der mündlichen Verhandlung geäußert.”
• Practice point: object, object, object before the OD and get it in the minutes.
• " Im Übrigen bedarf die Anfechtung von erstinstanzlichen Ermessensentscheidung im Wege der Beschwerde nach der Judikatur der Beschwerdekammern zumindest der Behauptung, dass die erste Instanz ihr Ermessen nach Maßgabe der falschen Kriterien, unter Nichtbeachtung der richtigen Kriterien oder in willkürlicher Weise ausgeübt hat und damit ihr eingeräumtes Ermessen überschritten hat (G 7/93, ABl 1994, 775 u.a.) Derartiges fehlt hier gänzlich. Der auf E3 gestützte Vortrag fehlender erfinderischer Tätigkeit ist weiterhin nahezu eine reine Wiederholung des Vortrags der Einsprechenden in erster Instanz. Die Kammer sieht daher keine Veranlassung, von der Entscheidung der Einspruchsabteilung abzugehen und E3 im Verfahren zu berücksichtigen.
• I think G7/93 indicates that the  Board should only overrule a discretionary decision in these limited cases, but indeed the party at issue should properly assert so in its initial appeal submissions.

EPO T 1501/15 - link

E3 - Zulassung in das Verfahren

28. Die Einspruchsabteilung hat das Dokument E3 nicht zugelassen, da es verspätet vorgelegt worden war und zudem nicht als prima facie relevant angesehen wurde (Punkt 15.3 der Entscheidungsgründe).

29. Die Patentinhaberin hat in Erwiderung auf den Einspruch die Hilfsanträge 1 und 2 überreicht, in denen die Merkmale des erteilten Anspruchs 14 in den Anspruch 11 einbezogen waren. Sie hat damit zumindest versucht, die gegen den Anspruch 11 erhobenen Einwände der unzulässigen Verallgemeinerung und den auf E2 gestützten Einwand mangelnder erfinderischer Tätigkeit auszuräumen.

30. E2 ist gegenüber dem Anspruch 11 der Hilfsanträge Stand der Technik gemäß Artikel 54(3), nicht jedoch 54(2) EPÜ. Für die Einsprechenden bestand durchaus Veranlassung zu einer unmittelbaren Reaktion, da der auf E2 gestützte Einwand mangelnder erfinderischer Tätigkeit gegenstandslos geworden war.

T 0967/16 - Expectation of success

 Key points

• The Board, on inventive step: “The key question to be answered in the present case is whether there was a reasonable expectation of success []. [The] expectation of success depends on the complexity of the technical problem to be solved. Whilst for very ambitious problems important difficulties might be expected a priori, less ambitious problems might normally be associated with a higher expectation of success.”, citing recent decision T 0688/14 of the same Board and CLBA I.D.7.1.

EPO T 0967/16 - link

10. The key question to be answered in the present case is whether there was a reasonable expectation of success (cf. "Case Law", supra, I.D.7, 200). According to the established case law, the expectation of success depends on the complexity of the technical problem to be solved. Whilst for very ambitious problems important difficulties might be expected a priori, less ambitious problems might normally be associated with a higher expectation of success (cf. "Case Law", supra, I.D.7.1, 200; inter alia, T 688/14 of 24 July 2019, point 25.2 of the Reasons).

T 1987/16 - Need to actively maintain objections in appeal

Key points

• The Board finds that claim 1 has basis in the application as filed, contrary to the Opposition Division. The opponent, respondent in appeal, had submitted inventive step objections in the Notice of opposition.
• "The respondent did not reply to the appeal. Therefore no further objections to the claims of the main request need to be considered (Articles 12(3) and 25(2) RPBA 2020 and Article 12(4) RPBA 2007). In addition, the board saw no reason to examine any of the further grounds for opposition of its own motion."
  
• Note, the representative of the opponent has signed a receipt acknowledgement for the summons.

EPO T 1987/16 -  link



10. In conclusion, and in contrast to the opposition division, the board finds that the application as filed provides a basis for a method as referred to in claim 1 with regard to all of the promoters referred to in dependent claim 2. As no further added subject matter objections were put forward, the subject-matter of claims 1 and 2 must be held not to extend beyond the content of the application as filed (Article 100(c) EPC).

Further grounds referred to in the notice of opposition: Article 100(a) in combination with Article 56 EPC and Article 100(b) EPC

11. The respondent did not reply to the appeal. Therefore no further objections to the claims of the main request need to be considered (Articles 12(3) and 25(2) RPBA 2020 and Article 12(4) RPBA 2007). In addition, the board saw no reason to examine any of the further grounds for opposition of its own motion.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is maintained as granted.

T 0617/16 - Non-reviewable decision?

Key points

• In this opposition appeal, the OD had admitted D13 into the proceedings despite the proprietor requesting to hold D13 inadmissible.
• The patentee argues in appeal that the reasoning of the OD concerning D13 was incorrect and the decision to admit D13 should be reverted.
• The Board: “the board notes that the EPC does not provide a legal basis for excluding, in appeal proceedings, submissions (such as prior-art documents) which were admitted into the first-instance proceedings, in particular when the impugned decision is based on them [...]. In view of the very aim of the appeal proceedings to review the decision under appeal in a judicial manner according to Article 12(2) RPBA 2020, such submissions are automatically part of the appeal proceedings” (internal citations omitted).
• The Board cites T 1549/07, r.2.1; T 1852/11, r.1.3; T 1201/14, r.2 and T 487/16, r.3; and T 2603/18, r.1 for this argument. Yet, the Board's reasoning does not persuade me. 
• In my view, the legal basis for reviewing the OD's decision to admit D13 is Article 110, first sentence: “If the appeal is admissible, the Board of Appeal shall examine whether the appeal is allowable.”. 
• The (discretionary) decision of the OD to admit D13 is part of the impugned decision and hence part of the appeal under Article 12(2) RPBA 2020. G 7/93, r.2.6 explained that “a Board of Appeal should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles [...], or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion.” The Enlarged Board sets a highly deferential standard of review here, but in my view Enlarged Board at the same time prescribes that the BoA should (in fact, must) overrule the first instance department if that department made such an error. 
• Since the decision of the OD on admissibility is part of the appealed decision, “the very aim of the appeal proceedings to review the decision under appeal in a judicial manner” in my view includes a review of that procedural decision.

EPO T 0617/16 - link


1.1 Claim 1 - Novelty and inventive step in view of D13

1.1.1 Admissibility of document D13

Appellant I [patentee] argued that the reasoning for rejecting the request not to admit document D13 into the opposition proceedings was incorrect and should be reverted, since features F2 and F3 could not be considered to be disclosed in D13.

In that regard, the board notes that the EPC does not provide a legal basis for excluding, in appeal proceedings, submissions (such as prior-art documents) which were admitted into the first-instance proceedings, in particular when the impugned decision is based on them (see e.g. T 1549/07, Reasons 2.1; T 1852/11, Reasons 1.3; T 1201/14, Reasons 2).
In view of the very aim of the appeal proceedings to review the decision under appeal in a judicial manner according to Article 12(2) RPBA 2020, such submissions are automatically part of the appeal proceedings (see T 487/16, Reasons 3; T 2603/18, Reasons 1).
Accordingly, the board sees no reason to revert the opposition division's decision to admit D13 into the opposition proceedings. Appellant I did not further comment on that issue during the oral proceedings before the board.

J 0003/20 - Designated states and divisional application

Key points

• In this examination appeal, the applicant actively withdrew the designation of GB in the course of proceedings. The applicant then tried to file a divisional application requesting to have all EPC Contracting States designated, i.e. trying to reinstate GB as designated state.
• The problem with this request is that Article 76(2) states that : “All the Contracting States designated in the earlier application at the time of filing of a European divisional application shall be deemed to be designated in the divisional application.”
• The Legal Division rejected the request concerning GB, the Legal Board of Appeal dismisses the appeal.
• The Legal Board of Appeal: “Under Article 76(2) EPC only those states that had been designated in the earlier application at time of filing the divisional can be designated in the divisional. A designated state forfeited in the parent application at time of filing the divisional cannot be revived in the divisional one” (emphasis in the original).
• The applicant also requested a correction of the withdrawal of the designation of GB - in the parent, as I understand it - under Rule 139 EPC. The Board does not admit the request under  ‘Article 12(4) to (6) RPBA 2020’
• “In the present case the appellant submitted its request for a correction of the withdrawal of Great Britain as designated state and the facts underlying this request for the first time with the grounds of appeal.
  During the first instance proceedings it did not give the slightest hint that the representative had withdrawn the designation of Great Britain in the earlier application (parent) contrary to the applicant's true intention, nor did it request a correction of the withdrawal although at that time the applicant was already aware of the relevant facts and thus could and should have presented them.
  Thus, the appellant presented a completely fresh case for the first time in the appeal proceedings, which is tantamount to treating the appeal as a new independent proceeding rather than as a judicial review based on the facts presented in the first instance.”
• “The circumstances of the case do not justify the admittance of these new submissions either.”
• In the parallel case J 14/18, the request for correction was held inadmissible under Art. 12(4) RPBA 2007 since “Under Article 114(2) EPC and Article 12(4) RPBA 2007 the board has the discretion not to admit facts and evidence which could and should have been presented in the first instance proceedings.”
• As an exercise for the reader, is a request under Rule 139 a 'fact'  or 'evidence' in the sense of Article 114(2) EPC?
• The appellant also invoked the principle of the protection of legitimate expectations during the oral proceedings before the Board. The Board does not admit these submissions.
• “Under Articles 12(4) and (6) and 13(1) RPBA 2020 the board has the discretion not to admit new submissions.”
• “Moreover, a party has to present the complete case already with the statement of grounds of appeal (Article 12(3) RPBA 2020) which requires a complete preparation considering all the relevant documents that are available. Thus, no reasons are apparent that could justify why the appellant presented the new objection and the underlying facts for the first time at such a late stage of the proceedings thereby counteracting principles of procedural economy. Therefore, the appellant should have filed the new submissions already during the first instance proceedings”.
• “ If the appellant had really trusted the content of the communication sent by the EPO on 10 August 2016 in the case J 14/18, it would have been aware of this fact from the moment of taking note of that information. Hence, the appellant could have submitted these facts already during the first instance proceedings.”

Headnote

Under Article 76(2) EPC only those states that had been designated in the earlier application at time of filing the divisional can be designated in the divisional. 

A designated state forfeited in the parent application at time of filing the divisional cannot be revived in the divisional one.

EPO J 0003/20 -  link

In substance the same analysis was given in the parallel cases J 14/18, J 13/18, and J 12/18, all of 19.05.2020 and all with the same applicant.

Reasons for the Decision

1. Article 76(2) EPC

1.1 As correctly pointed out in the appealed decision, the inclusion of Great Britain as validly designated state in the divisional application on file was not possible because the appellant had withdrawn the designation of this state in the earlier application (parent) previously, before the time of filing of the divisional application.

1.2 According to Article 76(2) EPC all the Contracting States designated in the earlier application (parent) at the time of filing of a European divisional application shall be deemed to be designated in the divisional application. The appellant considered that the wording of this provision does not exclude the designation of Contracting States in a divisional application even if the designation of these states had already been withdrawn in the earlier application at the time of filing the divisional application.

Visser's Annotated EPC September 2020 online update

 

T 3142/19 - A forest of optional features

 Key points

• The Examining Division refused the application because claim 1 would lack basis in the application as filed due to a combination of features. In particular, according to the ED: “Although the features were disclosed, there was no specific pointer to the particular combination claimed. All the features were described as optional, and there was no indication by way of the technical problem solved to lead the skilled person to the conclusion that some of the features were actually not optional or that they were meant to be combined.”.
• The Board: “ if the description indicates that some combination is desirable, or necessary to solve a technical problem, then a clear pointer to - and thus disclosure of - the combination is provided. If not, however, it does not automatically mean that the combination is not derivable by the skilled person.”
• “An excessive number of optional features may also have an impact on the assessment of compliance with Article 123(2) EPC, in that, in a forest of optional features, a singled-out individual combination may not be clearly and unambiguously derivable by the skilled person. Whether this is indeed the case depends, however, on the specifics of the case, e.g. on the level of complexity caused by the optional features.”
• “According to Article 123(2) EPC, the content of the application as filed delimits at the outset the broadest protection that the applicant may obtain.”
• As a comment, the broadest scope of protection is typically considered under Article 123(3) and broadening claim amendments are possible before grant. 
• The Board finds the claims to comply with Article 123(2) and remits the case.

EPO T 3142/19 -  link

Main Request - Article 123(2)

3. The Examining Division rejected the main request on the basis of the argument that the claimed combination of features was not originally disclosed (point 2 in the grounds for the decision). Although the features were disclosed, there was no specific pointer to the particular combination claimed.

3.1 All the features were described as optional, and there was no indication by way of the technical problem solved to lead the skilled person to the conclusion that some of the features were actually not optional or that they were meant to be combined.

J 0007/19 - Correction withdrawal rejected

Key points

• The Board does not allow a correction of a withdrawal of an application.
• The appellant submitted that the withdrawal“had been based "on the erroneous belief" that the claims of the withdrawn European patent application were the same as the claims of a corresponding Japanese patent application.”
• The Board: “The notion of a mistake eligible for correction under Rule 139 EPC does not cover the scenario where a declaration of withdrawal reflects the true intention of the applicant, but is based on wrong assumptions.”
• The Board: “There are also good policy reasons for having this limitation. If the notion of a mistake were extended to also cover a scenario where the declaration correctly reflects a party's intentions, but was based on wrong assumptions, any mistaken assessment of the disclosure of the application, the patentability of the invention, the entitlement to priority, the legal provisions or the related case law would make any withdrawal potentially eligible for correction. This would be detrimental to legal certainty ”
• The Board also refers to general principles as illustrated by Italian, Swiss and German civil law. 
• Personally I appreciate that the Legal Board discusses the law of more EPC Contracting States than only Germany. 

Headnote

• “The notion of a mistake eligible for correction under Rule 139 EPC does not cover the scenario where a declaration of withdrawal reflects the true intention of the applicant, but is based on wrong assumptions.”

EPO J 0007/19 -  link

Reasons for the Decision

1. According to Rule 139 EPC linguistic errors, errors of transcription and mistakes in any document filed with the European Patent Office may be corrected on request. This provision has been subject to extensive interpretation by the boards of appeal. According to the case law (J 8/80, OJ EPO 1980, 293, Reasons No. 3; J 4/82, OJ EPO 1982, 385, Reasons No. 3; J 19/03 of 11 March 2005, Reasons No. 3-12; J 4/97 of 9 July 1997, Reasons No. 3), Rule 139 EPC also applies to "corrections of procedural acts if they are submitted by a document", for example to a request for correction of the withdrawal of a designation or of a claimed priority (cf. J 19/03, loc. cit., Reasons No. 3 and 4). In this case the correction would retrospectively modify or eliminate the procedural act concerned.

T 0694/15 - The terminology "closest prior art" is somewhat misleading

Key points

• This is an examination appeal about inventive step.
• “The Examining Division started from document D8. The Board also considered documents D9 and D5 as possible starting points. The [applicant] disagreed that D5 was the closest prior art”
• The Board: “the terminology "closest prior art" is somewhat misleading. It is perhaps preferable to use the terminology "starting point (in the prior art)". It can be economical to start from prior art that is in some sense close to the invention, in the hope that the consideration of this single starting point will be enough to establish whether the claimed subject matter would have been obvious.”
• “However, if this fails, before arriving at the conclusion that the subject matter would not have been obvious, it is necessary to consider other possible starting points, to see whether there are any other paths leading to the invention, that the skilled person would have taken when searching for solutions to technical problems pertinent to that starting point. If such a path exists, then the invention would have been obvious.”
• “It has to be noted, however, that a problem which is not apparent from the context of the starting point, but which is derived only with knowledge of the invention, is very likely to be the result of hindsight.”
• The Boards finds the claims to be inventive.

EPO  T 0694/15 - link




9. The Examining Division started from document D8. The Board also considered documents D9 and D5 as possible starting points.

10. The appellant disagreed that D5 was the closest prior art, because it only provided, as a visual indication, the switching on or off of an LED, and did not provide for a measurement of a level in the sense of the claim, whereas D9 did.

11. This argument fails in view of the Board's claim construction (point 8, above). But the argument is actually of no relevance to the question of whether D5 can be selected as closest prior art.

12. Having one less feature in common with the claim may mean that it appears less likely that the skilled person would arrive in an obvious manner at something falling within the scope of the claim, but it does not mean that the skilled person could not have arrived at such subject manner without hindsight, possibly while looking for a solution to a different objective technical problem.

T 1050/19 - Requesting oral proceedings late

Key points

• The Board confirms established case law (but does not cite that case law) finding that oral proceedings can be requested throughout the procedure, such that a request for oral proceedings is not late.
• The Board clarifies that a request for oral proceedings is not an amendment of a party's case in the sense of Art.13(1) RPBA 2020. 

EPO T 1050/19 - link

Entscheidungsgründe

1. Zulassung des Antrags auf mündliche Verhandlung der Beschwerdegegnerin und Zulassung der Entgegenhaltungen D8, D9

Hinsichtlich dieser Fragen haben die Beteiligten während der mündlichen Verhandlung ihre Zustimmung zu einer Begründung in gekürzter Form gegeben (Artikel 15(7) VOBK 2020; siehe Protokoll der mündlichen Verhandlung).

Es genügt daher an dieser Stelle zu erwähnen, dass der spät gestellte Antrag auf mündliche Verhandlung zugelassen wurde, da es sich dabei nicht um eine Änderung des Beschwerdevorbringens nach Artikel 13(1) VOBK 2020 handelt, sondern um eine Ausübung des Anspruchs auf rechtliches Gehör, und dass die Kammer keinen Grund sieht, die Ermessensentscheidung der Einspruchsabteilung hinsichtlich der Zulassung von D8 und D9 aufzuheben, da diese das richtige Kriterium der prima facie Relevanz angewendet hat.

T 0891/16 - Grounds for opposition are not personal

Key points

• In this case, there are two opponents. Only opponent II raised Article 100(c) as ground of opposition in the first instance proceedings (namely in its Notice of opposition). Only Opponent I takes up this ground in appeal. Is this allowed or is this a 'fresh ground for opposition in appeal'  which is impermissible under G 10/91?
• The Board: "it is established case law that multiple admissible oppositions do not initiate a corresponding number of parallel opposition proceedings but only a single one and that each opponent can rely on an opposition ground duly submitted by other opponents [...] both in the opposition proceedings and in any subsequent appeal proceedings" (IV.C.2.1.6)

EPO T 0891/16 -   link

2.3.2 The proprietor requested to disregard the observations filed by opponent I on Article 100(c) EPC since opponent I introduced this ground of opposition for the first time with its statement of the grounds of appeal.

2.3.3 The Board observes that it is established case law that multiple admissible oppositions do not initiate a corresponding number of parallel opposition proceedings but only a single one and that each opponent can rely on an opposition ground duly submitted by other opponents and communicated to all parties in accordance with Rule 79(2) EPC respectively Rule 57(2) EPC 1973, both in the opposition proceedings and in any subsequent appeal proceedings, see Case Law of the Boards of Appeal, 9th Edition, 2019, IV.C.2.1.6. In the present case, the notice of opposition filed by opponent III was based, among others, on the ground of opposition under Article 100(c) EPC 1973, and in particular contained reasons why in its view Feature 5 contravened Article 123(2) EPC (see point 4 of the notice of opposition filed by opponent III).

Hence, the observations of opponent I with respect to the ground under Article 100(c) EPC 1973 are not to be disregarded, even if opponent I did not address this ground of opposition in the opposition proceedings.

T 0568/17 - Decision according to the state of the file is no formality

Key points

• This is an examination appeal concerning an application for an invention pertaining to database technology. Although this pertains to software, the claims were not rejected due to non-technical features but due to  'classical' lack of novelty. The applicant had requested a decision according to the state of the file and refusal with Form 2061 was issued.
• The Board: "an applicant's request for a decision according to the state of the file by no means permits, let alone obliges, an examining division to immediately conclude the examination proceedings as a mere formality with a decision issued on a standard form; rather, the examining division has to verify whether it is in fact in a position to adopt the opinion and reasons expressed in its last substantive communication as its definite stance on the case."
• The Board considers the claims to be novel. The Board: " it is unfortunate that the Examining Division, which consisted of three technically qualified examiners, failed to detect the severe errors of judgment when the decision to refuse the application was prepared."
• The Board remits the case because an additional search may be necessary. "Whether the search was complete is not a question that the Board is equipped to answer. Since the question presents itself, there are special reasons within the meaning of Article 11 RPBA 2020 to remit the case for further prosecution."

T 0568/17 -  link






3. Main request - novelty and inventive step


3.1 Document D1 relates to the construction of an inverted index for high-dimensional data (see paragraph [0025] and claim 1). It does not disclose transactions, let alone a detailed mechanism for performing transactions as specified in claim 1 of the main request.

3.2 The Examining Division, in point 3.1 of the communication containing the reasons for the decision, apparently considered that "efficient transaction processing" was implicitly disclosed by the reference to current Online Analytical Processing (OLAP) systems in paragraphs [0009] and [0010] of the background section of document D1.

However, a reference to OLAP systems is far from a disclosure of a particular way of performing transactions.

T 0949/13 - Taxol

Key points

• This Euro-PCT application has an international filing date 26.01.1994 (!). The patent was published in October 2010. The decision of the opposition division to maintain the patent was taken in 2013. The decision of the Board was taken on 19.12.2019 and was issued in writing on 29.07.2020.
• Some features of claim 1 of the main request were taken from the description after grant and the Board decides that these are unclear. 
• " the opposition division's and the [patentee's] interpretation is not the only way of construing the aforementioned feature. In the board's view, another equally valid and technically feasible understanding of feature iii) is "
• " It follows from the above that feature iii) is not only broad, as argued by the opposition division, but also ambiguous as it can be understood in various ways, i.e. as referring to the point of delivery of the therapeutic agent or to the form in which the therapeutic agent is delivered. This leaves the public in doubt as to what subject-matter is covered and not covered by claim 1 of the main request."
• The patent is revoked. 

EPO T 0949/13 - link





3. Clarity (Article 84 EPC)

3.1 The sole claim of the main request is directed to the use of taxol for the preparation of a medicament for inhibiting one or more pathological activities of normal mammalian vascular smooth muscle cells for a sufficient period of time to maintain an expanded vessel luminal area. Taxol is identified as a cytoskeletal inhibitor and characterised as a cytostatic therapeutic agent. It is administered directly or indirectly to a traumatised vessel.

According to the appellant, the claim's basis is found in claims 1 and 3 and on page 25, line 32 to page 27, line 24 of the application as filed. The board notes that the sole claim of the main request is not the result of a combination of claims as granted and that some features, such as the inhibition of one or more pathological activities or the direct and indirect administration, were not present in the claims as granted. In such a case, according to established case law of the boards of appeal, the opposition division and the board have the power under Article 101(3) EPC to examine whether the amendments introduce any contravention of requirements of the EPC, including Article 84 EPC (G 3/14). This was not disputed.

3.2 Under Article 84 EPC in combination with Rule 43(1) EPC, the claims must be clear and define the matter for which protection is sought in terms of the technical features of the invention. These requirements are there to ensure that the public is not left in any doubt as to what subject-matter is covered and not covered by a claim. Accordingly, a claim cannot be considered clear within the meaning of Article 84 EPC if it does not unambiguously allow this distinction to be made. A claim comprising an unclear or ambiguous technical feature therefore entails doubts as to the subject-matter covered by that claim. This applies all the more if the unclear feature is essential with respect to the invention in the sense that it is intended to delimit the subject-matter claimed from the prior art, thereby giving rise to uncertainty as to whether or not the subject-matter claimed is anticipated (see decision T 560/09, not published, point 2 of the reasons).

3.3 In the case in hand, feature iii) requires the therapeutic agent to be directly or indirectly administered to a traumatised vessel. According to the opposition division and the respondent, the person skilled in the art would construe this feature as clearly referring to the administration of taxol per se to either the point in the vessel where the trauma occurred (direct administration), for example via a stent or an infusion catheter, or a different point from that where the trauma occurred (indirect administration), for example via injection. In the opposition division's and the respondent's view, taxol conjugates, as disclosed in document D2, were therefore clearly excluded from the scope of claim 1 of the main request.

3.4 However, the opposition division's and the respondent's interpretation is not the only way of construing the aforementioned feature. In the board's view, another equally valid and technically feasible understanding of feature iii) is the administration of the therapeutic agent either per se (direct administration) or in a form from which it can be released (indirect administration), such as a conjugate, in which case conjugates would not be excluded from the scope of the claim. It should be noted that the term "indirect administration" was not defined in the application as filed, which drew a distinction between targeted and direct delivery. It is therefore not unreasonable to assume that the expression "indirect administration" was meant to reflect the targeted delivery of the therapeutic agent, as argued by the appellant.

The board therefore does not accept the respondent's arguments that the wording of claim 1 required taxol per se to be administered and that it then followed that feature iii) clearly referred to the point of delivery (see point XVI above). Claim 1 is not directed to a particular final dosage form which is administered to the vessel and which contains the therapeutic agent in a particular, i.e. free, form.

3.5 It follows from the above that feature iii) is not only broad, as argued by the opposition division, but also ambiguous as it can be understood in various ways, i.e. as referring to the point of delivery of the therapeutic agent or to the form in which the therapeutic agent is delivered. This leaves the public in doubt as to what subject-matter is covered and not covered by claim 1 of the main request.

Hence, the board concludes that claim 1 of the main request is not clear within the meaning of Article 84 EPC. The main request is therefore not allowable.