T 1214/15 - More about the appeal fee

 Key points

• To end the year in style, yet another decision about the appeal fee refund rules of Rule 103.
• Both the patentee and the opponent appeal. 
• “ On 4 November 2020, the [opponent] withdrew the appeal, but remained party to the appeal proceedings as of right in accordance with Article 107, second sentence, EPC.”
• The Board surprisingly does not order a refund of the appeal fee at 25% to the opponent under Rule 103(4)(a) and does not discuss that provision at all. 
• If readers can help me with this, I would be grateful.
• Comment 25.03.2021: there was a 50% refund of the appeal fee, link.
• The Board: “The [opponent] requested reimbursement of the appeal fee based on an alleged procedural violation (Rule 103(1)(a) EPC), arguing that the opposition division failed to discuss, either during the oral proceedings or in the decision under appeal, the line of argument on inventive step put forward in the notice of opposition”
• The Board: “Although the respondent has withdrawn his appeal, reimbursement may still be considered ex officio by the board in accordance with Article 114(1) EPC, if deemed equitable by reason of a substantial procedural violation.”
• The Board then analyses whether there had been a substantial procedural violation, finding none.
• However, Rule 103(1)(a) requires first of all “where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation”. It is not at all cleary to me how Rule 103(1)(a) can be relevant if the opponent withdraws the appeal: I would say that a withdrawn appeal is hardly ‘allowable’.

EPO T 1214/15 -

https://www.epo.org/law-practice/case-law-appeals/recent/t151214eu1.html

Request for reimbursement of the appeal fee


18. The respondent requested reimbursement of the appeal fee based on an alleged procedural violation (Rule 103(1)(a) EPC), arguing that the opposition division failed to discuss, either during the oral proceedings or in the decision under appeal, the line of argument on inventive step put forward in the notice of opposition, based on document (1) as the closest state of the art (see section XIV above).

19. Although the respondent has withdrawn his appeal, reimbursement may still be considered ex officio by the board in accordance with Article 114(1) EPC, if deemed equitable by reason of a substantial procedural violation.

20. In the communication of 2 October 2014 attached to the summons to oral proceedings in opposition proceedings, the opposition division took account of all the lines of argument on inventive step and, inter alia, expressed the view that, starting from document (1) as the closest state of the art and in view of document (9), the method of claim 1 according to the main request was not obvious to a person skilled in the art. Even though the respondent reiterated its line of argument based on document (1) in his reply of 27 January 2015, it appears from the minutes of the oral proceedings before the opposition division posted on 10 April 2015 that the sole line of argument brought forward by the respondent and discussed at the oral proceedings was based on document (3) as the closest state of the art in combination with document (9). This has never been disputed.

21. In view of the circumstances of the present case, the board is not persuaded that the alleged procedural violation occurred. If the respondent wished his objection of lack of inventive step based on documents (1) and (9) to be discussed at the oral proceedings and decided upon by the opposition division, it was to him to put forward the objection at the oral proceedings, or at least refer to its written submissions in this respect, and indicate that they were maintained. Failing that, the opposition division had to assume that the line of argument based on document (1) as the closest state of the art had been abandoned.

22. In the absence of a substantial procedural violation, the respondent's request for reimbursement of the appeal fee cannot be granted.

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 in amended form on the basis of claims 1 to 15 according to the main request filed on 12 March 2014 and, if required, a description to be adapted thereto.

T 2530/16 - Routine modifications

Key points

• The Board finds the technical effect to be not credible and then turns to the question whether the claimed device (a lamp) is an obvious alternative.
• “ In the same way, starting from a commercially available triphosphor low pressure mercury vapor discharge lamp, if the problem is merely to find alternative lamps regardless of their likely useful properties, all lamps which could be arrived at by routine modifications (such as using well-known equivalent phosphors or adjusting phosphor weight ratios) would be obvious, irrespective of their number, and this would include embodiments falling within the ambit of claim 1 ” (underlining added).
• The Board extensively cites T 939/92. 

EPO T 2530/16  - https://www.epo.org/law-practice/case-law-appeals/recent/t162530eu1.html

3.10 Consequently, the Board is not persuaded that the problem of providing improved colour rendering is solved over the breadth of claim 1, and, as a result, this problem cannot serve as the objective problem within the context of the problem-solution approach. In the absence of any other specific problem plausibly solved across the entire breadth of the claim, the problem can only be seen as merely providing an alternative low pressure mercury vapor discharge lamp.

3.11 In the light of such a general requirement, essentially any conventional modification of the prior art could be seen as an obvious solution to the problem, for example, using different or additional known phosphors, or changing the phosphor weight ratios.

T 0777/15 - Appeal fee refund rules

 Key points

• The Board clarifies that the one-month period under Rule 103(4)(c) EPC can be extended under Rule 134(2) and (4) EPC and was extended by the Covid-19 notice.
• The Board clarifies that an appellant must withdraw (or abandon) it's own request for oral proceedings and does not benefit from another appellant withdrawing their request for oral proceedings (Rule 103(4)(c) does not say so because it mentions "if any request for oral proceedings is withdrawn").
• The Board clarifies that it is not enough for the partial refund if an auxiliary request for oral proceedings of an appellant becomes ineffective because the Board can accede to that party's main request (i.e. revocation of the patent as main request of the appellant-opponent) without oral proceedings (i.e. because the patentee as respondent disapproves the text of the patent).

T 0777/15 

https://www.epo.org/law-practice/case-law-appeals/recent/t150777eu1.html

3. Partial reimbursement of appeal fees

3.1 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 of appeal 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), thus also to the present appeal case.

3.2 Appellant-opponent 2 withdrew the request for oral proceedings on 11 May 2020 whereas the board's communication was issued on 20 March 2020. However, in view of the Notice from the EPO dated 1 May 2020 concerning the disruption due to the COVID-19 outbreak (OJ EPO 2020, A60, updating the earlier Notices dated 15 March 2020 and 30 March 2020), and Rule 134(2) and (4) EPC, the board concludes that the withdrawal occurred in due time. The requirements for reimbursement of 25% of appellant-opponent 2's appeal fee pursuant to Rule 103(4)(c) EPC are therefore met.

4. No reimbursement of the appeal fees of appellant-opponent 3 and 5 is to be ordered.

4.1 The board construes Rule 103(4)(c) EPC to provide an incentive to a party that had initially requested oral proceedings before the board to reconsider any such request at a later stage of the appeal proceedings and, in case that the party abandons this request, to provide a reward by way of a partial reimbursement of this party's appeal fee. Accordingly, appellant-opponent 5, an appealing party not having requested oral proceedings in the proceedings before the board, does not benefit from another party's withdrawal of the request for oral proceedings. Rule 103(4)(c) EPC does thus not apply in relation to appellant-opponent 5.

4.2 Appellant-opponent 3 requested oral proceedings on the condition that the board intends to reach a decision other than setting aside the decision under appeal and revoking the patent in its entirety. This condition is not fulfilled since the outcome of the present case is as requested by the appellant-opponent 3 and, hence, appellant-opponent 3's request for oral proceedings has not become procedurally relevant. Moreover, appellant-opponent 3 has neither withdrawn its request for oral proceedings nor filed any statement which could be interpreted as a withdrawal of its request for oral proceedings.

Order

For these reasons it is decided that:

1. The appeal of appellant-opponent 5 is rejected as inadmissible.

2. The decision under appeal is set aside.

3. The patent is revoked.

4. The appeal fee of appellant-opponent 2 is reimbursed at 25% pursuant to Rule 103(4)(c) EPC.

T 1217/17 - Don't focus in your appeal reply brief

 Key points

• In this opposition appeal, the Board reverses the finding of the OD and concludes that claim 1 is not obvious starting from brochure D5. The opponent then wishes to present new inventive step attacks during the oral proceedings. The admissibility is discussed for more than one hour (point 7) and none of the attacks is admitted.
• The inventive step attacks based on D1-D4 and D6 as well as D1+D5 are not admitted because the opponent as respondent had merely referred to the submissions in the first instance proceedings in its Appeal Reply Brief (note, the patent was revoked by the OD). Moreover, the first instance submissions lacked detailed reasoning on this point. 
• "Damit überließ die Beschwerdegegnerin es ganz der Kammer und der Beschwerdeführerin herauszufinden, inwiefern und aus welchen Gründen die erfinderische Tätigkeit des Gegenstands des Anspruchs 1 im Hinblick auf den technischen Inhalt dieser Entgegenhaltungen in Frage gestellt werden soll. Im Einklang mit ständiger Rechtsprechung der Beschwerdekammern, vertritt die Kammer die Auffassung, dass sich ein Beteiligter nicht darauf beschränken kann, ein Konvolut von Dokumenten vorzulegen ohne substantiiert vorzutragen, welche Tatsachen durch welche konkreten Passagen oder Figuren dieser Dokumente belegt werden sollen."
• Opponent's argument that no detailed inventive step arguments regarding these further attacks were necessary because the OD had revoked the patent based on D5, does not convince the Board. Article 12(2) RPBA 2007 requires substantiation of all inventive step attacks to be possibly ('ggf.' in the German text) made in the appeal proceedings, already in the Appeal Reply  Brief (in case of the opponent as respondent, I add) (see also r.6.7 and 6.8 of the decision).
• The attacks based on prior use P3 and P4 are not admitted as lacking substantiation.
• Apparently, the opponent announced a speech on these inventive step attacks during the oral proceedings, and this speech was not admitted (as I understand it, before the speech was given). Opponent protested that the speech did not involve new submissions but only the elaboration of arguments based on documents already in the file.
• "Die [opponent] argumentiert zum einen, dass es sich bei dem angekündigten Vortrag um kein neues Beschwerdevorbringen im Sinne des Artikels 13(1) VOBK 2020 handele, sondern um eine in jeder Phase des Beschwerdeverfahrens zulässige Weiterentwicklung von in der Beschwerdeerwiderung bereits erwähnten Argumenten, die sich auf im Verfahren befindliche Entgegenhaltungen stützen."
• About why the announced speech would involve new facts: "Die Kammer vertritt die Auffassung, dass es sich bei den angekündigten, vorzutragenden Ausführungen nicht lediglich um neuen "Argumente" handelt, sonder auch um neue relevante "Tatsachen", wie z.B. die in der Beschwerdeerwiderung fehlende Merkmalanalyse, sowie die Angabe der konkreten Passagen in den oben genannten Beweismittel, die die von der Beschwerdegegnerin als bekannt betrachteten Merkmale des Anspruchs 1 vorwegnehmen."
• 
  

EPO T 1217/17 

https://www.epo.org/law-practice/case-law-appeals/recent/t171217du1.html

3.4 Ausgehend von der Vorrichtung der Broschüre D5 und im Hinblick auf die oben genannten, zusätzlichen unterscheidenden Merkmale, stimmt die Kammer grundsätzlich der von der Beschwerdeführerin in der Beschwerdebegründung ausgeführten Aufgabestellung zu, nämlich:

den gleichzeitigen und gleichmäßigen Auftrag von Aromastoffen auf mehreren Tabaksträngen einer Mehrstrangzigarettenmaschine zu gewährleisten.

3.5 In Abweichung von der Schlussfolgerung der Einspruchsabteilung in der angefochtenen Entscheidung schließt sich die Kammer der Auffassung der Beschwerdeführerin an, dass die im Anspruch 1 zur Lösung der oben genannten Aufgabe vorgeschlagene Lösung auf einer erfinderischen Tätigkeit im Sinne der Artikel 52(1) und 56 EPÜ beruht.

Selbst wenn, im Einklang mit der Begründung der Einspruchsabteilung, eine Vervielfachung des bekannten Dosiersystems zum Zweck eines gleichzeitigen Auftrags von Aromastoffen auf mehreren Tabaksträngen als eine naheliegende Weiterbildung der bekannten einsträngigen Vorrichtung angesehen werden könnte, besteht für den Fachmann keine Anregung, die außerhalb des Regelkreises angeordnete, ungeregelte Konstantpumpe der Vorrichtung der D5 durch eine Verstellpumpe zu ersetzen, die Teil des Dosiersystems ist. Eine solche Modifizierung würde außerdem komplexe Anpassungen der Steuerungseinrichtung sowie ein Verzichten auf die regelbare Drosselanordnung voraussetzen, was jeweils nicht als naheliegend angesehen werden kann. Die Argumentation der Beschwerdegegnerin, die im Wesentlichen auf der sich vom technischen Inhalt der Broschüre D5 unterscheidenden, mehrstrangigen Ausführung der Dosiersysteme basiert und ergänzend darauf verweist, dass die Auswahl eine Verstellpumpe anstatt einer Konstantpumpe für den Fachmann naheliegend sei, ist somit nicht überzeugend.

Weitere Angrifflinien unter Artikel 56 EPÜ basierend auf D1 in Kombination mit D5, D1-D4, D6 sowie auf P3 und P4 - Vortrag in der Beschwerdeerwiderung

4. Im Laufe der mündliche Verhandlung kündigte die Beschwerdegegnerin an, dass sie, als Reaktion auf die oben ausgeführte Schlussfolgerung der Kammer, weitere Angrifflinien basierend auf den Dokumenten D1-D4 und D6, insbesondere auf der Kombination von D1 mit D5, sowie auf den offenkundigen Vorbenutzungen P3 und P4 vortragen wolle. Die Beschwerdeführerin trat der Berücksichtigung eines auf diesen Angrifflinien basierenden Vortrags entgegen mit der Begründung, dass sie in der Beschwerdeerwiderung entweder nicht ausreichend oder gar nicht substantiiert sind.

T 0482/19 - Merely cancelling claims: not admitted

Key points

• Patentee files auxiliary requests 12 and 13 one month before the oral proceedings before the Board. AR-12 is based on the claims as granted with the product claims deleted and keeping the claims for the manufacturing method.
•  “[Patentee] argued that the amendments in auxiliary requests 12 and 13 would not be an amendment to the case as they contained no new subject-matter. Therefore Article 13 RPBA would not be applicable. The method claims were part of the granted patent. The opponents did not raise particular objections to the method claim, but only referred to the objections raised in view of the product claim. The fact that the opponents failed to attack all independent claims properly at an earlier stage of the procedure could not be used to the detriment of the patent proprietor.” 
• The Board does not admit the requests.
• “The method claim indeed is more limited than the product claim because of [the method features specifying a step wherein a] mold is loaded with two different materials before the step of feeding steam. These features did not play any role in the appeal procedure, as the submissions of the parties were mainly related to the product claims that were present in all requests on file. However, these features would require to be considered in particular in relation to the issue of inventive step and this would result in a substantial and unexpected change in the discussion at the oral proceedings. Therefore the filing of auxiliary requests 12 and 13 constitute an amendment of the patentee's case according to Article 13 RPBA 2020 rendering them inadmissible [sic!] into the appeal proceedings. The patentee did not provide any exceptional circumstances, which have been justified with cogent reasons, why auxiliary request 12 and 13 were only filed at such a late stage of the procedure. Hence both auxiliary requests are not taken into account according to Article 13(2) RPBA 2020.”

EPO T 0482/19 - link
https://www.epo.org/law-practice/case-law-appeals/recent/t190482eu1.html

5. Auxiliary requests 12, 13 - Admissibility

5.1 The Board did not admit auxiliary requests 12 and 13 into the appeal procedure.

5.2 Auxiliary request 12 is based on the claims as granted, wherein the product claims have been deleted. Auxiliary request 13 is based on the claims of auxiliary request 2, wherein the product claims have been deleted. Both requests were filed after the parties had been summoned to oral proceedings.

T 2483/16 - Beyond what is justified by the description

Key points

• In this examination appeal, the Board comments on the requirement of ‘support’ in Article 84.
• By way of introduction, if the claims are novel, inventive and sufficiently disclosed, and also have verbatim basis in the application as filed, can they still be refused under the 'support' requirement of Article 84? 
• The Board: “[The requirement of support in Article 84] means that the claimed subject-matter must have an adequate basis in the description and that the scope of the claims may not go beyond what is justified by the description and the drawings. In particular, the claimed subject-matter must have technical support in the description reflecting the applicant's effective contribution to the art. However, purely formal support, e. g. a verbatim repetition in the description of a claimed feature, is not sufficient for fulfilling this requirement”.
• As a comment, how to assess what is 'justified' by the description and the drawings?
• In this case, the Board notes “that none of the described embodiments disclose that the relaxed graded layer is epitaxially grown over the uniform cap layer as specified in feature [C]”.
• The Board does not expressly deal with the question of whether this feature C is perhaps a routine feature in the technical field at issue and does not comment on common general knowledge of the skilled person. The Board does not say that the skilled person would have any difficulty in reducing this feature to practice (indeed, established case law about Article 83 requires 'serious doubts' also in pre-grant examination). 

EPO T 2483/16 -  link



2. Support by the description

2.1 According to Article 84 EPC 1973 the claims define the matter for which protection is sought and have to be, inter alia, supported by the description.

This requirement means that the claimed subject-matter must have an adequate basis in the description and that the scope of the claims may not go beyond what is justified by the description and the drawings. In particular, the claimed subject-matter must have technical support in the description reflecting the applicant's effective contribution to the art. However, purely formal support, e. g. a verbatim repetition in the description of a claimed feature, is not sufficient for fulfilling this requirement (see T 127/02, point 3 of the Reasons; T 1048/05, point 11 of the Reasons). [...]

2.4. [...]

It is to be noted that none of the described embodiments disclose that the relaxed graded layer is epitaxially grown over the uniform cap layer as specified in feature (c1). This holds for all requests.

Rather, in relation to the first embodiment shown in Figure 1 it is indicated in the description of the application that the cap layer 150 is the outermost layer of a "virtual substrate" and constitutes the layer over which the compressively strained layer 160 and/or the tensilely strained layer 170 are disposed. [...]

Hence, the description of the embodiments of the invention does not provide technical support of the claimed subject-matter in relation to feature (c1).

T 0403/14 - Should have been filed before the Examining Division

Key points

• A case of a Board holding a request inadmissible which was filed in an appeal against a refusal with the Statement of grounds, under the 'should have been filed' prong of Article 12(4) RPBA 2007.
• “If the board were to admit the first auxiliary request into the proceedings, it would be forced either (1) to examine and decide on subject-matter which has probably not been searched or (2) to remit the case to the examining division in order to enable a search to be performed. The board concurs with the view []  that neither of these procedural options is appropriate and acceptable. If the appellant intended to seek protection for the subject-matter of claim 1 of the present first auxiliary request, it should have presented this request before the examining division, for instance as a further auxiliary request. The appellant had several opportunities to do so because the subject-matter of claim 1 was already objected to - for lack of novelty or lack of inventive step over D1 - in several communications of the examining division.”

EPO T 0403/14 - link

6. Conclusion on the main request

Since claim 1 of the main request does not meet the requirement of clarity of Article 84 EPC 1973, the main request is not allowable.

First auxiliary request - admittance (Article 12(4) RPBA)

7. Pursuant to Article 12(4) RPBA (Rules of Procedure of the Boards of Appeal, OJ EPO 2007, 536), the board has the power to hold inadmissible a request which could have been presented in the first-instance proceedings but was not (see Case Law of the Boards of Appeal of the EPO, 8th edition 2016, IV.E.4.3.1 in general and IV.E.4.3.3 b) for ex parte appeal proceedings).

8. Claim 1 according to the first auxiliary request has been amended with respect to claim 1 of the main request by adding several features taken from the description and specific to the fourth embodiment shown in figures 13 to 15.

T 0335/18 - Article 114 not procedural?

 Key points

• The Board, in the original German: “Eine fehlerhafte Ausübung des Ermessens durch die Prüfungsabteilung unter Artikel 114 (2) EPÜ begründet aber noch keinen wesentlichen Verfahrensfehler.”
• The Board does not explain why an erroneous exercise of the discretion to hold (certain) submissions inadmissible is not a substantial procedural violation in their view.
• The Board finds that the requests held inadmissible by the Examining Division were not late filed (“und somit nicht verspätet”). But finds no substantial procedural violation in the decision to hold these requests inadmissible, even though the Examining Division simply has no discretion to hold submissions inadmissible that are 'not late-filed' (as I understand it). 
• I also note that Article 114(2) EPC does not refer to 'requests' or 'amended claims'. 

T 0335/18 - link

Die Kammer kann auch in der Nichtzulassung der Hilfsanträge Ia, Ib und Ic wegen verspäteten Vorbringens nach Artikel 114 (2) EPÜ keinen wesentlichen Verfahrensfehler erkennen.

[...]

Die Vorlage der Hilfsanträge Ia bis Ic mag zwar "in Reaktion" und somit nicht verspätet erfolgt sein.

Eine fehlerhafte Ausübung des Ermessens durch die Prüfungsabteilung unter Artikel 114 (2) EPÜ begründet aber noch keinen wesentlichen Verfahrensfehler.

T 2158/15 - Unamended claims as granted inadmissible

Key points

• The patentee maintains the claims as granted, unamended, as main request throughout the proceedings. The Board holds these requests inadmissible in effect. As a question to the readers: what is the legal basis?
• The problem for patentee is that it is the appellant and the OD had revoked the patent. The patentee maintained the claims as granted as main request in the SoG but without substantiated comments why the OD's decision was wrong. Hence, the claims are disregarded under Art. 12(2) RPBA 2007 / Art. 12(3) RPBA 2020.
• The Board: “Zwar stellt sich die Frage der Zulassung des Hauptantrags im vorliegenden Fall nicht, da dieser dem Patent wie erteilt entspricht und der angefochtenen Entscheidung zugrunde liegt, und damit keine Änderung des Patents darstellt, die zuzulassen wäre. Allerdings ist im vorliegenden Fall darüber zu entscheiden, ob der Vortrag der Beschwerdeführerin zum Hauptantrag die Erfordernisse des Artikels 12 (2) VOBK 2007 erfüllt, , und der Hauptantrag in der Folge gemäß Artikel 12 (4) VOBK 2007 zu berücksichtigen ist.”
• “In der Tat enthält die Beschwerdebegründung keinerlei Argumente, warum die angefochtene Entscheidung zum Hauptantrag aufzuheben wäre. ”
• “Der Vortrag zum Hauptantrag erfüllt daher nicht die Erfordernisse nach Artikel 12 (2) VOBK 2007, und der Hauptantrag wird in der Folge gemäß Artikel 12 (4) VOBK 2007 nicht berücksichtigt.”

   EPO T 2158/15 -  link

Entscheidungsgründe

1. Zulässigkeit der Beschwerde

Die Beschwerde wurde frist- und formgerecht eingereicht und jedenfalls zum Teil ausreichend substantiiert. Die Beschwerde ist folglich zulässig.

2. Hauptantrag - Artikel 12 (2) und (4) VOBK 2007

Die Beschwerde wurde vor dem Inkrafttreten der VOBK 2020 eingereicht. Ausweislich Artikel 25 (2) VOBK 2020 ist daher Artikel 12 (4) VOBK 2007 anzuwenden. Dieser impliziert auch die Anwendung des Artikels 12 (2) VOBK 2007, da Artikel 12 (4) VOBK 2007 bezüglich des zu berücksichtigendes Vorbringens auf diesen verweist.

Mandatory VICO OP's Boards as of 1 January

 Key points

• “Accordingly, Boards may summon parties to oral proceedings by videoconference for a date before 1 April 2021 and may convert oral proceedings scheduled to take place on the premises before that date to oral proceedings by videoconference, even without requiring the parties' agreement to this format.” (link, para. 20 of the Notes in the proposal; note the discretion for the Boards)
• “From 1 January 2021 boards may conduct oral proceedings by VICO even without the agreement of the parties concerned,” (link)
• “The user community was invited to comment on the proposal [for new Article 15a RPBA] in an online user consultation from 13 to 27 November 2020. A total of 162 replies were received, 18 from various user groups and associations and 144 from individual respondents (patent attorneys, companies, other interested persons).”  (para. 10 of the proposal)
• The final proposal for new Article 15a RPBA is below and differs from the consultation version.

New Article 15a RPBA : Oral proceedings by videoconference 

(1) The Board may decide to hold oral proceedings pursuant to Article 116 EPC by videoconference if the Board considers it appropriate to do so, either upon request by a party or of its own motion. 

(2) Where oral proceedings are scheduled to be held on the premises of the European Patent Office, a party, representative or accompanying person may, upon request, be allowed to attend by videoconference. 

(3) The Chair in the particular appeal and, with the agreement of that Chair, any other member of the Board in the particular appeal may participate in the oral proceedings by videoconference. (link)

T 1604/16 - Appellate review of findings of fact (II)

 Key points

• The present Board in five-member composition thoroughly rebuts T 1418/17 about what is the standard of review of factual findings at the Boards of appeal. 
• “The [other] board in T 1418/17 held that a board should only overrule a finding of fact made by the department of first instance if that department's evaluation of the evidence had one of the following shortcomings: essential points had not been considered, irrelevant matters had been taken into consideration or illogical conclusions had been drawn”
• “The Board in the case in hand deems it necessary to consider whether, when reviewing the Opposition Division's finding of fact, it should limit itself to identifying whether or not one of the criteria set out in T 1418/17 has been met”
• “With respect to the criteria set out in T 1418/17, the Board notes that the principle of the free evaluation of evidence applies to all types of evidence adduced, including documentary evidence, expert opinions and statements made by the parties. It is the Board's view that [the principle of the free evaluation of evidence ] has no direct bearing on the extent of the boards' competence for reviewing decisions in general , and particularly findings of fact made by a department of first instance.” [note: contrary to the reasoning in T 1418/17] 
• “If the criteria set out in T 1418/17 were applied so broadly, this would amount to a considerable restriction of a board's competence. This kind of restriction may well be found in some national jurisdictions where the last judicial instance only reviews questions of law and the review of findings of fact is very limited. If there are several instances of judicial review, legislators might limit the second or further instance's power of review. However, there is no basis in the EPC or established case law for such a broad restriction of the boards' competence.”
• “ On the contrary, the boards have competence to review appealed decisions in full, including points of law and fact (see e.g. explanatory remarks to new paragraph 2 of Article 12 of the Rules of Procedure of the Boards of Appeal, OJ Suppl. 2/2020). This is in accordance with Article 6 of the European Convention on Human Rights, which stipulates that there must be at least one judicial instance that can review a case in full, i.e. the law and the facts, given that the boards of appeal are the only judicial body to review decisions by the departments of first instance of the European Patent Office (regarding Article 6 ECHR, see e.g. Guide on Article 6 of the European Convention on Human Rights, Council of Europe/European Court of Human Rights 2013, paragraph 84).” (emphasis added).
• This reasoning makes sense to me. It may be added that a Board of appeal comprises two technical members, such that the technical expertise of the first instance department is not a ground for deference to its factual findings.
• “In view of the above the Board in this case does not see any reason why it should limit its review of the Opposition Division's findings of fact made in the context of the public prior use by applying the criteria set out in decision T 1418/17”
  
  
• Turning to the evidence at hand: “Under these circumstances, the evidence produced is not enough to convince the Board that the ramp depicted in the photographs in E1/1 was made available to the public before the filing date of the patent, in particular on the day Ms M's car was delivered according to E1. Hence, the Opposition Division erred in concluding that the ramp shown in E1/1 formed part of the prior art.”
  
  
• On the hearing of witnesses in general, in particular the need for a 'direct impression': 
  “When hearing a witness, the competent body (here the Opposition Division) has a number of ways of scrutinising the reliability of the witness testimony (a summary is given in T 474/04, reasons 8). Issues such as whether the testimony of the witness is based on their own observations or on information from others, or whether the witness was able to observe what they claim to have observed can be addressed in the form of questions answered by the witness. The questions and answers are then reflected in the minutes. There are also issues concerning the credibility of the witness themselves, that is whether the witness is telling the truth. This depends not only on what the witness says, but also on their body language, facial expressions etc. during the hearing. The direct impression that the witness may give is a matter which can only be assessed by the competent body hearing the witness.

EPO Headnote

The boards have competence to review appealed decisions in full, including points of law and fact. This applies also to findings of fact of the department of first instance which are based, at least in part, on the evaluation of witness evidence obtained in the course of hearing a witness (reasons, point 3.1 and sub-points).

EPO T 1604/16  -  link

Summary of Facts and Submissions

I. The patent proprietor has appealed against the Opposition Division's decision, posted on 1 March 2016, that, account being taken of the amendments according to auxiliary request 5 then on file, European patent No. 2 293 755 and the invention to which it related met the requirements of the EPC.

II. The patent was opposed on the grounds of lack of novelty, lack of inventive step, insufficient disclosure and added subject-matter.

By letter dated 13 August 2012 the opponent dropped the objection based on the ground of added subject-matter.

III. The Opposition Division held that the ground for opposition of insufficient disclosure did not prejudice the maintenance of the patent as granted.

The Opposition Division found that the subject-matter of claim 1 of the patent as granted lacked novelty over a public prior use based on the witness evidence of Ms M taken before the Opposition Division and the following documents:

E1: Invoice No. 2730463 from the company MobiTEC Sonderfahrzeugtechnik to Ms [M], dated 4 July 2007

E1/1: Photo documentation of a VW Caddy, delivered to Ms [M]

T 1418/17 - Appellate review of findings of fact (I)

Key points

• This is an opposition appeal issued by a five-member Board i.e. in extended composition.
• It raises the fundamental issue of what the standard of appellate review is for facts.
• I wrote the summary below well before 11.12.2020, i.e. before  T1604/16 was issued (also by a five-member board) which thoroughly rebuts the present decision T 1418/17. At the outset: I consider the present decision T 1418/17 to be wrong although I can see why its holding is attractive for Boards.
• The EPC does not explicitly contain rule on the standard of review for findings of facts.
• From the RPBA Notes: "The Boards of Appeal constitute the first and final judicial instance in the procedures before the European Patent Office. In this capacity, they review appealed decisions on points of law and fact." (Explanatory Note to Art. 12(2) RPB 2020; link; emphasis added). I note that this remark was added in the second draft, after the online user consultation, to make clear the Boards also review on points of fact, see e.g. epi's response to the consultation).
• The present Board, in the translated headnote: “a board of appeal should only annul the evaluation of the evidence of a first-instance department and replace it with its own if [the first instance department] recognizably (i) has failed to address material considerations,  or (ii) has considered factors that are irrelevant to the case, or (iii) reveals a violation of the laws of thought, such as logical errors and contradictions in the reasoning” or there is a mistake in the application of the law (e.g. an incorrect standard of proof has been applied).
• So, if the OD considers fact X to be proven, the Board's review on points of fact is limited to a review for whether OD's finding of fact is tainted by any of the three mentioned errors, according to this Board. 
• According to the Board, the above follows from the ‘principle of free evaluation of evidence’ under the EPC. I note that at least Dutch civil procedural law has the same principle of free evaluation of evidence and an unlimited appellate review of facts and evidence.
• As a note, the principle of free evaluation of evidence means that there are no strict rules, e.g. that the testimony of three witnesses is binding evidence, as was the case in medieval law (Roman-canonical law).  “The [medieval] formal theory of evidence that grew out of this hierarchical evaluation [of evidence] left no option for the judge: [the judge] was required to be convinced after the designated number of witnesses had testified concordantly” (link). “The principle of free evaluation of the evidence by the judge generally dates from the French Revolution. The French introduced the concept of the judge’s conviction intime (inner, deep-seated conviction) in contrast to rules of formal evidence that prescribed exactly when the evidence amounted to proof” (link to https://www.britannica.com/topic/evidence-law)
• The Board, in the present case: “Nichts von dem [the indicated three possible errors] ist vorliegend erkennbar. Die Kammer erachtet die Entscheidung der ersten Instanz hinsichtlich der Frage der Offenkundigkeit der vorgebrachten offenkundigen Vorbenutzungen vielmehr als rechts- und logikfehlerfrei, so dass die Beweiswürdigung der Einspruchsabteilung nicht zu beanstanden ist.”
• This concerns the factual finding that a machine UWS 500 had been demonstrated at a trade exhibition before the priority date. However, the Board is still free to evaluate whether that machine took away the novelty of the claim. 
• “Anders als von der Einspruchsabteilung eingeschätzt, ist die Kammer daher der Auffassung, dass der Gegenstand des Anspruchs 9 des Hauptantrags von der vorgebrachten offenkundigen Vorbenutzung durch Ausstellung und Vorführung der "UWS 500" Maschine auf Messen neuheitsschädlich getroffen ist ”
  
  
• T 1418/17 hn.2 was already cited and followed by another Board in T 1057/15, r.2.4 for fact-finding by the OD after a witness hearing.

EPO Headnote (translation)
1. With regard to the determination of the relevant facts by the opposition division, it should be borne in mind that the principle of free evaluation of evidence applies to the European Patent Office, which must also have an impact on the review in appeal proceedings.

2. To the extent that there is no mistake in the application of the law (e.g. an incorrect standard of proof has been applied), a board of appeal should only annul the evidence of a first-instance department and replace it with its own if [the first instance department] recognizably

(i) has failed to address material considerations,  or 

(ii) has considered factors that are irrelevant to the case, or

(iii) reveals a violation of the laws of thought, such as logical errors and contradictions in the reasoning.

EPO Headnote
1. Hinsichtlich der von der Einspruchsabteilung vorgenommenen Feststellung der relevanten Fakten ist zu berücksichtigen, dass vor dem Europäischen Patentamt anerkanntermaßen der Grundsatz der freien Beweiswürdigung gilt, was auch Auswirkungen auf die Überprüfung im Beschwerdeverfahren haben muss.

2. Soweit kein Rechtsanwendungsfehler vorliegt (etwa ein falscher Beweismaßstab angewandt wurde), sollte eine Beschwerdekammer daher die Beweiswürdigung eines erstinstanzlichen Spruchkörpers nur aufheben und durch ihre eigene ersetzen, wenn diese erkennbar
(i) wesentliche Gesichtspunkte nicht berücksichtigt hat, oder
(ii) sachfremde Erwägungen mit einbezogen hat oder
(iii) einen Verstoß gegen die Denkgesetze, etwa logische Fehler und Widersprüche in der Begründung, erkennen lässt.


EPO T 1418/17 - link




1.3 Hinsichtlich der von der Einspruchsabteilung vorgenommenen Feststellung der relevanten Fakten ist zu berücksichtigen, dass vor dem Europäischen Patentamt anerkanntermaßen der Grundsatz der freien Beweiswürdigung gilt, vgl. G 3/97, Gründe Nr. 5, G 1/12 Gründe Nr. 31, was auch Auswirkungen auf die Überprüfung im Beschwerdeverfahren haben muss, vgl. T 1107/12, Gründe Nr. 1.2.2, T 621/14, Gründe Nr. 2.1. Soweit kein Rechtsanwendungsfehler vorliegt (etwa ein falscher Beweismaßstab angewandt wurde), sollte eine Beschwerdekammer daher die Beweiswürdigung eines erstinstanzlichen Spruchkörpers nur aufheben und durch ihre eigene ersetzen, wenn diese erkennbar

(i) wesentliche Gesichtspunkte nicht berücksichtigt hat (T 1553/07, Gründe Nr. 20), oder

(ii) sachfremde Erwägungen mit einbezogen hat (vgl. T 2565/11 Gründe Nr. 1.2.1, 1. Fall) oder

(iii) einen Verstoß gegen die Denkgesetze, etwa logische Fehler und Widersprüche in der Begründung, erkennen lässt (vgl. T 2565/11 Gründe Nr. 1.2.1, 2. Fall).

T 0844/18 - CRISPR Cas / Priority

 Key points

• The Board's written decision in the Crispr-cas case has been issued. The Board gives it publication code [D], interestingly enough. Still, a Press Communiqué was issued (here). The decision is also given a headnote.
• The Press Communiqué is, of course, no legal basis but gives a useful introduction to this decision, which seems useful as the file is > 46.000 pages as of yet. 
• The facts are basically that the patent is not novel or not inventive if the priority claim is not valid, the priority application was a US provisional application filed by inventors A and B jointly, the PCT application by the employer of A only, without any assignment of rights from A to B. 
• The Communiqué: “The first question addressed by the Board was whether entitlement to priority should be assessed by the EPO or rather in entitlement actions before national courts. The Board concluded that Article 87(1) EPC both empowered and obliged the EPO to assess the validity of a claim to priority.”
• The Board: “The position of the appellants [patentees] is that the EPO should not concern itself with the "who" issue when applying Article 87(1) EPC, they are content with the EPO assessing the "where", "what" and "when" issues. The Board disagrees with the appellants' position. The EPC clearly sets out a requirement that the EPO examines the "who" issue of priority entitlement.”
• The Communiqué: “The second question was how to interpret the expression ‘any person’ in Article  87(1) EPC. Under the established practice both at EPO and national level, a valid priority claim requires that all persons listed as applicants for the priority application are also listed as applicants for the subsequent application, allowance being made for successors in title. The Board confirmed this so-called ‘all applicants’ approach.”
• The Board: “The Board is of the same view; the ordinary meaning of this term [‘any person’] in all the language versions is ambiguous. The Board also finds of little assistance the context in which this term is used in the EPC and the Paris Convention.” (r.44)
• “if a group of persons decides together to carry out this act of filing, then they have decided to act as a unity for this purpose, thus implying that the "any person" is this group as such.” (r.50). 
• The Board: “the appellants are faced with over 100 years of consistent case law and practice adopting the "all applicants" approach that they need to show as incorrect. This is a considerable burden” (r.53). (also stating: “In general, the bar for overturning long established case law and practice should be a high one because of the disruptive effects a change may have.").
• The Board, unfortunately, does not identify any of the old court decisions specifically. “the Board has noted the following: very few cases appear to have addressed this issue, and these cases are very old, from the first thirty years of the twentieth century, or very recent, from the last fifteen years or so.” No details are given, only T 0788/05 is mentioned in the decision. Wieczorek p.146-147 refers to relevant old decision starting from KPA 25.10.1917, BPMZ 1917, p.120. As observed by Wieczorek, fn. 185 on p.147, the Ladas in his (American) handbook defended the 'each individual applicant approach'. The OD decision, para. 66.4.2 lists the old court decisions (same as given Wieczorek) as well as the newer decisions.
• The Board's analysis in r.68 regarding  Swiss judgement O2015_009 is remarkable; let me add that Judge Bremi was rapporteur in that Swiss case. 
• The group of 'all applicants' can exercise their priority right only jointly, r.82 implicitly.
•  The patentees had argued that with the 'all applicants' approach, one applicant can create a hostage situation. The Board: “An applicant can progress a patent application before the EPO without the active participation of the other applicants even though they are named in the application.” I'm not sure what the Board means, but the Request for Grant form must be signed by all applicants; R.41(2)(h) and GL A-III,4.2.2:  "If there is more than one applicant, each applicant or his representative must sign the request". 
  
  
• The Communiqué: “A third question concerned whether national law [...] governs the determination of ‘any person’ who has ‘duly filed’ under Article 87(1) EPC. On this point, the Board concluded that the Paris Convention was the law which determines who ‘any person’ is.”
•  The Board, r.116: "The Board thus finds that the "national law" that determines who "any person" is, is in this case, the Paris Convention."
• The decision is frankly confusing by identifying the Paris Convention as "national law" (quotation marks of the Board) while at the same time deciding that "the national law does not govern who is "any person"" according to the headnote.
• The Board, r.115: “The principle of "national treatment" is that a nation treats foreigners in the same way as it treats its own nationals. In the context of the EPC this means that applicants and patentees from non-member states are treated in the same way as applicants and patentees from member states. The appellants are mistaken when they consider this principle requires the EPO to treat applicants and patentees from non-member states in the same way as they would have been treated in their home country.” 
• The Board could have added that it interprets Article 2 Paris Convention. See e.g. also the dissertation of Prof. Schaafsma here (in Dutch). Prof. Schaasma shows that the principle also means that the lex loci protectionis applies. 
• The patentees argue that the missing applicant of the US provisional application was not an inventor of the subject-matter of the PCT application and that therefore this missing applicant somehow was not part of the group of “celui qui aura régulièrement fait le dépôt”, if I understand the decision correctly.
• The difficulty with patentee's argument is that term ‘régulièrement ’ in the phrase ‘régulièrement fait le dépôt’ (duly filed an application) is typically seen as pertaining to formalities requirements for patent applications only (Article 4A(3) PC), not to entitlement (Bodenhausen, Guide, p.36, also p.40)
• The Board turns to the question whether the applicant of the first filing must be entitled to the invention, in order to obtain the priority right. The Board in r.109 cites the travaux of the Paris Convention, meeting of 9 November 1880 to conclude that the Paris Convention “does not require that the "any person" is actually legally entitled to make the filing” (r.110).
• The Board backs this up with a complex argument that "the Paris Convention [is] an integral part of US law" (r.110), because "the Board concludes that the Paris Convention is part of the "supreme Law of the Land" in the US" (r.104). The Board concludes this from interpreting the text of the US Constitution in r.104. I'm surprised that the Board considers itself to be competent to opine on Article VI, clause 2 of the US Constitution in r.104. I'm also not sure how the entire argument about the US constitution fits in with the Board's statement in the headnote that "the national law does not govern who is "any person".
• Said minutes of 9 November 1880 can be found at the WIPO website at https://tind.wipo.int/record/30008?ln=en , page 60-62 of the PDF file. It appears that a text proposal of the Belgian delegate was accepted, however as amended on a proposal by the Swedish delegate to use 'celui qui aura  régulièrement fait ' instead of 'auteur'. The matter of entitlement was indeed discussed but in a nuanced way. Interestingly enough, the Belgian delegate inquired whether the term 'régulièrement' also encompassed the entitlement, but no clear answer seems to have been given by the other delegates ("M. DEMEUR (Belgique) demande si, dans cette phrase: celui qui aura regulièrement effectué le dépot" le mot "régulièrement" porte sur le fond et sur la forme''.).
• The Board: “Article 4A(1) and (2) Paris Convention (and the basically identical Article 87(1) and (2) EPC) do not refer to the "inventor" or the "applicant" for a patent application: they refer to a person who has carried out an act, that of filing a patent application. This is immediately determinable upon the date of the filing - it is the person or persons who carried out the act of filing. " (r.108).
• As a comment, in case of filing by paper, the purely factual natural person who deposits the envelope at the EPO is typically the postman. But I'm not sure if this Board really means that the postman is awarded the priority right, or the patent attorney assistant pressing the "send" button in EPO Online Filing Software. I also note that legal persons do not carry out any physical acts so are never "the person or persons who carried out the act of filing". 
  
  
• The Board: “In the present case the appellants chose the named applicants in a way that did not comply with the well-established practice of the EPO. It is not for the Board to repair such errors, omissions or deliberate choices of a party.” (r.16).
• “As argued by the respondents [opponents], it is this action which the Paris Convention seeks to facilitate, namely, using the legal concept of priority, applicants can be treated as if they had simultaneously filed the same patent application in a multiplicity of member states of the Paris Union. In 1883, when the Paris Convention was originally adopted, (and even today), actually to file the same patent application simultaneously around the world would have presented very considerable, if not insuperable, difficulties. The provisions of the Paris Convention thus certainly assist patent applicants and facilitate the filing of patents around the world, i.e. the object and purpose of the Paris Convention as acknowledged by all parties. The legal fiction of simultaneous filing establishes both substantive (same invention), and formal (same applicants) requirements for a priority right to be acknowledged.” (r.50)
• Summarizing priority as a "legal fiction of simultaneous filing" patent applications in multiple countries is a bit of a simplification in my view. For instance, the 20-year patent term does not run from the priority date. Which might be one of the main reasons for using priority in the first place, instead of filing a PCT application straightaway. 

EPO Headnote

i) The board is empowered to and must assess the validity of a priority right claim as required by Article 87(1) EPC,
ii) the board's interpretation of the expression "any person" in Article 87(1) EPC confirms the long-established "all applicants" or the "same applicants" approach,
iii) the national law does not govern who is "any person" as per Article 87(1) EPC, the Paris Convention determines who "any person" is.

EPO T 0844/18 - link

OD decision discussed here, OD decision text here.

decision text omitted

T 0517/17 - Appeal fee refund

 Key points

• There is as of yet no end to the case law about amended Rule 103.
• This Board disagrees with T 0073/17 and finds that for the partial refund of Rule 103(4)(c) EPC, it is enough for the appellant to announce that it will not attend the oral proceedings.
• “the board is aware that, [...]  it departs from an extensive obiter dictum set out in decision T 73/17 (Reasons, point 9.3). In that decision, the competent board, relying on document CA/80/19, maintained that new Rule 103(4)(c) EPC required an express withdrawal. Although the board referred to the case law according to which the announcement of non-attendance is considered to be an implicit withdrawal, it considered that this case law, even if it was correct, could not apply to Rule 103(4)(c) EPC. ”
• “However, this board holds that, if it is true that the express announcement of not attending arranged oral proceedings before the board is equivalent to a withdrawal of the request for them, this must be true and valid for all effects that the EPC and the case law attach to a withdrawal. It does not appear to be justified to qualify the express announcement as equivalent to a withdrawal for the purposes of the question of whether appointed oral proceedings shall take place, but as not equivalent for the purposes of the question of whether fees shall be refunded.”
• As a comment, let's see if the case law settles on a consensus or whether a referral to the Enlarged Board is necessary. 
• The present Board adds, somewhat mysteriously in my view: “Against this background, it is not necessary to assess whether CA/80/19 can constitute evidence for the intentions of the legislator. Nor has the board to decide whether it is possible or necessary to resort to the preparatory work associated with new Rule 103 EPC for the specific issue discussed here, considering the requirements laid down in Article 32 of the Vienna Convention on the Law of Treaties.” 

EPO T 0517/17 - refund appeal fee

https://www.epo.org/law-practice/case-law-appeals/recent/t170517eu1.html

decision text omitted

T 1914/15 - Facts and evidence

 Key points

• The Board applies the ‘new rule’ about the novelty of compounds based on (low levels of) impurities as given in T 1085/13.
• The Board also holds an argument of patentee about the technical effect in the context of inventive step inadmissible. 
• “ During the oral proceedings, the respondent [patentee] described a hypothetical "truly" comparative production example to corroborate the presence of [the technical effect of] a reduced metal corrosion ”
• “The assertion [of patentee] that metal corrosion could be reduced by starting from a composition in which the amounts of compounds of formulae (I) and (V) were both outside the scope of claim 1 and by reducing either of the two amounts to a value within the claimed range is an allegation of fact that can be proven or disproved by evidence.”
• As a comment, I think that this remark is quite important. In particular, there appears to be a fundamental relation between facts and evidence in legal proceedings: assertions that  “can be proven or disproved by evidence” are factual assertions; at the same time an asserted fact, if disputed by the other party, needs to be proven with evidence. See e.g. also the dissertation of R.H. De Bock, page 11 (in Dutch, "biedt een handvat voor..." on p.11).
• “The allegation of fact submitted by the respondent thus raised complex new issues which had not previously been addressed during the written proceedings and occurred at the latest possible state of the proceedings, namely at the oral proceedings. The discussion of these new issues at such a late stage of the proceedings would have been contrary to procedural economy.”

EPO T 1914/15 - link

4.3.3 The board accepts that the content of compounds of formulae (I) and (V) may be interpreted as amounts of impurities. However, it still disagrees with the appellant's conclusion. The board in this respect follows the rationale of decision T 1085/13 which states the following (point 3.7 of the reasons): "A claim defining a compound as having a certain purity ... lacks novelty over a prior-art disclosure describing the same compound only if the prior art discloses the claimed purity at least implicitly, for example by way of a method for preparing said compound, the method inevitably resulting in the purity as claimed. Such a claim, however, does not lack novelty if the disclosure of the prior art needs to be supplemented, for example by suitable (further) purification methods allowing the skilled person to arrive at the claimed purity."

T 1480/16 - Cancelling dependent and independent claims

Key points

• The Board concludes that cancelling the method claims in an auxiliary request is not considered as an amendment to the patentee's appeal case. Hence, AR-5 corresponding to AR-3 with the method claims deleted was admitted. The apparatus claim of AR-5 was also novel, unlike the apparatus claim of the main request, due to the added feature of that apparatus claim. 
• T 0995/18 confirmed this approach, concluding that cancelling a dependent claim is generally not to be considered as an amendment to the patentee’s appeal case, because it is comparable to the opponent giving up an attack, according to that Board.
•  In T 0482/19, the independent product claims were deleted keeping the method claims. This was found to be an amendment to the patentee's appeal case and that auxiliary request was not admitted.
• In T 1224/15 the dependent claim lacking basis was deleted in AR-3; this request was admitted as it did not give rise to new issues.
• I'm not sure if the case law is entirely consistent as of yet. 

Orientierungssatz:
Die Streichung der Verfahrensansprüche in Hilfsantrag 5 gegenüber dem mit der Beschwerdeerwiderung eingereichten Hilfsantrag 3 wird nicht als Änderung des Beschwerdevorbringens gesehen, da sich dadurch keine geänderte Sachlage ergibt (siehe Punkte 2.3 der Gründe).

EPO T 1480/16 -  https://www.epo.org/law-practice/case-law-appeals/recent/t161480du1.html 
 decision text omitted.

T 0084/17 - No need to discuss prima facie allowability

 Key points

• The Board has to decide on the admissibility of AR-1 which was not admitted by the OD.
• “The appellant [patentee] requested that this decision [of the OD] be overturned for improper exercise of discretion and further that auxiliary request 1 be admitted into the appeal proceedings as it was an appropriate response to the decision at least for the reason that the decision was based in part on the late filed documents D9, D10 and D11.” 
• “The appellant [patentee] in essence argued that the opposition division had exercised its discretion not to admit this and the other belated auxiliary requests not in accordance with the right principles because it only considered the timeliness of the filing of the auxiliary requests without also considering the substance of the amendments introduced. In this context, [patentee] referred to the (unpublished) decisions T 463/95, T 1485/08, T 544/12, T 2415/13 and T 129/12.”
• 
  
• This Board finds that the OD had exercised its discretion in a reasonable way. “the opposition division correctly stressed that the auxiliary requests had been filed very late without appropriate justification, although the underlying objections had been on file since the notice of opposition and their pertinence had been commented on in the annex to the summons. This conclusion is absolutely correct.” 
• “Moreover, contrary to the appellant's submissions, the opposition division did not merely consider the late filing but also took into account the substance of the amendments in the auxiliary requests. ” However, not the prima facie allowability but whether the amendments were foreseeable. “In particular, the board understands the reasons given in point 4 of the decision under appeal as the conclusion that during the oral proceedings the other parties could not be expected to deal with the restriction of the claimed subject-matter specifically proposed in auxiliary request 1. ” 
• The Board approves of this approach: “the opposition division had made clear that considering the unreasonable late filing of auxiliary request 1 combined with the not foreseeable amendments, the opponents could not have been expected to discuss the new requests. Under these circumstances, it is clear that even if the auxiliary request had been prima facie allowable, it would not have changed the division's discretionary decision. Thus, there was no need to further discuss prima facie allowability in the appealed decision.” 
  
  
• For a different approach, see T 0756/18 of Board 3.2.07, headnote and r.4 suggesting that the OD must examine whether the requests are prima facie (or clearly) allowable.

EPO Headnote

If the arguments in the appealed decision show that for the discretionary decision taken in the first instance some criteria weighed so heavily that other criteria cannot outweigh them, it is not always necessary that all criteria that could theoretically influence a discretionary decision concerning the admittance of a late filed request are discussed in the appealed decision (point 2.2.3)

If the need to file amended requests does not arise owing to the submission of additional documents that are merely confirming the arguments on file but had existed before, the filing of such additional documents cannot always justify the filing of new (belated) requests (point 2.3).

EPO T 0084/17 -  link

Decision text omitted.

T 0395/18 - Administering through the mother

 Key points

• Claim 1 is directed to: “1. A composition comprising a non-digestible oligosaccharide for use in decreasing or preventing an allergic reaction in a mammalian subject [i.e. a baby], wherein the composition is administered to a lactating, postpartum female [i.e. the baby's mother] who is breast-feeding the mammalian subject [baby] and wherein the non-digestible oligosaccharide comprises galacto-oligosaccharide.”
• The Board has no comments on the second medical use claim format for this claim wherein the active substance is supplied to the mother and the recited therapeutic effect occurs in the baby. “Claim 1 is drafted in the format foreseen by Article 54(5) EPC. Accordingly, attaining the claimed therapeutic effect is a functional technical feature characterising the claim.”
• The critical issue is sufficiency of disclosure. The Board admits the opponent's new submissions after the preliminary opinion. “The preliminary opinion given by the board in its communication is based essentially on facts and arguments presented by the parties in writing. Nonetheless, the communication crystallised for the first time what the board itself had deduced to be the essential elements of the lengthy arguments presented by the parties when discussing sufficiency of disclosure. In particular, the communication drew attention to some paragraphs of the opposed patent discussing the principle underlying the claimed invention which convey the impression that, at the filing date, the skilled person would have assumed any galacto-, fructo- or acidic oligosaccharide to be suitable, individually, to induce the alleged therapeutic effect (paragraphs [0032], [0033], [0092] and [0102]). Furthermore, the communication drew attention to the results of the tests described in paragraph [0102] of the patent. It also clearly put the burden of proof regarding sufficiency on the respondent [opponent], thus contradicting the position taken by the opposition division.”
• On the substance of sufficiency, the Board finds that handbook D13, submitted by patentee, throws doubt on the alleged effect. “The mixed results throw serious doubts as to whether the claimed therapeutic treatment can be carried out, all the more so when considering that the principle underlying the invention - to administer oligosaccharides to a lactating mother in order to achieve a pharmacological effect in a child - departs considerably and constitutes a radical development from the teachings in the common general knowledge reflected in D13, which teaches administering the oligosaccharides directly to the child.” 
• AR-7 wherein the composition "comprises galacto-oligosaccharide, fructo-oligosaccharide and acidic oligosaccharide" is found to be sufficiently disclosed.

EPO T 0395/18 - link

decision text omitted.

T 0478/17 - Article 123(2) objection as fact

 Key points

• The opponent raises an article 123(2) objection against dependent claims 2-4 in its Statement of grounds. In the first instance proceedings, "the only objection under Article 123(2) EPC was raised in the oral proceedings against dependent claims 12-18 of the main request. "
• “Pursuant to Article 12(4) RPBA 2007, the board has the power to hold inadmissible, inter alia, facts and evidence which could have been presented or were not admitted in the first-instance proceedings even if they were presented with the statement of grounds of appeal and the requirements of Article 12(2) RPBA 2007 are met.”
• Article 12(4) RPBA 2007 does not simply say 'objections', just as Article 114 EPC does not refer to late-filed objections. 
• The present Board: “Dependent claims 12-18 of the main request define the further ingredients and their amounts. Claims 2-4 of the main request, on the other hand, concern crystalline properties of the hemitartrate salt of claim 1 of the main request. Thus, the objection of added subject-matter against claims 2-4 of the main request is based on facts different from the ones presented in the context of claims 12-18 of the main request before the opposition division. Thus, the objection under Article 123(2) EPC against claims 2-4 of the main request is neither based on nor derivable from the objection raised before the opposition division.” 
• “It constitutes a new allegation of fact raised for the first time in the statement of grounds of appeal (paragraph 2).”
  
  
• The Board also acknowledges the inventive step for a salt form of a medical compound.
• “The board distinguishes the present case from the situation at issue in decision T 777/08. This decision dealt with an arbitrary selection of any crystalline form and considered it obvious that any arbitrary crystalline form had better filterability and drying characteristics than the corresponding amorphous form. This is entirely different from the present case. The present case is not about the selection of any crystalline form but about the selection of one specific salt, namely eliglustat hemitartrate, in which at least 70% by weight of the salt is crystalline. Furthermore, the selection of this specific salt is not arbitrary. Rather, this salt has unexpected properties, namely an improved (reduced) hygroscopicity and an improved chemical stability.”

EPO T 0478/17 - link

decision text omitted.

T 0264/17 - Inactive substance for 2nd medical use

Key points

• The claim is directed to an inert lubricant to replace the synovial fluid in diseased joints. The Board judges that this is a proper second medical use claim and that the lubricant is a 'substance or composition'  in the sense of  Article 54(4) (first medical use) and Art.54(5) EPC even though the lubricant is inert in the human body. 
• " Synovial fluid,  is a viscous, non-Newtonian fluid found in the cavities of synovial joints. With its egg white–like consistency, the [principal role of synovial fluid is to reduce friction between the articular cartilage of synovial joints during movement. " (Wikipedia)
• The present Board applies the test of T2003/08 that " it is decisive for determining whether or not a "substance" or "composition" is used in a treatment to establish (a) the means by which the therapeutic effect is achieved and (b) whether that which achieves the therapeutic effect is a chemical entity or composition of chemical entities." 
• The Board in T2003/08 added that “A ‘device’ would not normally be denoted as a chemical entity”, referring to a stent or catather as example 
• I'm not sure why this would be the case. A device consists of molecules, and a stent may even contain 'special' molecules such as taxol, e.g. T583/11). 
• So presumably criterion A excludes medical use claims based on medical devices and criterion B excludes medical use claims based on inert components such as fillers and excipients.
• The present Board: “Im vorliegenden Fall ist die Kammer der Überzeugung, dass die beanspruchten Schmiermittel einen "Stoff" bzw. ein "Stoffgemisch" im Sinne des Artikels 54(5) EPÜ darstellen, und zwar aus folgenden Gründen: Die beanspruchten perfluorierten Polyether sind Flüssigkeiten, die weder vor noch nach dem Einbringen in den Körper von sich aus eine definierte Form einnehmen. Die therapeutische Wirkung entsteht nicht durch eine vorhandene oder sich im Körper bildende dreidimensionale Form, sondern durch die Substanz an sich. Es kann daher vorliegend nicht von einer Vorrichtung oder einer Apparatur gesprochen werden.”. 
• “Darüber hinaus erfüllen die beanspruchten Schmierstoffe auch die Kriterien, die in der von der Prüfungsabteilung angeführten Entscheidung T 2003/08 entwickelt wurden, unabhängig davon, ob man sie als "Aktivstoffe" im klassischen Sinn bezeichnen möchte oder nicht.”.
• “Der therapeutische Effekt wird auch unzweifelhaft von einer chemischen Zusammensetzung verursacht, nämlich von den in Anspruch definierten perfluorierten Polyethern. Ob diese im klassischen Sinn als "Aktivstoffe" bezeichnet werden oder nicht, ist dabei nebensächlich. Kriterium (b) ist somit ebenfalls erfüllt.”

EPO T 0264/17 - https://www.epo.org/law-practice/case-law-appeals/recent/t170264du1.html

decision text omitted.

T 0886/15 - Technical considerations for extracting features

 Key points

• The Board examines Article 123(2) in opposition.
• The added features have no literal basis in the original application documents. The question is whether the embodiment of Figure 23 provides basis. Figure 23 teaches more features, some of them being omitted from the claim. The typical test in such cases is 'inextricably linked' (CLBA II.E.1.9). 
• The Board: “ The selection of some features from a group of features originally disclosed in combination is allowable under Article 123(2) EPC if the selected and omitted features are neither structurally nor functionally linked. It is only when these conditions are met that the intermediate generalisation resulting from the selection can be considered allowable.” 
• “ In the absence, in the drawing and the corresponding portion of the description, of any indication as to the effects resulting from [the feature now recited in isolation in claim 1], it is impossible to recognise whether the conditions for selecting a feature from its context, recalled above, are fulfilled.”
• “A further consequence is that it is impossible for the skilled person to recognise what purpose is meant to be achieved by the selected features [i.e. now added in claim 1] in the context of the invention. They thus cannot be considered to be the deliberate result of technical considerations directed to the solution of the technical problem involved (cf. T 398/00, point 3.4). In the absence of any identified technical purpose justifying the features in question, their selection in claim 1 is purely arbitrary. Their introduction into claim 1 of the main request results only from the intention of defining an artificial difference with the prior art.”
• The claim does not comply with Article 123(2).
• As a comment, if amendments are based on technical considerations 'post hoc' this can of course also be a ground why the amendments do not comply with Article 123(2). 

EPO T 0886/15 -  link

decision text omitted.

T 2208/15 - Essential features lacking

 Key points

• This is an examination appeal about video compression. Claim 1 specifies: “a downsampling ratio that is determined in accordance with the size of the amount of transition inside the frame”.
• The Board's conclusion is that “to solve the technical problem which the application is concerned with, it is essential to increase the downsampling when the size of the amount of transition increases”
• “The feature of claim 1 stated above[...]  encompasses both the above-described case, where the downsampling ratio increases when the amount of transition increases, and the opposite case, where the downsampling ratio increases when the amount of transition decreases. ”
• Therefore, claim 1 does not comply with Art. 84 (EPC 1973) (EP entry in 2009).
• The Board infers the “technical problem which the application is concerned with” from various passages of the description.
• Hence, it does not seem to matter if the broader feature provides a technical effect and/or solves an objective technical problem, but whether the specific problems discussed in the application are solved by the recited claim features.
• Presumably, the application discloses the broader feature under Article 123(2) EPC. We don't know if the broader feature provides for an inventive step under Article 56 EPC. No prior art is discussed in the Board's decision.

EPO T 2208/15 - link

3.2 However, in the board's view the above-mentioned amended feature of claim 1 ("a downsampling ratio that is determined in accordance with the size of the amount of transition inside the frame") gives rise to a new objection under Article 84 EPC 1973 for the reasons set out below.

3.3 According to the established case law of the boards of appeal, Article 84 EPC 1973 has to be interpreted as meaning not only that a claim must be comprehensible from a technical point of view, but also that it must define the object of the invention clearly, that is to say indicate all the essential features thereof. All features which are necessary for solving the technical problem with which the application is concerned have to be regarded as essential features (see Case Law, II.A.3.2).

T 1801/17 - No obligation to attend

 Key points

• The opponent-respondent disputes the admissibility of a request filed with the Statement of grounds. 
• Turning to the auxiliary request filed with the statement of grounds: the Opposition Division found in the impugned decision an unallowable intermediate generalisation [...]. The Board notes that this objection was first raised by the opponent during the oral proceedings before the Opposition Division. It also formed the basis for revoking the contested patent [...] The Board considers the filing of the auxiliary request with the statement of grounds, in which the missing feature was added, as a legitimate response. The respondent-opponent submits that the patent proprietor might have been able to file this request at the end of the oral proceedings before the Opposition Division, had they attended. It would follow that the proprietor could have presented the request in first instance in the sense of Article 12(4) RPBA 2007 but they did not by choosing not to attend the oral proceedings. ”
• “The Board however notes that there is no legal obligation to attend the oral proceedings. In the present case, the proprietor dealt with all the outstanding objections during the written proceedings, including filing auxiliary requests aimed at overcoming the added subject-matter ones known at the time. This is a legitimate way of defending oneself against an opposition and does not suggest any intention to avoid a ruling on the matter at first instance. By proceeding in this way the proprietor did not forfeit the right to defend itself in appeal against objections that were only raised during oral proceedings.”
• For a Board finding an (equitable?) obligation to attend oral proceedings before the examining division, see T1500/10.
• The request filed with the SoG was resubmitted as AR-4a with a small amendment and was subsequently made the main request.
• The Board: “As auxiliary request filed with the statement of grounds, its admissibility is at the discretion of the Board under Article 12(4) RPBA. As auxiliary request 4a of 24 May 2019, filed before oral proceedings had been arranged, its admissibility is at the discretion of the Board under Article 13(1) and 12(4) RPBA 2007. As main request filed on 17 April 2020 after the arrangement of oral proceedings, its admissibility is subject to the Board's discretion under Article 13(3) RPBA 2007.”
• The admissibility of the request is examined cumulatively under said provisions.
• 
  

EPO T 1801/17 -  link

3. Main request - Admissibility

The respondent-opponent objects to the admissibility of the main request. This issue hinges also on the admissibility of other previously filed requests as follows.

3.1 The appellant-proprietor filed an auxiliary request with the statement of grounds. The later filed auxiliary request 4a on 24 May 2019 was based on that auxiliary request, and was amended only to adapt one term of claim 1 to a corrected translation. With letter of 17 April 2020, the appellant-proprietor made that auxiliary request 4a its main request.

As auxiliary request filed with the statement of grounds, its admissibility is at the discretion of the Board under Article 12(4) RPBA. As auxiliary request 4a of 24 May 2019, filed before oral proceedings had been arranged, its admissibility is at the discretion of the Board under Article 13(1) and 12(4) RPBA 2007. As main request filed on 17 April 2020 after arrangement of oral proceedings, its admissibility is subject to the Board's discretion under Article 13(3) RPBA 2007.

3.2 Turning to the auxiliary request filed with the statement of grounds: the Opposition Division found in the impugned decision an unallowable intermediate generalisation in the omission of the feature of original description paragraph [0033] that the guide wall has the shape of a plate curved in the shape of a circular arc, see section 2.3. The Board notes that this objection was first raised by the opponent during the oral proceedings before the Opposition Division. It also formed the basis for revoking the contested patent, see written decision sections 2.3 and AUXILIARY REQUESTS I-VI. The Board considers the filing of the auxiliary request with the statement of grounds, in which the missing feature was added, as a legitimate response.

The respondent-opponent submits that the patent proprietor might have been able to file this request at the end of the oral proceedings before the Opposition Division, had they attended. It would follow that the proprietor could have presented the request in first instance in the sense of Article 12(4) RPBA 2007 but they did not by choosing not to attend the oral proceedings. The Board however notes that there is no legal obligation to attend the oral proceedings. In the present case, the proprietor dealt with all the outstanding objections during the written proceedings, including filing auxiliary requests aimed at overcoming the added subject-matter ones known at the time. This is a legitimate way of defending oneself against an opposition and does not suggest any intention to avoid a ruling on the matter at first instance. By proceeding in this way the proprietor did not forfeit the right to defend itself in appeal against objections that were only raised during oral proceedings.

Under the above circumstances the Board considers the auxiliary request filed with the statement of grounds to be a normal and legitimate reaction of the losing patent proprietor at their first available opportunity, see CLBA V.A.4.11.3.g), and thus admissible under Article 12(4) RPBA 2007.