T 2193/17 - Steam ironing device with non-adjustable temperature

 Key points

• From the present Board decision, I learned how my own steam ironing device works. Well, perhaps not quite, but that may be because the decision in this opposition case only deals with Art.100(c) / Article 123(2). 
• First, the background, in the patent application: “It is a well known fact that an ironing temperature, i.e. the temperature to which an item that is being ironed is heated during the ironing process, is to be chosen in dependence of the type of fabric of the item in order to obtain optimal ironing results. For example, in case the item is made of cotton, the ironing temperature may be relatively high, e.g. around 175°C, whereas when the item to be ironed is made of polyamide or elastane, the ironing temperature should be much lower, e.g. about 95°C, so as to avoid scorching of the item.”
• To cite a news article of 1 November 2011, in machine translation: “The peculiarity of the [new] PerfectCare steam generator is that it is no longer fitted with a thermostat and so you can switch from a delicate fabric to a thick cotton without having to adjust anything. ... Optimal Temp technology is an innovation from Philips. It allows you to iron any type of fabric without having to worry about the temperature. ...  A lot was said about this machine when it was released, in particular that it was "intelligent", able to recognize the type of fabric she was ironing and adapt accordingly. When I spoke about it with one of his competitors, he told me that he had completely dissected the plant to understand how it works and that if it was able to work on any type of tissue it is because it was set to a single temperature that all fabrics can withstand.”
• The patent application “The ironing device according to the present invention is based on research that, quite surprisingly and contrary to popular belief, has revealed that satisfactory ironing results for diverse fabric types may be achieved at universal temperature and steam settings. To this end, the ironing device according to the present invention combines a relatively low, manually non-adjustable soleplate temperature with a relatively high minimum steam rate”.
• Claim 1 as granted specifies essentially that the steam ironing device has a soleplate with non-adjustable temperature and a steam generator with a controller to control steam settings to "a non-user-adjustable [steam] temperature in the range of 100-150°C at a time-averaged steam rate of at least 50 grams/minute".
• The Board, on the gist of the Article 123(2) issue: “contrary to the opinion of the [patentee], it is evident that the sentence [in the application as filed stating that] '... the steam settings, e.g. the steam rate and steam temperature, may also be non-user adjustable' [] is simply not a direct and unambiguous disclosure of just the steam temperature being non-user-adjustable.” (emphasis added) (with extensive further analysis in the complete decision of the Board).
• The Board: “A skilled person reading the application would indeed notice that user-adjustability of steam temperature is never disclosed. However, this does not result in their necessarily regarding the steam temperature as therefore being non-user-adjustable. The non-user-adjustability is not a direct and unambiguous consequence of the lack of a disclosure of user-adjustability. Rather, neither is disclosed, even if the scope of the disclosure covers both possibilities. Consequently, the requisite direct and unambiguous disclosure of non-user-adjustable steam temperature is not disclosed in the application as filed.”
• It seems that three German "Abzweigung" utility models were filed during the opposition proceedings. 
• The utility models were filed during the opposition appeal stage, and after an ex parte injunction had been issued against an (alleged) infringer in Germany and a few months before the intervention by said (alleged) infringer; the intervention was subsequently withdrawn.
• The intervention, made during the opposition appeal, was withdrawn. Nevertheless, the former intervener is indicated on the first page of the decision as Party as of right. I'm not sure if this is correct.

T 2193/17 - link after jump (not the decision text); as well as paragraphs from the PCT application explaining the invention:

J 0007/20 - Rule 142(1)(c) and heavy snow

 Key points

• This is a sad case. The petitioner for review was not able to attend the oral proceedings before the Board because all flights were cancelled due to a snowstorm. "Oral proceedings [before the Enlarged Board] were scheduled to start at 10:30 hours on [Monday] 4 February 2019. The representative did not appear. In the course of the day, beginning at 10:22 hours, employees of his association informed the Enlarged Board, by telefax and telephone, that he [i.e. the representative] would not attend due to cancelled flights; there was however no request for postponement of the hearing. 
  The Chair opened the oral proceedings at 12:30 hours and closed them at 12:48 hours, after having announced the unanimous rejection of the petition as clearly inadmissible (for want of a Rule 106 EPC objection)." [see here; R7/18]
  
• " Later that day [04.02.2019], the representative informed the Enlarged Board by telephone that he had tried to contact Mr. [C] by telephone the whole day, and had also sent him an email, unaware of Mr. [C]'s recent retirement from the duty as the Enlarged Board's registrar [note: on 31.01.2019]. The representative's office then forwarded to the Enlarged Board the email, originally sent at 7:53 hours, which indicated his non-attendance at oral proceedings due to cancelled flights, and his wish to have the hearing rescheduled." 
• A more detailed review of the facts can be found here. There is certainly a practice point to be learnt from the case. 
• Now turning to the present appeal: " After the Enlarged Board had dispatched its decision rejecting the petition for review in writing, the proprietor directed itself to the Legal Division and "request[ed] interruption of the proceedings" with effect from the day prior to the hearing before the Enlarged Board" 
• The Legal Division refused the request. The requester appeals.
• The Legal Board: "If this appeal were successful, the decision of the Enlarged Board would have no legal effect, as it would have been handed down while the proceedings were interrupted (cf. T 1389/18). " 
• As a comment, T1389/18 decided so for a decision of an opposition division, but indeed the same principle applies to a decision of the Enlarged Board on petitions for review, as held in the present case, and by implication also to decisions of the Boards of Appeal.
• The requester, formerly petitioner for review, is the patentee. The Legal Board, on the status of the opponents in the present appeal: "thus, the appeal proceedings may adversely affect the legal position of the opponents. They are therefore considered parties to these proceedings (cf. J 12/19, reasons 2.2.3 and 2.3).' 
• The question is whether the undisputed facts qualify as legal incapacity of the representative in the sense of Rule 142(1)(c) EPC. 
• " Under the established case law of the Boards of Appeal, legal incapacity of the representative relates to the mental state and rationality of the representative. The mental state from which such incapacity can be derived has to be such that the representative is so totally or nearly totally unable to take rational decisions that all its professional duties, and not just an isolated case, are affected. To assess the representative's mental state, a reliable medical opinion is indispensable "
• The Legal Board confirms that the list of events in Rule 142(1)(c) is exhaustive.
• "the Legal Board agrees with opponent 1 that absurd cases could follow in case unfortunate, unforeseen events would generally constitute legal incapacity and trigger the radical mechanism of Rule 142(1)(c) EPC. The example of a representative temporarily caught in a traffic jam is not unthinkable." 
• "the Legal Board can but firmly note that the mental state of a representative and the total or near total inability to take rational decisions are something completely different to the external, practical and one-off kind of events - inter alia heavy snow, cancelled flights and failed communication - adduced by the proprietor as hindering the representative in the current case. These events do not constitute "legal incapacity of the representative"."  
• Finally, "there is no lack of procedural provisions in the EPC which would prompt application of Article 125 EPC, as suggested by the proprietor." 

T 2608/17 - Abbreviated list does not work

 Key points

•  The application as filed contains the sentence: “In embodiments, the edge 40 may be a distance, d, between 0, 0.05, 0.1, 0.15, 0.2 and 0.3, 0.35, 0.4mm below the shaving plane A, while still reducing the amount of discomfort that may be caused to a user of the razor cartridge through skin bulge following the last blade 64.”
• Does this provide basis for the claimed range of " between 0.2mm and 0.4mm below the shaving plane A"? 
• " The respondent [patentee] argued that paragraph [0013] of the application as published, clearly disclosed fifteen equally preferred ranges, presented in a concise, abbreviated form. According to the respondent, the skilled person would directly and unambiguously derive the ranges from all the possible combinations of lower and upper limits given in the second sentence of paragraph [0013], in particular in view of the use of the phrase "between...and...". The skilled person would not understand the sentence as disclosing no particular combinations at all, as this would render the sentence meaningless" 
  
• "The Board, however, follows the arguments of the appellants [opponents] that the formulation of the sentence is ambiguous and no unequivocal correlation between any particular values is given, so that the combination of the values 0.2 mm and 0.4 mm to create a range is an arbitrary combination which was not directly and unambiguously disclosed." 
• " Even if the argument of the respondent [patentee] were to be followed, that the phrase "between...and.." indicates that a disclosure of various ranges was intended, the application as originally filed contains no pointer to any specific "pairs" of numbers to create particular ranges. This does not mean that the skilled person finds the sentence of paragraph [0013] completely meaningless, as argued by the respondent, but rather that the sentence does not unambiguously disclose any particular ranges." 
• The Board: " Even if it were to be considered that the skilled person generally reads with "a mind willing to understand", this cannot override the requirements of the 'gold standard' (G2 /10) that the claimed subject-matter be directly and unambiguously derivable from the application documents as originally filed. This is, however, not the case as discussed " 

T 2608/17 - link after jump

T 2378/18 - Decision according to the state of the file

 Key points

•  The applicant requests a decision according to the state of the file, the applicant gets a decision according to the state of the file. Even though that sometimes seems the view of the EPO, the Board sees a substantial procedural violation in this case- correct in my view.
• " In response to the summons to oral proceedings, by letter dated 23 March 2018 the applicant filed amended claims 1 to 4 according to a new main request and new auxiliary requests 1 and 2, which replaced the requests then on file. "  
• " On 16 April 2018, the first examiner and the applicant's representative held a consultation by telephone." 
• " By letter dated 19 April 2018, the applicant withdrew its request for oral proceedings and requested a "Written Decision on the basis of the prosecution history as it currently stands"." 
• " By a further communication dated 23 April 2018, a copy of the result of the telephone consultation with the date "16.04.2018" was sent to the applicant. The examiner had expressed the opinion that the subject-matter of claim 1 of the main request and of auxiliary requests 1 and 2, filed by letter dated 23 March 2018, did not meet the requirements of Article 123(2) EPC and that the subject-matter of claim 1 of the main request did not involve an inventive step under Article 56 EPC in view of document D7."
• The refusal decision consisted of Form 2061 merely referring to the "result of the phone consultation" of 23.04.2018.
• The Board: " communications referred to in a decision "according to the state of the file" on EPO Form 2061 must contain a fully reasoned exposition of the examining division's objections to the current application text and refutation of any rebuttal by the applicant (see for instance T 583/04" 
• " the use of standard Form 2061 is only appropriate where the examining division has fully expressed and reasoned its objections to the current requests in one or more preceding communications, taking into account all the arguments put forward by the applicant and doing so in a manner which does not leave it to the board and the appellant to speculate as to which of the reasons given in preceding communications might be essential to the decision to refuse the application" 
•  " the examining division issued the communication of 23 April 2018 with the copy of the result of the telephone consultation without inviting the applicant to file its observations, and on 26 April 2018, i.e. only three days later, it issued the contested decision according to the state of the file. It follows that the decision under appeal in the case in hand is based on grounds on which the applicant had no opportunity to comment. The applicant's right to be heard enshrined in Article 113(1) EPC has therefore been infringed. " 
• The decision under appeal is set aside, the case is remitted, and the appeal fee is reimbursed.
• As a comment, the Examining Division could have held the oral proceedings. Even if the applicant would have stayed away, the Examining Division could likely have refused the application after consideration of the amended claims ( G4/92 has no bearing on ex parte proceedings).

T 2378/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t182378eu1.html

Reasons for the Decision

1. The appeal is admissible.

2. Even though the appellant has not challenged the examining division's decision on the grounds of a substantial procedural violation, the board is entitled to examine whether or not any such violation occurred during the examination proceedings (see for instance decision T 405/12, point 3 of the Reasons).

T 0420/19 - Art.53(b) and (not) Rule 28(2)

 Key points

• In this opposition appeal, claim 6 is directed to “ A barley plant, or part thereof, wherein the barley plant carries a mutation in the gene encoding methionine-S-methyltransferase(MMT) that causes a total loss of MMT function".” The opponent is a public interest group.
• The opponent submitted that “the claimed barley plants fell under the exception to patentability defined in Article 53(b) EPC because they were the direct product of an essentially biological process.” The filing date is in 2009.
• The Board notes that in G 3/19, the EBA further decided that "the new interpretation of Article 53(b) EPC given in this opinion has no retroactive effect on European patents containing such claims which were granted before 1 July 2017, when Rule 28(2) EPC entered into force, or on pending European patent applications seeking protection for such claims which were filed before that date".
• The Board, after some further remarks on this legal issue, notes that: “Since the patent was granted before 1 July 2017 (see section III above), the subject-matter of claim 6 (and dependent claims 7 to 9 and 16) is not excepted from patentability in view of Article 53(b) EPC as interpreted by the decisions of the EBA G 2/12 and G 3/12.”
•  As a comment, the Board does not comment on Rule 28(2) as the legal basis for the revocation. The Administrative Council decided that Rule 28(2) EPC “shall apply to European patent applications filed on or after this date [01.07.2017], as well as to European patent applications and European patents pending at that time”, Article 3 of the Decision  of the Administrative Council 29.06.2017, OJ 2017 A56.
•  The Enlarged Board in G 3/19 has not said expressly that Rule 28(2) is invalid, neither that said Article 3 of the AC Decision is invalid. However, from the present decision, it seems clear that at least said Article 3 is vacated. The present decision does not discuss Rule 28(2) as such. 
•  See also here.
•    Further on sufficiency: “The opposition division considered that the only methods given in the patent to obtain the claimed mutants was mutagenesis and subsequent screening, thus relying on identification of a chance event. In view of the number of plants that would have to be screened to arrive at the claimed invention, it was undue burden to identify further mutants in addition to those deposited pursuant to Rule 31(1)(a) EPC, been identified by this method”
•  “The board considers that the mere fact that mutagenesis is a random process and that large numbers of mutant barley plants might have to be screened does not, in the present case, represent an undue burden the skilled person. The board therefore does not agree with the opposition division that the fact that mutagenesis, due to reliance on mutations at "random" locations in the genome, necessarily represents an undue burden for the skilled person. …  In the present case, the invention is reproducible without undue burden because there is evidence that the chance event can be identified frequently enough to guarantee success.”
• As to inventive step: “ In the absence of a readily available library of insertional mutants of barley it would have been necessary to use a screening procedure for detecting mutant barley grains lacking MMT activity. No such assay is disclosed in either document D1 or D2. The need to develop such an assay would have dissuaded the skilled person from arbitrarily choosing barley when attempting to solve the technical problem.”

T 0659/19 - Unambiguously deduced vs. at least hinted at

 Key points

•  The Board, on inventive step: “However, an alleged technical effect invoked subsequently during the proceedings is not to be taken into consideration when formulating the problem to be solved, if the effect cannot be unambiguously deduced by the skilled person from the original application in the light of the closest prior art or if it is not at least hinted at in that application” [referring to CLBA]
• As a comment, I would like to recall how different the two alternatives are:
•  " an alleged technical effect invoked subsequently during the proceedings is not to be taken into consideration when formulating the problem to be solved, if the effect cannot be unambiguously deduced by the skilled person from the original application in the light of the closest prior art" 
• vs. " an alleged technical effect invoked subsequently during the proceedings is not to be taken into consideration when formulating the problem to be solved, if the effect ... is not at least hinted at in [the application as filed]".
• 
  

T 0318/14 - The details of double patenting

 Key points

•  This is the follow up to G 4/19 about Double Patenting.
• The subject-matter of the claims is the same as that of a granted European patent.
• The Technical Board of Appeal, still in the appeal against a refusal decision: “ in its decision G 4/19 the Enlarged Board of Appeal did not address the requirements relating to the "same applicant" and the "same application"* since this issue was not considered to be covered by the referral, see G 4/19, points 7 and 16).” *: probably "same invention" was intended.
• The TBA: “Moreover, no request for limitation or revocation (Article 105a EPC) is pending in respect of [the already granted] European patent”
• This is quite interesting.
• “The patentee of European patent No. 2251021 was Nestec S.A. The same company filed European patent application No. 10718590.2 under consideration in the present appeal. Nestec S.A. merged with Société des Produits Nestlé S.A. with effect from 27 May 2019. As a result of the merger, Nestec S.A. ceased to exist and was removed from the companies register. By way of universal succession, Société des Produits Nestlé S.A. became the proprietor of European patent No. 2251021 and of the contested European patent application No. 10718590.2. Thus, the requirement of "same applicant" is fulfilled.”
• In the EPO register, the applicant is as of date shown as Nestle SA and the patentee as Nestec S.A.

T 1241/18 - It is not the person skilled in the art who selects the CPA

 Key points

•  “The selection of an appropriate starting point in the assessment of inventive step is an objective exercise carried out by the deciding body applying the established criteria. ...The board therefore concurs with the findings in T 1450/16 (reasons 2.1.4) and T 0855/15 (reasons 8.2) to the extent that it is not the person skilled in the art that selects a suitable starting point, and in particular the closest prior art document, in the assessment of inventive step. Against this background, in the board's view, the question of who is the competent skilled person is irrelevant at least as regards the selection of a suitable document as a starting point in the assessment of inventive step, because it is not the notional skilled person within the meaning of Article 56 EPC that selects the appropriate starting point.”
• The Board in fact carefully discusses who the skilled person is in a later step of the problem-solution approach. 
• The Board, after carefully reviewing the content of D7: “Although document D7 and the subject-matter of claim 1 are described in terms of different types of power transmission systems (AC, DC), they are thus both concerned with the same subject-matter and serve the same purpose, which clearly qualifies D7 as a suitable starting point in the assessment of inventive step of the subject-matter of claim 1.”
• “The board has therefore arrived at the conclusion that document D7 is a suitable starting point in the assessment of inventive step and the appellant's sole objection under Articles 100(a) and 56 EPC based on this document thus had to be taken into account in the appeal procedure.”
• The Board then formulates the objective technical problem and, before turning to obviousness, discusses who the skilled person is.
• This seems a logical order of steps to me.
• “In view of the objective technical problem, the board considers the competent skilled person in the relevant technical field to be an expert in power transmission systems, who typically is a graduate engineer in electrical engineering or physics with focus on protection systems such as circuit breakers, who has several years of practical experience as a developer in industry. The competent skilled person consequently not only has a broad knowledge in AC power transmission systems but also in (HV)DC transmission systems including circuit breakers for these types of applications. ...  In this context, it is further to be noted that the technical fields of circuit breakers for AC and DC systems are so closely related that a clear boundary between the respective competent notional skilled persons within the meaning of Article 56 EPC cannot be clearly drawn anyway.”
• The Board finds claim 1 to be obvious.

T 2619/17 - Late-filed-objection is late filed

 Key points

•  The present decision confirms a trend of a few other cases of this year.
• The opponent appellant files D21 with the Statement of grounds (under RPBA 2007). The patentee objects to the admissibility for the first time during the oral proceedings. The opponent request to not admit this objection. 
• The patentee had commented on D21 in the written proceedings without contesting admissibility.
• The Board: “ Die Beschwerdegegnerin konnte keinerlei Gründe aufzeigen, dass außer­gewöhnliche Umstände vorlagen, die einen solch verspäteten Antrag rechtfertigen könnten. Das Fehlen von außergewöhnlichen Umständen wurde im Übrigen von der Beschwerdegegnerin explizit bestätigt. Die Kammer hat daher entschieden, den Antrag auf Nichtzulassung der D21 nicht zu berücksichtigen (Artikel 13 (2) VOBK 2020).”
• D21 is admitted, found to be novelty-destroying and the patent is revoked.
• see e.g. also T 0847/20 r.3.1.

T 1264/19 - Kalanchoe cut flowers (and plausibility)

 Key points

Claim 1 in this opposition appeal “ is a product claim directed to a "bouquet of flowers". The bouquet comprises - one or more cut flowers of the genus Kalanchoe having a stem length of at least 35 cm, and - one or more cut flowers belonging to a genus different from Kalanchoe”; the claim recites further functional features.
• Claim 1 of AR-1 is directed to “Use of one or more cut flowers belonging to the genus Kalanchoe having a stem length of at least 35 cm, for prolonging the longevity of one or more cut flowers belonging to a genus different from Kalanchoe.”
• Key questions include inventive step over D3, whether priority is valid so that D3 forms prior art, and sufficiency of disclosure.
• As to the validity of the priority, the point is illustrative as practice point: “The feature "stem length of 35 cm" is disclosed in the priority document on page 4, lines 12 to 15: "Especially varieties that have a mid-size or large stem, i.e. having a stem length of at least 20 cm, preferably at least 35 cm, more preferably at least 45 cm and up to 60 cm or even more, with sufficient stem strength are particularly suitable as cut flowers ...".” 
• The Board finds that the claim without the feature of “sufficient stem strength” is not supported by the cited paragraph of the priority document.
• As to priority, “The appellant  [patentee] further argued that stem strength was an intrinsic feature of a cut flower which was only required for the flowers to stand upright, i.e. for aesthetic reasons. This feature, therefore, was non-technical in relation to the invention, and did not solve the technical problem of longevity. Hence, it should not be considered when assessing the validity of the claimed priority.”
• The Board considers the feature to be technical and adds that “The issue of whether a technical feature contributes to achieving the technical effect of the invention is not relevant for assessing whether or not priority is validly claimed. Here, the relevant criterion is that the "subsequent application is filed in respect of the same subject-matter": such a criterion does not require considerations which belong to the realm of inventive step. The board concludes that the feature "at least 35 cm" is only disclosed in combination with the feature "sufficient stem strength" in the priority document.”
• The argument based on the sufficient stem strength being an intrinsic property, is dismissed for lack of evidence.
• Hence, priority is invalid.
• D3 therefore forms prior art and teaches cut Kalanchoe flowers of "selected ethylene-resistant varieties" having an "antiseptic effect [which] keeps the water clean"; the example varieties are the same as in the patent. Document D3 states that "the elegant flowering stems can be arranged in colourful bouquets" and proposes to "[u]se them also in mixed bouquets".
• The claimed subject-matter differs from the mixed bouquets of cut flowers disclosed in document D3 in that the stem length of the Kalanchoe cut flowers is at least 35 cm and in that cut flowers which are not of the genus Kalanchoe are present in the mixed bouquet.
• Patentee seems to have argued for inventive step mainly based on the feature specifying the stem length. “The only other evidence with regard to a specific effect of a stem length of at least 35 cm of a Kalanchoe was submitted by the appellant [patentee] in the form of document D32. The document, which is not comprised in the state of the art [i.e. post published evidence], discloses that: "having a stem length of up to 15 cm, no such [antifouling] effect was observed. For cut Kalanchoes with a stem of 35 cm we surprisingly observed such effect. This made us to check such effect on different lengths, and it was observed that below 35 cm, the effect was less pronounced, whereas above said length the effect even increased".”
• Turning to the plausibility issue (or closely related issue), the Board: “However, while the objective technical problem does not have to be explicitly disclosed in the application as filed, it must at least be foreshadowed therein (see also decision T 377/14, point 2.1.5, referring to decision T 344/89, point 5.3.1). [emphasis added] Since the patent itself does not disclose a particular effect for a stem length of at least 35 cm, it is not possible to rely on the latter to formulate the objective technical problem. Document D32 cannot influence this finding, not only because it is a post-published document, but also because the effect in question was not disclosed in the application as filed.”
• I recall that there is also some case law saying that the patent should indicate the effect, but not that a specific feature provides the effect.
• “Accordingly, the objective technical problem can be formulated as the provision of an alternative mixed bouquet of cut flowers including Kalanchoe.” The claim is found to lack inventive step.


• For use claim 1 of AR-1: “The opposition division held that the patent did not sufficiently disclose the claimed invention for two reasons. ... the opposition division concluded that "the patent does not make credible that all species of Kalanchoe are suitable to prolong longevity of flowers belonging to a genus different from Kalanchoe, let alone that they may achieve such an effect at any number of flowers in the bouquet and for any genus of the different flowers".
• In the appeal, the respondent [opponent] endorsed both objections of the opposition division, but they have not provided evidence and reasons in support of the objections either. Their arguments therefore do not go beyond unsubstantiated allegations.
• The Board: “ the opposition division formulated the requirement that the patent should disclose either clear and unambiguous proof that an effect (here: "prolonging the longevity of one or more cut flowers belonging to a genus different from Kalanchoe") was obtained or whether attaining this effect was "credible". In doing so, however, the opposition division has followed the wrong principles for assessing compliance with the requirements of Article 83 EPC. Indeed, for sufficiency of disclosure to be denied, serious doubts need to be identified which are substantiated by verifiable facts (see Case Law of the Boards of Appeal of the EPO, 9th edition, 2019, II.C.7.1.4). The same conclusion applies to the second objection of the opposition division.”. [emphasis added]
• In the recent referral G 2/21, T116/18, the TBA wrote; “While the fact that an effect is part of the problem to be solved or expressed in the claim at issue dictates which provision of the EPC is applicable (G 1/03 [], it does not - at least not in the board's view - have an impact on the considerations applying to the above issue [i.e. plausibility and post-publshed evidence]. Therefore, not only decisions dealing with this issue under Article(s) 100(a) and/or 56 EPC but also those dealing with this issue under Article(s) 100(b) and/or 83 EPC are mentioned below.”
• The Board finds AR-1 to be sufficiently disclosed.
• “The opposition division did not formulate opinions on novelty and inventive step of the subject-matter of auxiliary request 1 (identical to auxiliary request 9 in the opposition proceedings). The board therefore finds that special reasons present themselves to remit the case to the opposition division for further prosecution (Article 11 RPBA).”
• The above appears to be the entire reasoning for departing from the main rule of Article 11 RPBA of no remittal.  The Board does not indicate that it would need to consider more than D3 already on file and studied in detail by it in the present decision.

T 0394/18 - (II) The limiting effect of the CPA

 Key points

• This case also deals with an inventive step attack of the opponent which starts with a document D2 that is not the CPA according to the Board. 
• The Board on inventive step, in translation: “If a claim relates to a method, the usage characteristic is a functional method characteristic which is comparable to the other characteristics of the method. The purpose of the method according to claim 1, namely for transferring an article in a transport system of a packaging plant [D2 is about a different type of plant, not for packaging but for manufacturing products], defines the specific use of the method, additional steps being required which are not implicitly or inherently contained in the other steps defined in the claim and without which the claimed method would not achieve the stated aim. In this respect the stated use represents a real technical limitation of the method and the claimed method must be used in this way ” (referring to  T1931/14)
• D2 is about a method similar (or identical to) the active step recited in the claim, but not in a packaging plant. The Board: “The Board notes that if one takes as the closest prior art a method for transferring an article in a transport system of a certain plant, such as a factory or production plant, [i.e. but not a packaging plant as in claim 1] the person skilled in the art always will remain, even with a further development, with a similar generic method and therefore also a method for transferring an article in a transport system of the selected particular installation, such as a factory or production installation, but he would not come to a method for transferring an article in a transport system of a packaging installation.”
• “With the selection of E2 as the starting point for the assessment of inventive step, the opponent has actually also defined the framework for the further development of the method disclosed in E2, namely a further development within the same category, i.e. the transfer of an article in a transport system of a factory or production facility. A change from the deliberately chosen genus to another non-chosen genus during further development could then only be viewed as a result of an ex post facto analysis”
• As a comment, I think this should properly be treated as a factual issue, capable of evidence by the parties. For instance, an opponent may show (with proper evidence) in (other cases) that there is just one technical field of household appliances (e.g. with common players, common industry journals and trade fairs) such that the skilled person routinely applies innovations from dishwashers to fridges (e.g. if the innovation pertains to the front door, see e.g. T0624/06). On the other hand, it may still be possible to properly start from a document having the same purpose and in the present case, cite D2 as a secondary document.

Text and link after the jump.

T 1302/16 - Art.17(2) RPBA

 Key points

•  “The board issued a summons to oral proceedings to be held on 7 December 2021, followed by a communication pursuant to Article 17(2) RPBA 2020.” (link)
• I'm unsure if this is the same communication as under Art. 15(1) RPBA 2020 (the fourth to sixth sentence) or if the reference to Art. 17(2) means that it is a different kind of communication.  
• The communication seems to indicate that it triggered the time limit of Rule 103(3)(a).
• As a comment, I think it is a bit unfortunate drafting choice that Art.15(1) RPBA 2020 discusses both the summons (first to third sentence) and the preliminary opinion (the fourth to sixth sentence).

T 1302/16 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t161302eu1.html

decision text omitted.

T 0394/18 - (I) The one month period under Rule 103(4)(c)

 Key points

•  The opponent/appellant withdraws its request for oral proceedings and the scheduled oral proceedings are cancelled The Board does not give a 25% refund of the appeal fee.
• The Board, in translation: “However, this withdrawal does not lead to a partial reimbursement of the appeal fee under Rule 103(4)(c) EPC, since it was declared less than one month before the date for the oral proceedings set for 23 November 2021.”
• The above sentence is remarkable because  Rule 103(4)(c) reads: “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 ... . ”
• In the case at hand, the withdrawal was also well more than one month after the Communication under Article 15(1) RPBA.
• 
  

T 0394/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t180394du1.html

Beide Parteien beantragten zunächst hilfsweise die Anberaumung einer mündlichen Verhandlung.

V. Mit einer Mitteilung nach Artikel 15 (1) VOBK 2020 vom 10. Mai 2021 teilte die Kammer den Parteien das Ergebnis ihrer vorläufigen Beurteilung der Sach- und Rechtlage mit, derzufolge die Beschwerde der Einsprechenden zurückzuweisen sein dürfte, während die Beschwerde der Patentinhaberin stattgegeben sein dürfte, so dass das Streitpatent in der erteilten Fassung aufrechterhalten werden könnte.

VI. Mit Schriftsatz vom 18. August 2021 legte die Einsprechende weitere Argumente gegen die erfinderische Tätigkeit des Gegenstandes des Anspruchs 1 des Patents in der erteilten Fassung vor.

VII. Mit Schriftsatz vom 4. November 2021 nahm die Einsprechende ihren Antrag auf mündlichen Verhandlung zurück.

VIII. Die Kammer hob daraufhin den Termin zur mündlichen Verhandlung auf und entschied im schriftlichen Verfahren.

IX. Anspruch 1 des Patents in der erteilten Fassung lautet wie folgt:

[]

X. Der Wortlaut von Ansprüchen der Hilfsanträge ist angesichts der getroffenen Entscheidung nicht relevant.

XI. Das entscheidungserhebliche Vorbringen der Parteien wird im Detail in den Entscheidungsgründen diskutiert.

Entscheidungsgründe

1. Entscheidung im schriftlichen Verfahren

Die vorliegende Entscheidung ergeht im schriftlichen Verfahren ohne mündliche Verhandlung gemäß Artikel 12 (8) VOBK 2020.

T 0245/18 - Art. 15a RPBA compatible with the EPC

 Key points

•  Oral proceedings took place on 21.05.2021 in this case, without the consent of the appellant.
• The Board did not announce a decision at the end of the oral proceedings and issued the decision in writing on 29.10.2021, i.e. one day after the reasons of G 1/21 were published. Thereby the Board applied Article 15(9)(b) RPBA 2020.
• The Board adds a headnote that it applied new Art. 15(9) RPBA 2020 in view of pending referral G 1/21.
• The Board, in translation: “The board then decided not to issue a decision on the matter before the Enlarged Board of Appeal had decided in proceedings G1 / 21 and set a date for sending the written reasons for the decision on 30 June  2021 - later extended in accordance with Article 15 (9) RPBA 2020 to 30 October 2021.”
• The Board, on new Art. 15a RPBA: “The dispute is therefore limited to the purely legal question of whether a video conference hearing is an oral hearing within the meaning of Article 116 EPC and whether it is possible to grant a fair hearing within the meaning of Article 113 EPC. This has been expressed through the change in the rules of procedure (see Article 15 (a) RPBA 2020). The board does not share the view that this provision is incompatible with higher-ranking law of the European Patent Convention. It was confirmed in this respect by the recent decision of the Enlarged Board of Appeal in case G1 / 21, to whose paragraphs 27, 30, 40 and 43, in particular, reference is made.”
• G 1/21 did not expressly comment on Art. 15a RPBA.
• The Board: “In summary, a final decision could be issued in the present case and it was not necessary to re-enter the oral hearing, since the decision of the Enlarged Board of Appeal in case G1 / 21 basically confirmed the legal view of the board and also because the factors applied by the board in its exercise of discretion within the framework of 15 (a) RPBA correspond to those which the Enlarged Board of Appeal has now also considered relevant in the aforementioned decision (see paragraphs 44 to 51).”

T 0245/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t180245du1.html

decision text omitted.

T 0519/21 - Conclusory and insufficient reasoning by ED

 Key points

•  This is an appeal against a refusal decision. 
• “Point 1.1 of the impugned decision states: "Claims 1 and 5 relate to a method for mapping a body organ. This is presentation of information as such that falls under the exclusion from patentability (Article 52(2)(d) and (3) EPC)."” That's all for Art. 52 in the appealed decision.
  
• “The board finds that the objection raised in point 1.1 lacks reasoning. The first sentence therein paraphrases the first line of claims 1 and 5 (in the version filed by the appellant with the statement setting out the grounds of appeal). The second sentence therein ends by expressing the fact that presentation of information as such falls under the exclusion from patentability. The only part linking the claimed subject-matter and this exclusion is the statement "This is". However, simply stating that the claimed subject-matter is a presentation of information as such is a legal conclusion that is not supported by any reasoning.” Moreover, the issue is not trivial because the step " step of "displaying (106) the 3D map" of the claim may imply technical means.
• This is a substantial procedural violation.
• The novelty objection involved also a substantial procedural violation: “the objection of lack of novelty as raised in the impugned decision referred to passages of document D2 which were clearly different to the passages referred to in the corresponding objection raised in the communication annexed to the summons”, further in view of the minutes of the oral proceedings.
• The case is remitted and the appeal fee is reimbursed.

T 0519/21 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t210519eu1.html

Reasons for the Decision

1. The appeal is admissible.

2. Main request - objection under Article 52(2)(d) and (3) EPC

2.1 Rule 111(2) EPC provides that appealable decisions are to be reasoned. It is established case law that inadequate reasoning constitutes a substantial procedural violation (see Case Law of the Boards of Appeal of the European Patent Office, 9th edition 2019 ("Case Law"), V.A.9.5.9).

2.2 Point 1.1 of the impugned decision states: "Claims 1 and 5 relate to a method for mapping a body organ. This is presentation of information as such that falls under the exclusion from patentability (Article 52(2)(d) and (3) EPC)."

No further statements in respect of this objection are made.

T 0961/17 - (II) Claim interpretation

 Key points

• For novelty over a public prior use, the critical issue is what the term “push-pull-turn hose” in the claim means. The patentee argued that “The devices described in documents B1 to B4 comprise air push rods. Such rods do not qualify as hoses.” The opponent disagreed.
• The Board: “ The patent does not provide a definition for this expression.” The Board considers the OED dictionary and para. [0010] of the patent in suit. Further, “It is uncontested that the air push rod (document B2, page 6: Luftschiebestange) of the device sold by the respondent [opponent] is suitable for pulling, pushing and turning the packer in domestic pipes.”
• “The board is well aware that the concepts "hose" and "rods" are not interchangeable and that there are rods that cannot reasonably be called hoses and vice versa. However, the question to be answered by the board is not whether and to what extent the concepts of "hose" and "rod" are interchangeable. The question to be answered is whether the object referred to as an "air push rod" (Luftschiebestange) in document B2 qualifies as a PPTH within the meaning of claim 1 or, to put it another way, whether it falls within the scope of the expression PPTH. ”
• “what the general public would have understood by "hose" is irrelevant for the question at issue. ”
• “The arguments [of patentee] that even a child would be able to distinguish a hose from a rod and that Franklin D. Roosevelt expected to be understood when referring to a hose in one of his speeches are both based on the observation that there is some sort of intuitive understanding of what a hose is. However, this sort of intuitive concept or archetype is not decisive when dealing with patent claims because the purpose of such claims is to precisely define what is claimed in an objective way and not to provide some intuitive mental picture of what is referred to. To put it another way, the literary genre of patent claims is different to the literary genres of political speeches and children's books, and so are the conventions that need to be observed therein.”
• The Board, still: “The very core of the invention appears to lie in the discovery that the devices of the state of the art, which the inventor had purchased, could be improved by using elements of greater flexibility (such as the hoses mentioned in paragraphs [0055] and [0056] of the patent) than the known air push rods. In such a situation, it is necessary to carefully define the distinguishing feature(s). It is not sufficient to rely on using a concept ("hose") which may evoke certain associations in the general public (such as the typical flexibility of a garden hose) but which does not bear closer scrutiny because there are very different types of hoses, not all of which correspond to the stereotype.” (emphasis added)
• “The appellant also relied on the CPC classes, according to which hoses (class F16L11/00) are part of the general class of pipes (F16L) but form a considerable technical field in themselves. However, these observations are without relevance for the question to be decided by the board. The CPC classes are the result of a historical process. They provide a possible way of classifying technical objects, but they are in no way unique or normative. Therefore, as a rule, the fact that a given object is (or is not) part of a given class does not make it possible to conclude that it cannot be part of another, distinct class.”
• The Board, in conclusion: “None of the appellant's [patentees] arguments was found persuasive. Therefore, the board maintained its provisional opinion that the air push rod of the prior use qualifies as a PPTH within the meaning of claim 1.”
• As a comment, G 3/14, r. 55 can be cited: “For example the lack of clarity of a claim may have a profound effect on the outcome of the grounds for opposition according to ... (ii) Article 100(a) EPC / novelty []”

https://www.epo.org/law-practice/case-law-appeals/recent/t170961eu1.html

4.3 Feature 1-6: "push-pull-turn hose" (PPTH)

The patent does not provide a definition for this

expression.

The OED defines the word "hose" as "a flexible tube or pipe for the conveyance of water or other liquid to a place where it is wanted". The term "hose" as such does not allow conclusions to be drawn on the level of flexibility of the object designated as such. Some hoses are extremely flexible (e.g. fabric fire hoses), whereas others may be quite rigid (e.g. steel-reinforced hydraulic hoses).

A relevant piece of information regarding the PPTH is found in paragraph [0010] of the patent:

"... The flexible but stable push-pull-turn hose provides for a tool to push and position the bladder arrangement effectively. The flexibility of the push-pull-turn hose allows the push-pull-turn hose to pass through narrow and bended [sic] pipe and its stability allows it to transmit sufficient push- and rotation force to the bladder arrangement."

Thus, a PPTH is a flexible tube or pipe sufficiently flexible to pass through pipe bends (i.e. completely inflexible hoses are excluded) and sufficiently rigid to transmit forces both along the longitudinal axis of the hose (push-pull) and in a direction of rotation around that axis (turn).

5. Alleged public prior uses

In point 13 of the decision under appeal, the opposition examined the alleged public prior uses. In its annex to the summons to oral proceedings before the opposition division, the opposition division noted that several of the alleged prior uses were substantiated but not adequately proven and that it was necessary to hear the witness Mr Bichler in this respect. The witness was heard at the oral proceedings (see document WAB). Subsequent to this hearing, the opposition division concluded that the prior uses had been proven beyond any reasonable doubt (point 13.9, last paragraph, of the decision under appeal).

It is uncontested that the opponent had sold devices for installing a liner in a pipe to Svensk Röranalys before the priority date. However, there were two main points of contention, namely (1) whether it was proven beyond reasonable doubt that the devices sold had the features described in documents B1 to B4 and (2) whether these devices anticipated the subject-matter of claim 1.

T 1233/17 - No costs order

 Key points

•  “the respondent requested the board to award its costs to the appellant [i.e. to order the appellant to pay the costs of the respondent]. It gave the reasons that follow: ... The appellant announced that it would not take part in the oral proceedings only after the EPO organised the required interpretation, and the respondent's representative had conducted a test call in order to prepare the videoconference. By failing to respond to the board's preliminary view and informing of its non-attendance to the oral proceedings at such a late stage, the appellant forced the respondent to perform a considerable amount of unnecessary preparatory work.”
   
• The Board does not award the costs: “Following the principle of party's disposition, it is a party's right to request oral proceedings, and to maintain its request for as long as it suits its case. A party is also free to waive that right at any point of the proceedings.
• “Interpretation is paid by the users' fees, and should be demanded responsibly. The EPC foresees however no consequence if these resources are claimed, but remain unused. The respondent incurred in any case no direct costs in this respect.
• “Lastly, the respondent has not carried out any work or made expenses which went beyond what would have been required if oral proceedings had taken place. This is the key point under Articles 104(1) EPC and 16 RPBA 2020.
• As a comment, an important relevant fact may have been that the oral proceedings scheduled for 05.10.2021 were cancelled on 27.09.2021, so probably the respondent had not yet begun their intensive substantive preparatory work for the oral proceedings

T 1233/17

https://www.epo.org/law-practice/case-law-appeals/recent/t171233eu1.html

decision text omited.

T 3272/19 - Art.12(4)(s.1) RPBA, unless clause

 Key points

•  This decision was published already in March 2021 but it still warrants writing a blog post. 
• Art. 12(4) RPBA 2020 applies as to the temporal scope (notice of appeal filed 18.12.2019, statement of grounds filed 18.02.2020).
• The Board: “Although D9a and D13 were cited in the contested decision [], these documents were undoubtedly filed after the nine months deadline pursuant to Article 99(1) EPC (i.e. they were late-filed). However, the admittance of these documents, which was not decided upon in the contested decision, was requested by the respondent. The appellant explicitly indicated at the oral proceedings before the Board that they had no objection against the admittance of D9a and D13 into the proceedings. Further considering that ... the Board finds it appropriate to exercise its discretion pursuant to Article 12(4) RPBA 2020 by admitting D9a and D13 into the proceedings.”.
• Now, the point of this blog post: are D9a and D13 subject to Art. 12(4)? 
• Let's be precise, so the question is whether their filing falls under “such amendment” as defined therein which “may be admitted only at the discretion of the Board” in the sense of Art.12(4)(s.2), which is the legal basis invoked by the Board. 
• The requirements for being “such amendment” are defined in Art. 12(4)(s.1) as:  “(i) Any part of a party’s appeal case which does not meet the requirements in paragraph 2 is to be regarded as an amendment, (ii) unless the party demonstrates that this part was admissibly raised (iii) and maintained in the proceedings leading to the decision under appeal” (roman numerals added). The question in the present case is whether the “unless clause” applies. Because the documents evidently were “maintained in the proceedings leading to the decision under appeal” (they were cited in the decision of the OD), the question is whether they were “admissibly raised ... in the proceedings leading to the decision under appeal”. 
• The Board observes that D9a and D13 were filed after the expiration of the nine-month opposition period, namely on 02.05.2019 leading to this remark of the Board: "these documents were undoubtedly filed after the nine months deadline pursuant to Article 99( 1) EPC (i.e. they were late-filed). "
• Here there are two remarkable things: (i) as far as I know, not every document that the opponent submits before the OD after the nine-month opposition period is automatically and always inadmissible, so I don't understand what the Board means by stating that the documents were "late-filed" only in view of them being filed after the expiration of the opposition period, and if that "late-filed" is the same as not admissibly raised ... in the proceedings leading to the decision under appeal and (ii) the documents at issue were filed by the patentee (letter) (in their written submissions).
• The documents were admitted, so the matter of the precise legal basis for admitting them is not dispositive, but it seems unfortunate that one of the very first decisions to apply the new "first level of convergence" that was introduced by Art. 12(4) RPBA 2020 does not seem to provide a helpful example of how to apply the new provision.
• A petition for review is pending (as R 9/21) but does not seem to concern the above aspect of the decision.

T 3272/19 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t193272eu1.html

1.2 Documents D9a and D13

Although D9a and D13 were cited in the contested decision (section 6 of the Facts and Submissions), these documents were undoubtedly filed after the nine months deadline pursuant to Article 99(1) EPC (i.e. they were late-filed). However, the admittance of these documents, which was not decided upon in the contested decision, was requested by the respondent. The appellant explicitly indicated at the oral proceedings before the Board that they had no objection against the admittance of D9a and D13 into the proceedings. Further considering that:

- D9a was relied upon by both parties, in particular during the oral proceedings, who both indicated that the disclosure of D9a - in English - was equivalent to the one of D9 - in German -;

- D13 was already filed with letter of 2 May 2019 during the opposition proceedings, in support of then pending auxiliary request 4 (now auxiliary request 5), but did not need to be dealt with in view of the positive decision of the opposition division regarding the then valid main request.

the Board finds it appropriate to exercise its discretion pursuant to Article 12(4) RPBA 2020 by admitting D9a and D13 into the proceedings.

T 3272/19 (II) - Request for correction of the minutes

 Key points

•  This is the 2nd decision of the Board in this case, this time concerning the request for correction of the minutes. A petition for review is pending and likely the requested correction could help the patentee/respondent in appeal/petitioner for review with the petition for review.
• “With letter of 10 June 2021 the Respondent/Patent Proprietor requested that the minutes of the oral proceedings held on 11 February 2021 be corrected because they did not correctly reflect a part of the oral proceedings. In particular, it was requested that the statement "The Chairman informed the parties of the preliminary opinion of the Board that the conclusion to be drawn with regard to the main request would apply mutatis mutandis to auxiliary requests 1 to 4. The parties agreed on the preliminary opinion of the Board." be replaced by "The Chairman asked the parties to confirm whether their arguments in relation to Auxiliary Requests 1 to 4 were the same as for the Main Request with respect to novelty over D9. The parties confirmed that their arguments for Auxiliary Requests 1 to 4 were the same."” 
• The Board: “As indicated in the Board's communication dated 14 July 2021, on the basis of its own notes and recollection of the oral proceedings, the Board confirms that the minutes correctly reflect the part of the oral proceedings referred to in the Respondent's request for correction. While this reason alone could be sufficient to refuse the request, ... ”
• “ in view of the fact that in the declaration of Mr. [X] [that] it is considered "non-sensical that the Respondent-Proprietor would agree that the conclusion to be drawn with regard to the Main Request would apply mutatis mutandis to Auxiliary Requests 1, 2 and 4" [] the Board carefully considered whether there were objective reasons for the Board to exclude that such an agreement would be given. However, as indicated in the Board's communication of 14 July 2021, the Board considers it not to be the case for the following reasons.” (detailed reasons then follow)
• The Board: “As an aside it is noted that there appears to be no compelling reasons why the minutes of the oral proceedings were contested so long after they had been received by the parties (about three and a half months). In particular, should the Respondent's representative have considered that these minutes did not reflect what had happened during the oral proceedings, a prompt request of correction at a point in time in which the recollection of all participants was still much fresher in mind would have seemed appropriate.

T 3272/19

https://www.epo.org/law-practice/case-law-appeals/recent/t193272eu2.html

Reasons for the Decision

1. As indicated in the Board's communication dated 14 July 2021, on the basis of its own notes and recollection of the oral proceedings, the Board confirms that the minutes correctly reflect the part of the oral proceedings referred to in the Respondent's request for correction.

2. While this reason alone could be sufficient to refuse the request, in view of the fact that in the declaration of Mr. Walsh it is considered "non-sensical that the Respondent-Proprietor would agree that the conclusion to be drawn with regard to the Main Request would apply mutatis mutandis to Auxiliary Requests 1, 2 and 4" (point 25 of the declaration, first two lines after subpoint iv.), the Board carefully considered whether there were objective reasons for the Board to exclude that such an agreement would be given. However, as indicated in the Board's communication of 14 July 2021, the Board considers it not to be the case for the following reasons.

2.1 In the Board's view, it was made clear during the whole proceedings that, in view of decision G 2/88 (OJ EPO, 1990, 93), the crucial point for the decision regarding novelty of the main request over D9 was whether or not the feature "high Tg" specified in operative claim 1 was a feature related to a specific use of the compositions defined in said claim 1 (i.e. leading to a new application), whereby the use mentioned in the claim did not appear to be distinguishable from the ones disclosed in the examples of D9 but rather appeared to constitute a property of said composition itself. Indeed, this was identified in section 7.4.1 of the Board's communication dated 14 August 2020 (preliminary opinion of the case sent in preparation of the oral proceedings). In the following section of that communication, it was further indicated that an additional argument of the Respondent regarding the feature "high Tg" did not appear convincing (section 7.4.2). Further down in the communication, it was also pointed out that no additional arguments were put forward by the Respondent in respect of inter alia auxiliary request 1 (sections 9 and 9.2) so that the same issues as for the main request were also relevant for auxiliary request 1, this in spite of the fact that the amendments made were said to appear to address the issue of the definition of the feature "high Tg" (section 9.3).

T 0961/17 - (I) Offer to demonstrate

Key points

•  The Board, in this opposition appeal
•  “The appellant's [patentee's] offer to carry out a demonstration during the oral proceedings comparing a hydraulic hose as PPTH [pull-push-turn hose] according to the solution of the patent and an air push rod allegedly corresponding to prior art solutions in support of its oral submissions constitutes an amendment to the appellant's case but not a request for taking evidence under Article 117 EPC. In fact, the appellant clarified that the air push rod they intended to demonstrate during the oral proceedings had recently been bought and was thus neither the object of the alleged prior use nor was it otherwise state of the art.”
• “In application of Article 13(2) RPBA 2020, which applies in the present case in view of Articles 24(1) and 25(1) and (3) RPBA 2020, the demonstration can be taken into account because there are exceptional circumstances justifying its admittance: the demonstration constitutes a legitimate reaction to the board's preliminary opinion expressed in the communication pursuant to Article 15(1) RPBA 2020, in particular regarding the board's provisional interpretation of the term "push-pull-turn hose".”
• It Board may be correct that the request to demonstrate a hydraulic hose during the oral proceedings is an amendment of the appeal case in the sense of Art.13(2), and more generally would be a case amendment (e.g. when requested already with the SoG). However, for this status of case amendment it is not relevant in my view whether the request constitutes a request for the taking of evidence under Art. 117(2) EPC.  
• In my view, the "demonstration" can not be anything else than evidence under Art. 117 EPC, which I assume is the same as evidence in the sense of the RPBA.
• The debate was about the meaning of the term "pull-push-turn hose" in the claim of the patent. Generally, if claim interpretation is treated as a factual issue (and not merely a legal issue), it must be open to the giving of evidence by the parties (in m view). 

T 0961/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t170961eu1.html

2. Request to exclude documents D9 to D17 from the appeal proceedings

Documents D9 to D17 were filed during the opposition period. Therefore, the opposition division had no discretion not to admit these documents into the proceedings, nor is there any legal basis for the board to exclude them from the proceedings. The question of whether the respondent's objections based on these documents are sufficiently substantiated has no bearing on the admissibility of these documents.

T 0878/16 - Resubmitting claims

 Key points

•  This is an appeal against a refusal. The applicant files amended claims with the SoG and tries hard to get them admitted. The case is a bit unusual in that the applicant tries to revert to the penultimate version of the claims pending before the ED.
• “The appellant justified the filing of the new main request as follows ... : "During prosecution of the present application, the Examining Division allowed only the bare minimum of procedural space, comprising the EESR, a single examination report and summons to Oral Proceedings. The decision to refuse the present application is based on several alleged deficiencies. In view of the quite considerable changes in the claims of September 15, 2015 that were discussed at the Oral Proceedings, relative to the version of October 16, 2012. However, that previous version of October 16, 2012, is now used as a basis for the present appeal. To address objections in the Preliminary Opinion with the summons to appear before the Examining Division and in the decision to refuse the application, further amendments are introduced therein."”
• The Board: “the appellant chose not to continue to use these claims as a basis for further amendments that took into account the objections of the examining division. However, in the board's view, such claims should have been prosecuted in the examination proceedings at least as an auxiliary request, so that they would have been subject to an appealable decision. The appellant has thus effectively prevented the department of first instance from giving a reasoned decision on amendments inserted into the claims of the request filed by letter dated 16 October 2012 in response to the department's previously raised objections. The appellant has thereby compelled the board of appeal either to give a first ruling on those amendments or to remit the case to the department of first instance.”
• “ if the amended claims in question had been presented in the proceedings before the examining division. The appellant should have allowed the examining division to exhaustively assess and then decide on all subject-matter for which it intended to seek protection, even if only on a subsidiary basis, if it wished the board to rule on it. This approach is also in line with established case law (see Case Law, V.A.4.11.4b)).”
• The Board uses Art. 12(4) RPBA 2007 as the legal basis. It may be observed that strictly speaking the request at issue was presented before the department of first instance and not held inadmissible; that such requests are covered by the rule appears to be  clarified in Art.12(6)(s.2)(ii) RPBA 2020. 
• Under the RPBA 2020, an interesting point is that such requests appear to be also covered, expressly, by the more liberal provision of Art.12(4) RPBA 2020.

T 0878/16 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t160878eu1.html

Reasons for the Decision

1. The appeal is admissible.

Main request - discretionary power under Article 12(4) RPBA 2007

2. In the present case, the statement of grounds of appeal was filed before the date on which the revised version of the Rules of Procedure of the Boards of Appeal (RPBA 2020) entered into force, i.e. 1 January 2020 (see OJ EPO 2019, A63). Thus, in accordance with Article 25(2) RPBA 2020, Article 12(4) to (6) RPBA 2020 does not apply. Instead, Article 12(4) of the Rules of Procedure of the Boards of Appeal in the version of 2007 (RPBA 2007 - see OJ EPO 2007, 536) continues to apply.

According to Article 12(4) RPBA 2007, the board has the discretionary power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings. Since, in fact, almost every claim request could have been presented before the department of first instance,the question within that context is whether the situation was such that the filing of this request should already have taken place at that stage (see Case Law of the Boards of Appeal of the EPO, 9th edition, July 2019, hereinafter "Case Law", V.A.4.11.1). The board exercises its discretion under Article 12(4) RPBA 2007 having regard to the particular circumstances of the individual case (see e.g. decision T 1178/08, point 2.3). However, as was held in G 10/93 (OJ EPO 1995, 17, point 4 of the Reasons), "[p]roceedings before the boards of appeal in ex-parte cases are primarily concerned with examining the contested decision". Appeal proceedings are not a continuation of examination at first instance or a second, parallel procedure for the substantive examination otherwise to be carried out by the examining division which applicants could freely opt to launch depending on the circumstances (see Case Law, V.A.4.11.4b), in particular the cited decisions T 1108/10 and T 1212/08).

3. The amended claims according to the present main request were filed for the first time with the statement of grounds of appeal. The appellant justified the filing of the new main request as follows (see statement of grounds, page 5, fourth and fifth paragraphs):

G 1/21 - Vico oral proceedings

 Key points

•  Let's walk through the written decision in case G 1/21 (already extensively reported elsewhere, of course).
• “The Enlarged Board finds it justified to limit the scope of the referral to oral proceedings before the Boards of Appeal and to take the specific context of the referral, the COVID-19 pandemic, into account. This is in line with earlier decisions G 1/19 [] and G 2/19 [] in which the Enlarged Board took the position that a referred question may remain unanswered to the extent that it exceeds the real need for clarification.”
• “The Enlarged Board is of the view that in order to clarify the legal framework for holding oral proceedings by videoconference it is appropriate also to consider the compatibility of this format with Article 113 EPC” (and not only Article 116 EPC).
• The Enlarged Board adds that “the right to be heard is the fundamental principle and the right to oral proceedings is an expression of that principle”, which may be true but does not mean that oral proceedings can be dispensed with if the party is heard extensively in the written proceedings (no matter how much the first instance departments may wish so).
• As to the term ‘oral proceedings’: “There is thus no basis in this word for limiting its scope to in-person hearings in a courtroom before the deciding body.”.
• After further analysis: “The Enlarged Board therefore concludes that oral proceedings in the form of a videoconference are oral proceedings within the meaning of Article 116 EPC.”
• The Enlarged Board notes that if they were not, “This in turn would give rise to questions as to legal status of a videoconference, and for example whether parties can be asked to state their final requests or whether the board can close the debate and announce the decision at the end of it. Such questions would moreover arise irrespective of the consent or non-consent of all of the parties, because if videoconferences are not oral proceedings this also applies when the parties have consented to them. ”
• R.44:“ In the preceding paragraphs the Enlarged Board set out the reasons for its conclusion that oral proceedings by videoconference are oral proceedings within the meaning of Article 116 EPC and, although not fully equivalent to oral proceedings held in person, normally do not infringe a party's right to be heard or the right to fair proceedings.”
• The key point of the whole decision appears to be the above remark that vico oral proceedings are oral proceedings within the meaning of Article 116 EPC yet are not fully equivalent to oral proceedings held in person. 
• In my view, this is a very smart move of the Enlarged Board to find a way out of the strict dichotomy that was perceived in the public debate up to the hearing.
• “hearing in person is the optimum format ...  It is also the format that the legislator had in mind when drafting Article 116 EPC. Therefore, in-person hearings should be the default option. Parties can only be denied this option for good reasons.”
• At the ellipsis, the EBA adds that “a hearing in person is the optimum format or, to use a term well known in the field of European patent law, it is the gold standard” (see G 2/10 of course).
• The Enlarged Board in r. 46 appears to reject the argument that "the choice of format is an administrative matter which, like other organisational aspects of oral proceedings, can be decided by the instance scheduling the oral proceedings".
• The Enlarged Board: “Firstly ... the Enlarged Board holds the view that a videoconference normally provides the basic conditions for an opportunity to be heard and to present a case. If in a particular case a videoconference is not suitable, the oral proceedings will need to be [i.e., must be] held in person. ”
• “Secondly, there must also be circumstances specific to the case that justify the decision not to hold the oral proceedings in person. These circumstances should relate to limitations and impairments affecting the parties' ability to attend oral proceedings in person at the premises of the EPO.  ... This decision should not be influenced by administrative issues such as the availability of conference rooms and interpretation facilities or intended efficiency gains. It is the EPO's responsibility to make available the necessary resources for facilitating the conduct of proceedings provided for in the EPC.”
• Implicitly, since the ellipsis is the omitted sentence “In the case of a pandemic, such circumstances could be ...”, the other sentences of the paragraph extend beyond the covid-19 pandemic.
• “Thirdly, the decision whether good reasons justify a deviation from the preference of a party to hold the oral proceedings in person must be a discretionary decision of the board of appeal summoning them to the oral proceedings.”
• I'm not entirely sure what this paragraph means, except that the Enlarged Board does not wish to receive petitions for review on the point. The decision may be discretionary, but presumably only when the first and second factor of G 1/21 are complied with.
• “During a pandemic delays in finalising appeals could apply to a great number of pending cases and therefore seriously impair the administration of justice. In these circumstances it was justified to overrule the wish of the parties and to hold oral proceedings by videoconference.”
• “Finally, it would appear that while in some cases Contracting States and international courts have introduced the possibility of imposing videoconference hearings on the parties during the COVID-19 pandemic, there has so far been considerable reticence about prolonging this measure beyond the current emergency situation. In a similar way, the Enlarged Board has limited the scope of its answer in the present referral to a period of general emergency.”
• The Enlarged Board expresses no view on Article 15a RPBA.

EPO G 1/21; G 0001/21; 

https://www.epo.org/law-practice/case-law-appeals/recent/g210001ex3.html

decision text omitted.

T 3035/19 - Two lists and no pointer

 Key points

•  In a way, this case feels like T 1676/08  redux, in that the patent is about oxycodone (leaving aside the political controversy about such medicaments) and Art. 123(2) and that the patent in suit has about 13 proprietors.
• The proprietors are different legal entities for almost every designated state of the European patent, all belonging (it seems) to the same enterprise. Speculation for the reasons for this legal structuring are beyond the ambit of this weblog.
• There are also 11 opponents.
• “ the opposition division decided the following. Regarding claim 1 of the main request, the earlier application as filed did not make directly and unambiguously available to the skilled person the teaching that in order to significantly reduce opioid induced obstipation without compromising analgesic activity for pain treatment, a fixed weight ratio oxycodone/naloxone 2:1 had to be used. Arriving at the combination of the features pertaining to weight ratio 2:1 and to reducing opioid induced obstipation required simultaneous selections from several independent lists.”
• “ "Opioid induced obstipation" is synonymous with "opioid induced constipation", abbreviated OIC.”
• The Board: “Here, the earlier application as filed discloses several oxycodone:naloxone ratios, including the ratio of 2:1 (see page 16, lines 19-21), and lists several side effects, one of which is OIC (see page 9, lines 15-17). However, the fact that each of these two features of claim 1 of the main request is, individually, disclosed in the earlier application as filed is not sufficient to conclude that their combination is also derivable from the earlier application as filed.”
• “While the notion of selection from two lists is not meant to take the place of the gold standard, it provides valuable guidance and finds wide application in case law for the assessment not only of added subject-matter but also of novelty (see the landmark decision T 12/81 [and CLBA ] I.C.6.2). Consequently, in view of the importance of applying a uniform concept of disclosure for the purposes of Article 54 and 123(2) EPC (see G 2/10, []), and by the same token Article 76(1) EPC, the Board considers that a departure from this established criteria for selection inventions in the assessment of added subject-matter is not appropriate.”
• “The Board emphasizes that the combination of features resulting from selections in two or more lists, or pertaining to separate embodiments, only introduces added subject-matter in the absence of a pointer to that particular combination. Thus, an amendment based on the combination of two items disclosed in the earlier application in two lists of some length, may still be considered to comply with the requirement of Article 123(2) EPC (or 76(1) EPC) if the earlier application contains a pointer towards this combination. In other words, the concept of selection from lists must be applied with due regard to the whole content of the earlier application as filed.”
• “As explained in T 598/12 (see point 4.3.6 of the reasons), what has to be judged is whether the notional skilled person working in the field would consider something as directly and unambiguously implicitly disclosed in the light of his common general knowledge. The assessment of what information is implicitly disclosed in an application cannot go beyond the limits of what the skilled person would objectively understand to be a direct and unambiguous consequence of the explicit disclosure in the particular case. Moreover, when performing this assessment, the common general knowledge cannot serve to enlarge or replace, in a subjective or artificial manner, the actual content of the specification.”

T 3035/19 -

https://www.epo.org/law-practice/case-law-appeals/recent/t193035eu1.html

decision text omitted.

T 1038/18 - (IV) Case amendment after summons

 Key points

•  To jump to the conclusion: “Consequently, the mentioned considerations constitute in the board's view cogent reasons justifying exceptional circumstances under which the board, in the exercise of its discretion under Article 13(2) RPBA 2020, considered appropriate to admit the appellant's arguments of lack of inventive step over document D1 into the proceedings.”
• So what are the exceptional circumstances? I think the Board is quite liberal but as noted below, the reasoning is a bit unclear as to what precisely the relevant procedural facts are.
• “The board notes that in [the preliminary opinion the Board expressed the view that]  that, contrary to the opposition division's view[,] D1 disclosed [features X and Y] and that, also contrary to the opposition division's view, document D1 did not disclose [feature Z]. Therefore, the board's preliminary opinion substantially deviated from the opposition division's assessment of novelty. In particular, the preliminary opinion was, on the one hand, favourable to the appellant's [opponent] submissions as regards the claimed feature [X and Y] but, on the other hand, the appellant was confronted with the board's preliminary opinion that [feature Z] would constitute, contrary to the opposition division's view, a distinguishing feature of the claimed device over document D1 and that this feature would constitute the sole distinguishing feature of the claimed device. ”
• “In the board's view these considerations justified, in the circumstances submitted by the appellant and mentioned above [see below], that the appellant [opponent], in reply to the preliminary opinion expressed by the board, submitted for the first time during the appeal proceedings arguments of lack of inventive step over document D1 in respect of a claimed feature that did not correspond to the features identified by the opposition division as new, but was subsequently identified in the board's preliminary opinion as the sole distinguishing feature over document D1. ”
• The opponent/appellant also submitted that “ with the statement of grounds of appeal the appellant submitted arguments in support of their view that the features of claim 1 identified by [the opposition division] as being new over document D1 were disclosed in document D1. In these circumstances - as already stated in the statement of grounds of appeal - there was, according to the established case law ([CLBA IV.C.3.4.2]), no need to present at that time arguments relating to inventive step.”
• As a comment, it is not clear to me if the patentee/respondent had defended feature Z as a distinguishing feature in its appeal reply brief, or that the Board identified the feature of its own motion as providing a difference with D1. In the former case, the appropriate time to submit inventive step arguments in reply would be the appellant's/opponent's rejoinder. In the latter case, this would be a regular reason to admit response submissions under Art. 13(2). So, in the former case, it is remarkable that the Board does not explain why the appellant/opponent was not expected to have submitted the attack already with its rejoinder. In the latter case, the  Board's extensive reasoning on admissibility seems superfluous. 

T 1038/18 -

https://www.epo.org/law-practice/case-law-appeals/recent/t181038eu1.html

3.2 Inventive step over the embodiment of Fig. 16a to 16c of document D1 as the closest state of the art

3.2.1 Amendment to the appellant's case after notification of the summons - Article 13(2) RPBA 2020

In the statement of grounds of appeal the appellant, in addition to raising an objection of lack of novelty of the device of claim 1 over document D1 and submitting arguments in support of the objection, also raised an objection of lack of inventive step of the mentioned device over document D1, without however submitting arguments in support of this objection. Subsequently, with a letter filed after notification of the summons to oral proceedings before the board, the appellant submitted substantive arguments in support of their view that the subject-matter of claim 1 did not involve an inventive step over document D1. These arguments constitute an amendment to the appellant's case in appeal within the meaning of Article 13(2) RPBA 2020.

The respondent objected that the appellant's arguments of lack of inventive step over document D1 were not, but could precautionarily have been, submitted with the statement of grounds of appeal, that the arguments were submitted at a late stage of the appeal proceedings, and that for these reasons these arguments of lack of inventive step should not be admitted into the proceedings.