T 0194/17 - Applying Rule 57a EPC 1973 under RPBA 2020

 Key points

• PCT application filed in 2005, EP entry 2007, Communication Examing Division 2009, some exchange of letters, a decision to grant 2014, decision rejecting the opposition in 2016 and that makes that the present Board applies Rule 57a EPC 1973 in this decision taken 03.12.2020.
• The Board provides a useful summary of the transitional provisions: “According to Articles 1(1) and 6, first sentence of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the EPC of 29 November 2000 (Special edition No. 4, OJ EPO 2007, 217), Articles 54(2), 56, 87, 100, 111 and 113 EPC 1973 as well as Articles 52, 54(3) and 153 EPC (2000) apply. With respect to potentially colliding European applications pursuant to Article 54(3) EPC, however, the provisions of Article 54(4) EPC 1973 continue to apply. By analogy, with respect to potentially colliding Euro-PCT applications pursuant to Article 54(3) EPC, the provisions of Article 158(2) EPC 1973 and Rule 106 EPC 1973 continue to apply. Since Rules 57a and 67 EPC 1973 are linked respectively to Articles 100 and 111 EPC 1973, they are to be applied in the present case (by analogy with J 10/07, OJ EPO 2008, 567).”
• I'm not sure whether this is still EQE stuff, but it is useful in practice to be aware of it when working on long-running cases or litigation about old patents. 
• The main request is not inventive. Auxiliary requests were filed with the Statement of grounds. Admissibility is to be decided. 
• The Board: “In its provisional opinion, the Board explicitly drew the respondent's attention to the appellant's submission that the auxiliary requests failed to meet the requirements of Rule 57a EPC 1973 since they were not accompanied by any reasons as to why they overcome a ground of opposition”
• As a comment, the opponent’s objection actually was: “The appellant [opponent] requested that the first to fourth auxiliary requests not be admitted into the appeal proceedings, since although they essentially correspond to claims that had been filed during the opposition proceedings, the respondent [patentee] had never submitted any supporting argumentation to explain the amendments. In their view the claims were also not prima facie clearly allowable. However, it was not up to them to speculate on why the subject-matter of any of the requests might or might not comprise allowable subject-matter. Furthermore, several of the amendments appear to be merely changes to the reference signs and grammar and therefore do not meet the requirement of Rule 57a EPC 1973.”
• As a comment, that “auxiliary requests [not] accompanied by any reasons as to why they overcome a ground of opposition” are inadmissible, seems established case law to me, but not based on Rule 80. 
• “Such requests - which are not self-explanatory - are considered by the Board as being submitted only on the date of their substantiation, i.e. during the oral proceedings.”

EPO T 0194/17 - link

decision text omitted.

T 2284/15 - Solving a technical problem and Art.83

Key points

• This opposition appeal decision contains a number of interesting points. The patent was granted with claim 1 directed to an instrument and second independent claim 2 also directed to an instrument (same preamble, different characterizing feature) (translated English claims, see link). The Board finds claim 1 to be insufficiently disclosed. The amendment in claim 1 of AR-1 does not help

Sufficiency of disclosure

• The claim specifies an instrument characterized in that “a control circuit (17) controls the opening period of the valve (16) as a function of at least one or a combination of the following parameters, namely the parameters of working pressure, striking frequency or pressure in the back-pressure chamber (8).”
• The Board finds that the example in the specification is not according to the claim and that the specification does not provide a teaching of how to solve the technical problems mentioned in the specification. The patentee argues that the skilled person can still provide for a control circuit that controls the opening as some arbitrary function (‘Abhängigkeit’) of the parameters mentioned in claim 1, and that this still gives an instrument according to claim 1. In particular, claim 1 does not specify any technical effect of the control circuit.
• The opponent does not dispute that the skilled person can provide for some arbitrary ‘Abhängigkeit’ (so the skilled person had no difficulty to reduce the claimed subject-matter to practice). However, the opponent submits that the subject-matter does not solve the (a?) technical problem, which would violate Article 83 EPC.
• As a comment, I think this just boils down to an objection of lacking essential features, but the present Board does not discuss it in that way.
• The Board agrees with the opponent. “dass das Lösen einer technischen Aufgabe eine fundamentale Eigenschaft einer Erfindung ist.” “Dass die Fachperson auf Basis der Beschreibung oder ihres Fachwissens zu einer willkürlichen, beliebigen Ausführungsform des beanspruchten Gegenstands kommen kann, bedeutet daher nicht, dass ihr ein Weg zur Ausführung der Erfindung gezeigt wird, wenn damit die technische Aufgabe nicht gelöst wird.”
• The Board notes that G 1/03 stated that “If an effect is expressed in a claim, there is lack of sufficient disclosure. Otherwise, i.e. if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step”. According to the present Board, this remark in G1/03 was restricted to the context of disclaimers for chemical Markush formula's (paraphrasing the present decision). The present Board: “Diese Überlegungen der Großen Beschwerdekammer können nicht ohne weiteres auf den gegenständlichen Kontext übertragen werden. ”
• The present Board: “Dass ein technischer Effekt nicht im Anspruch definiert wird, bedeutet daher nicht zwangsläufig, dass kein Einwand unter Artikel 83 EPÜ erhoben werden kann.” (the objection being based on the patent’s alleged failure to teach how to achieve that effect).
• I'm not sure if this concerns the objective technical problem or the so-called subjective technical problem.
• The present Board: “Wird kein klarer Weg zur Ausführung der Erfindung aufgezeigt, der die technische Aufgabe löst, oder sind die Ansprüche oder Ausführungsformen unklar, so können eventuell unter Artikeln 83, 84, oder 100 b) EPÜ Einwände erhoben worden.”
• I note that there is also some case law stating that an unclarity in a claim does not automatically to an objection under Article 83 EPC.
• See e.g. also T1137/16.

• Article 123(2)
  
• In AR-2, the patentee cancels claim 1 entirely. The Board finds this request to prima facie violate Article 123(2) because claim 5 as filed was directed to “The instrument of claim 1 to 4”. According to the Board, the instrument of claim 5 therefore has the features of each and every of claims 1 - 4 as filed (claims as filed). By cancelling independent claim 1, the (renumbered and adapted)  claim 5 would specify fewer features, i.e. involve an unallowable intermediate generalization. The request is therefore not admitted under Article 12(4) RPBA 2007.
• “Die Streichung des Anspruchs 1 stellt zudem, prima facie, eine unzulässige Verallgemeinerung dar. Die unmittelbare Bedeutung von nach Anspruch 1 bis 4 (Anspruch 5 in der ursprünglichen Fassung) muss so verstanden werden, dass alle in den Ansprüchen 1 bis 4 definierten Merkmale zu Anspruch 5 gehören; andernfalls hätte die gleiche Formulierung wie bei den anderen ursprünglichen Ansprüchen verwendet werden sollen, d.h. nach einem der Ansprüche ... [e.g. claim 6 as filed recited “Instrument nach einem der Ansprüche 1 bis 5”]. Die nunmehrige Fassung des Anspruchs 4 (nach Anspruch 1 bis 3, also ursprüngliche Ansprüche 2 bis 4) definiert nicht mehr die Merkmale des ursprünglichen Anspruchs 1. Die Berücksichtigung dieses Antrags verbietet sich auch unter diesem Gesichtspunkt.”
  
  
• Scope of opposition
• Only claim 1 was opposed, independent claim 2 was not opposed (scope of opposition). According to established case law, the Board is not competent to examine claim 2 at all.
• However, the patentee's request AR-3 restricting to claim 2 and deleting the offending dependent claim is not admitted under Article 13(2) RPBA because there are no special circumstances.
• In connection with AR-2, which was also not admitted as being prima facie lacking basis in the application as filed, the Board observes “Dass dieser Teil des Patents nicht angegriffen wurde, ändert nichts an der Tatsache, dass der Antrag - in einer der Rechtssicherheit zuwiderlaufenden Weise - verspätet gestellt worden ist.”

T 2284/15 - link

Entscheidungsgründe

Berücksichtigung des letzten Schriftsatzes der Patentinhaberin

1. In diesem Schriftsatz wird lediglich die Position der Beschwerdeführerin unter anderen Gesichtspunkten zusammengefasst. Neues, zu überprüfendes Tatsachenvorbringen enthält er nicht. Es handelt sich also nicht um Änderungen des Beschwerdevorbringens, dessen Zulassung im Ermessen der Kammer stünde (Artikel 13 VOBK 2020), sondern um Argumente, die auch in der mündlichen Verhandlung hätten vorgetragen werden können (vgl. T 1794/12).

2. Die Kammer schließt sich auch der Ansicht der Beschwerdeführerin an, wonach die Beschwerdegegnerin ausreichend Vorbereitungszeit hatte, zum Inhalt des Schriftsatzes angemessen Stellung zu nehmen.

T 1809/17 - Essential features and Art. 100(b)

 Key points

• This is an opposition appeal. The opponent argues that claim 1 is insufficiently disclosed by not specifying all essential features.
• The  Board considers claim 1 to be sufficiently disclosed: “Maßgeblich ist hierbei nicht, ob der unabhängige Anspruch alle wesentlichen Merkmale definiert, sondern ob die gesamte Patentschrift dem Fachmann wenigstens ein gangbares Ausführungsbeispiel aufzeigt, wie die in Anspruch 1 definierte Erfindung umsetzbar ist.” (emphasis added)
• The patent teaches at least one way for “Umsetzung der Erfindung” (German original) so that the invention is sufficiently disclosed, Article 100(b) EPC.

EPO T 1809/17

https://www.epo.org/law-practice/case-law-appeals/recent/t171809du1.html

decision text omitted

T 0966/17 - Legal basis inadmissibility amended claims in opposition

Key points

• Article 114(2) EPC is about the admissibility (late filed) facts and evidence, not about amended claims. Rule 137 is about the admissibility of claim amendments in examination.  So what is the legal basis for holding amended claims inadmissible in opposition?
• The present Board explains that the legal basis is Article 123(1) EPC, first sentence in combination with Rule 79(1) and Rule 81(3) EPC 2000.
• This is fully in line with T0406/86 which is the foundational decision though not frequently cited any more since about 2005.
• Rule 81(3) reads: “In any communication under Article 101, paragraph 1, second sentence, the proprietor of the European patent shall, where necessary, be given the opportunity to amend, where appropriate, the description, claims and drawings. Where necessary, the communication shall contain a reasoned statement covering the grounds against the maintenance of the European patent.”
• T0406/86 derived from the phrase “where necessary, be given the opportunity to amend, where appropriate” that any amended claims filed by the patentee without such an invitation from the OD (the vast majority of amended claims in practice) are admissible at the discretion of the OD. This discretion is restricted by Article 113(1) EPC.
• Rule 81(3) also applies in opposition appeal by way of at least Article 111(1), second sentence, in my view. 
• The Board, further in the headnote in translation: “A change in the opinion of the opposition division in the oral proceedings with regard to its preliminary opinion communicated with the summons cannot, by itself, mean that any requests must be admitted in the oral proceedings without any discretion for the opposition division”
• “Insofar as the patent proprietor reacts with new requests to a new line of attack by the opponent and a newly filed document, the decision on admission can take into account whether the requests appear prima facie allowable or whether they should be rejected anyway due to other objections that have been in the proceedings for some time”
• “In inter partes proceedings, the parties have no right to "detailed instructions" from the deciding panel to remedy the deficiency discussed. Instead, it is up to each party to respond adequately to the  submission of the adverse party”
• The issue is that the OD had found the main request to be not novel over E1, cited in the notice of opposition, the opponent had filed D18 shortly before the hearing before the OD, and the OD decided not to admit some auxiliary requests filed during the oral proceedings as being not prima face allowable.

EPO T 0966/17

https://www.epo.org/law-practice/case-law-appeals/recent/t170966du1.html

Entscheidungsgründe

Hauptantrag

Neuheit gegenüber E1

1. Der Gegenstand des unabhängigen Anspruchs 1 wie erteilt ist nicht neu gegenüber E1 (Artikel 54 EPÜ). Die Kammer folgt hierbei im Wesentlichen der Argumentation der Einspruchsabteilung in ihrer Entscheidung.

...

Rüge des schwerwiegenden Verfahrensfehlers

2. Es liegt kein schwerwiegender Verfahrensfehler im Verfahren vor der Einspruchsabteilung vor und insbesondere wurde auch nicht der Anspruch der Patentinhaberin auf rechtliches Gehör verletzt (Artikel 113 EPÜ).

Dem Antrag auf Rückerstattung der Beschwerdegebühr wird daher nicht stattgegeben.

2.1 Die Beschwerdeführerin hat im Wesentlichen moniert, dass die Einspruchsabteilung bei der Entscheidung über die Zulassung der erst in der mündlichen Verhandlung eingereichten Hilfsanträge IV und V zum Verfahren kein Ermessen gehabt habe. Die Hilfsanträge IV und V hätten zwingend zugelassen und geprüft werden müssen.

Da jedoch keine vollständige Prüfung der Hilfsanträge IV und V stattgefunden habe, habe die Beschwerdeführerin die konkreten Einwände nicht kennen können und somit auch keine Gelegenheit zum Ausräumen der während der mündlichen Verhandlung geäußerten Einwände durch weiter beschränkte Hilfsanträge gehabt. Folglich sei ihr Anspruch auf rechtliches Gehör verletzt worden.

2.2 Zunächst ist festzustellen, dass die Einspruchsabteilung ein Ermessen hatte, über die Zulassung der erst in der mündlichen Verhandlung vorgelegten Hilfsanträge IV und V zu entscheiden.

2.2.1 Das Ermessen der Einspruchsabteilung, geänderte Anträge zum Verfahren zuzulassen, ergibt sich grundsätzlich aus Artikel 123(1) EPÜ (erster Satz) in Verbindung mit Regeln 79(1) und 81(3) EPÜ.

T 1370/15 - Ex officio objections in opposition appeal

 Key points

• The Board, in the headnote: “Not only in ex parte-, but also in inter partes appeal proceedings, a board is allowed to introduce new ex officio common general knowledge without evidence of such knowledge which prejudices maintenance of the patent, to the extent that the board is knowledgeable in the respective technical field from the experience of its members working on cases in this field.”
• There appear to be two aspects (1) the board can rely on common general knowledge without providing evidence (unlike e.g. USPTO PTAB and EPO examiners, I believe) and (ii) the board can introduce new common general knowledge (as well as new prior art documents, by the way) both in examination appeals and in opposition appeals.
• Perhaps to provide context: the patent was revoked by the OD and the opponent did not make any submissions in appeal.
• The Board finds that the “opposition division erred in finding that the subject-matter of claims 1 and 9 of the granted patent lacked novelty. Hence, “the appeal has revealed that it is allowable within the meaning of Article 111(1) EPC” (which does not mean that the patent is not revoked by the Board).
• Article 111(1) EPC: “Following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal. The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.”
• So one way of looking at Article 111(1) EPC is that the Board's examination of the allowability of the appeal means examining whether the appellant has shown that a bearing reason for the impugned decision is incorrect (here, that the claims are not novel, the OD's decision being to revoke the patent). In the next stage, if the appeal is ‘allowable’  in that sense, the Board ‘decides on the appeal’ and then “may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution”.
• The Board: “ to examine the subject-matter of the claims submitted for a decision on appeal. As opposition proceedings were initiated in mid-2013 and the appeal was filed in mid-2015, a remittal of the case would unreasonably delay its final settlement. Furthermore, the board is knowledgeable in the relevant technical field of user interfaces for broadcast applications from the experience of its members working on cases in this field.”
• I don't think the Board here wishes to suggest that in other appeal cases the Board is not knowledgeable in the relevant technical field, though in practice sometimes the first instance examiners may be more specialized in a narrow technical field.
• The Board, “Remitting a case because of new submissions would thus generally be contrary to what was intended with Article 11 of the revised RPBA of 2020.”
• The patentee objected to the Board's introduction of common general knowledge late in the oral proceedings. The Board assumes that these objections are legal arguments which are always admissible in line with T1914/12. The Board expresses that this is not certain: “While Article 114(2) EPC does indeed not mention the EPO's power to not admit ("disregard") legal reasoning (arguments), general principles of the law might prevent taking into account the legal reasoning under certain circumstances.”
• The Board's competence to raise new issues is not restricted by Article 12(2) RPBA 2020. “Given that these provisions are addressed to the parties and not to the boards, they have no immediate impact on the boards raising new issues under Article 114(1) EPC.”
• The Board may also raise new objections of own motion in opposition appeal. “While the Enlarged Board found in G 10/91 that the appeal procedure in inter partes cases was less investigative than the procedure of the opposition division, Article 114(1) EPC - which requires the EPO to examine the facts of its own motion - still applies. This means that a board is not excluded outright from introducing new facts and evidence in inter partes proceedings.”
• The Board is not required to present evidence of alleged common general knowledge citing T1090/12, point 6.2: “there is ... no general obligation on a board to provide documentary evidence for the existence of a piece of common general knowledge. In proceedings before the EPO, a board of appeal has to respect the right to be heard and to give reasons for its decision. In cases where a board refers to common general knowledge as state of the art, it is not obliged to provide documents in every conceivable case” (cited in the present decision in r.5.3.8 where there is a typo in the case number). 
• I've missed T1090/12 on this blog but Laurent Teyssèdre spotted it on his blog.

EPO T 1370/15

https://www.epo.org/law-practice/case-law-appeals/recent/t151370eu1.html

Reasons for the Decision

1. The appeal is admissible.

2. Interpretation of claim 1 of the granted patent

2.1 Claim 1 of the granted patent specifies that "the UI provider is configured whereby for a first transmission method a processing method from the plurality of processing methods is selectable and for a second transmission method a processing method from the plurality of processing methods is selectable independently from the selection of the processing method of the first transmission method".

2.2 Contrary to the opposition division (see point XVIII(a) above), the board agrees with the appellant (see point XIX(f) above) that the wording of granted claim 1 implies that a user interacts with a single user interface (UI) to set processing methods for transmission methods in which the selection of a first processing method does not put any constraints on the selection of further processing methods. This interpretation of claim 1 is based on Figures 2 and 4 and the corresponding parts of the description.

T 0552/14 - The question of technical novelty

 Key points

• This is an appeal against the refusal of a patent application directed to “a method of processing electronic queue data”, but perhaps more informative is that the applicant is Ticketmaster, a company probably well known to anyone having bought concert tickets online or having tried to do so for popular concerts.
• The Board: “[T 172/03] seems to suggest that novelty, which is also a patentability requirement, can be based only on technical features”
• “The question of "technical novelty" is complex, and has potential implications on many areas of patent law, such as the assessment of the same invention in Article 87 EPC, as well as added matter under Articles 76 and 123(2) EPC. In the present case, the Board does not need to decide on this issue, because [...] the case can be decided on inventive step.”
• The Board: “The cited decisions [G 2/88, T 172/03, and T 154/04] indeed seem to suggest that only technical features can establish novelty. However, the individual statements made in these decisions have to be seen in the context of the decision as a whole and not just in isolation. None of the decisions applies the "approach" to a computer-implemented invention.”

EPO T 0552/14

https://www.epo.org/law-practice/case-law-appeals/recent/t140552eu1.html

Reasons for the Decision

1. The invention

1.1 The invention concerns a method of processing electronic queue data and providing queue messaging over a network. The idea is essentially to notify the customer having requested a resource, such as an event ticket or tickets, whether the resource is likely to be available when the request is serviced. The estimate is based on the number of requests in the queue and historical queue abandonment rates (and certainly also the available quantity of the resource in question). Based on the notification, the customer can decide to abandon or stay in the queue.

2. Technical character

2.1 The Board agrees with the examining division that a method of processing queue data comprising receiving a ticket request, estimating whether the requested ticket will be available when the request is serviced, and notifying the user if it is estimated that the ticket will not be available, does not on its own solve a technical problem. This subject-matter is, as the examining division said, an organisational matter.

T 2447/18 - The subclass trap revisited

 Key points

• The subclass trap is similar to the Article 123(2)/(3) trap and can trap patentees mostly in the chemical field. For instance, if a patent is granted with an independent claim specifying that a composition contains x to y % of a compound of class Z and patentee wishes to restrict to the particular compound Z1 in that class Z.
• T1360/11, headnote, frequently cited,  provides that “Where a granted claim directed to a composition defined in an open manner and including the presence of a component belonging to a class or list of compounds in a quantity defined by a range is later amended by limiting the definition of the class or list of compounds, a possible infringement of the requirements of Article 123(3) EPC may be avoided by including in the amended claim a quantitative condition on the limited class or list of compounds and an additional constraint on the total amount of compounds belonging to the broader class or list” (further referring to older decisions).
• The present Board finds the “quantitative condition on the limited class or list of compounds” to lack basis in the application as filed. 
• In present claim 1 “ the claimed composition is defined as comprising "0.002% to 0.4%, by weight of the total composition, of a non-ionic [microbiocide] wherein the composition comprises 0.002% to 0.4% of [Diclosan]", Diclosan is a non-ionic microbiocide.
• The Board: “Even though the passage on page 8, lines 2-3 [of the application as filed], discloses that the non-ionic microbicide is [...] preferably contained at an amount of from 0.002% to 0.4% and the passage following at page 8, lines 6-7 identifies Diclosan as a suitable non-ionic microbicide, the entire application does not contain any direct and unambiguous disclosure of a mixture of non-ionic microbicides containing 0.002% of Diclosan as explicitly encompassed by the wording of claim 1 at issue.” 
• The patentee cited a number of case law decision to no avail.
• The Board found the following wording to have basis in the application as filed: “(b) from 0.002% to 0.4%, by weight of the total composition, of a non-ionic antimicrobial active, which is not a perfume component, wherein 4,4' dichloro-2-hydroxy diphenyl ether is present as the sole non-ionic antimicrobial active in the composition”. 

EPO T 2447/18 -  link

Reasons for the Decision

1. Main Request - Compliance with the requirements of Article 123(2) EPC

1.1 According to the wording of claim 1 of this request the claimed composition is defined as comprising "(b) 0.002% to 0.4%, by weight of the total composition, of a non-ionic antimicrobial active, which is not a perfume component, wherein the composition comprises 0.002% to 0.4% of 4,4'dichloro-2-hydroxy diphenyl ether" (emphasis added by the board).

T 2004/17 - Patent for zoom bounce-back effect

 Key points

• This decision concerns a patent application of Apple with filing date in 2008.
• Claim 1 is directed to basically a device with instructions for displaying a document and deals with zooming in and the maximum zoom level. In the invention, in the words of the Board: “the zoom-in level reached during the user's gesture does not persist, upon termination of the user's gesture, if this zoom-in level exceeds a threshold value; instead, the document is then displayed at a zoom-in level equal to this threshold value”.
• D3 is the closest prior art and “implements a hard stop, wherein if a maximum zoom-in level is reached during the gesture, the zooming-in action is stopped during the gesture and the document is persistently displayed at this maximum zoom-in level even if the user's gesture is continued”
• Hence in the invention there is a “providing the zoom bounce-back effect”
• The Board finds this to be inventive. “the appellant argued persuasively that in D3 the absence of feedback when the hard stop is reached may confuse the user, who may then repeatedly attempt to perform the zoom-in gesture without receiving any response before understanding that the document cannot be viewed at a greater zoom level. In contrast, the zoom bounce-back in claim 1 definitely provides clear feedback that the maximum zoom level has been reached and that no additional input is required”
• As a comment, readers may recall  Apple's rubber band patent and the Apple's 2007 own iPhone presentation as killing prior art in Germany (the critical moment is I think around 32:40; ipcopy blog, FOSS blog both with embedded Youtube video). By the way interesting to see the first iPhone again. 

T 2004/17

https://www.epo.org/law-practice/case-law-appeals/recent/t172004eu1.html

decision text omitted

T 2431/17 - Transfer of priority right

 Key points

• “The applicants of the priority applications D15 and D16 [two US provisional applications filed in the name of the inventors] are not identical to the applicant of the Euro-PCT application from which the patent in suit derives”. The PCT applicant is the company ARL.
• The Board: “The question arises as to whether ARL is in fact the successor in title of the original applicants of D15 and D16. This formal requirement of Article 87(1) EPC must be assessed by the EPO, for the reasons set out in T 844/18”
• ”If entitlement to priority is challenged, a successor in title, who desires to take advantage of the priority of a first application and who asserts that priority is rightly claimed from the first application, has to prove its entitlement to that right, which includes a valid transfer of the right of priority”.
• The Board: “the burden of proof is on appellant [patentee] to establish that: (a) before the date of filing of the application  [] (b) the right of priority derived from the US provisional application D15 had been transferred to it (c) by the six original applicants and inventors (d) in accordance with the requirements of the relevant law.”
• Patentee submitted that each of the inventors had an employment contract with AUL (a different but related legal entity) and then, turning to a highly fact-specific circumstance,  refers to a license agreement between it and a third entity which stated that that third entity had “"has acquired and assumed the economic benefits and burdens with respect to [AUL's] intellectual property ownership"”
• As a comment, there is a small risk when putting IP rights in a separate legal entity (typically for legal, tax or financial reasons), namely that the chain of title between the operating company being the employer and the IP holing entity becomes complex and not always carefully maintained and updated by the legal department.
• The employer company was not actually a signatory to that licence agreement and the phrase “has acquired and assumed the economic benefits and burdens” does not clearly refer to prospective rights.
• The Board acknowledges the future assignment of priority rights in the employment contract as valid (r.1.5.5, third para) which is highly useful for practice.
• The mere fact that ARL was the PCT applicant, does not demonstrate the transfer of priority rights, according to the Board. “Finally, the Board does not share the opinion of appellant P that the fact that ARL went on to file the PCT application showed, on the balance of probabilities, that they were the rightful applicant. The fact that ARL filed a PCT application pertaining to the invention of D15 shows that it had knowledge of this invention, but it does not demonstrate that it had formally acquired the right to claim priority from D15 before filing the PCT application.”

T 2431/17 

https://www.epo.org/law-practice/case-law-appeals/recent/t172431eu1.html

1.5 Priority

1.5.1 The patent claims priority from the applications D15 (US 61/037117) and D16 (US 61/111920). The validity of this priority claim is relevant to the determination of patentability for the claimed invention over A045 and A049.

1.5.2 Under Article 87(1) EPC, the right of priority belongs to the person who has duly filed D15 and D16 or his successor in title.

The applicants of the priority applications D15 and D16 are not identical to the applicant of the Euro-PCT application from which the patent in suit derives (European patent application number 09722278.0, filed under the PCT as PCT/US2009/037077, hereinafter "the application"):

T 0533/17 - Conceal own earlier plublication

 Key points

• This decision deals with the admissibility of D19 filed in the course of the appeal (Article 13(1) RPBA).
• “In the appellant's [opponent's] view, the poster D19 and the related documents D19a and D19b should be considered since the respondent [patentee] "apparently decided to conceal this earlier own publication". Such behaviour should not be rewarded by not admitting these documents.”
• The Board: “However, it is noted, first, that Rule 42(1)(b) EPC does not put a stringent obligation on the applicant to acknowledge prior art known to him already at the time of filing the application. Therefore, the failure to acknowledge D19 in the patent in suit is not a sufficient reason for admitting this document into the appeal proceedings. 
• Secondly, the appellant has not provided a convincing justification of why it was possible to find D19 when preparing for the oral proceedings relating to the patent originating from the divisional European patent application No. 12 004 053, but not when preparing the present case at the opposition stage. In the present case, the amendments to the main request were made as long ago as 2015, and auxiliary request 1 differs therefrom only in the deletion of claims. Consequently, the amendments cannot be considered to have triggered an additional search late in the appeal stage.”

T 0533/17

https://www.epo.org/law-practice/case-law-appeals/recent/t170533eu1.html

decision text omitted

T 0444/20 - Correction of debit order appeal fee

 Key points

• In by no means a rare course of action, the appellant paid the appeal fee with a debit order in the familiar amount of EUR 1880 on 20.12.2019, after the fee was increased on 01.04.2018 for large entities.
• The Board allows the correction of the debit order.
• “Following T 317/19, Reasons 2.3 to 2.5, an error in a duly filed form for paying the appeal fee may be corrected under Rule 139, first sentence, EPC.”
• “In G 1/12 [the  Enlarged Board] summarised the following [requirements for a correction under Rule 139 first sentence] : (a) The correction must introduce what was originally intended. ... (b) Where the original intention is not immediately apparent, the requester bears the burden of proof, which must be a heavy one. (c) The error to be remedied may be an incorrect statement or an omission. (d) The request for correction must be filed without delay.”
• The Board: “At the date of payment, the amount due for the reduced appeal fee under Article 2(1), item 11 RFees was identical to the amount previously due for the appeal fee in all cases (EUR 1 880). The board accepts that this may have given rise to confusion.”
• As to item b, the appellant did not submit the SME declaration 'required' by OJ EPO 2018, A5; moreover, the appellant is a well-known large entity.
• As to item c, the full appeal fee was paid.
• As to item d, “the appellant filed its request under Rule 139 EPC merely two weeks after the board's communication which indicated for the first time that the prescribed appeal fee was not validly paid  ... The board is, therefore, satisfied that the appellant filed its request for correction without delay”
• “The board concludes that the requirements for the correction requested are met, and thus that the correction is to be allowed. As a consequence, the appeal is retroactively deemed to have been filed, the correction under Rule 139 EPC having effect ex tunc ”
• The fee for the auxiliary request for re-establishment is reimbursed.
• There was a curious communication from the EPO of 09.01.2020 that “informed the appellant that it had paid the reduced fee but had failed to file a declaration that it constituted an entity according to Rule 6(4) and (5) EPC. In this context, the EPO inter alia stated that "[t]he missing amount of xxx EUR may be paid within two months from notification of this communication."”
• The Communication of 09.01.2020 mentions a name (an EPO employee I assume) but no department. It states that the underpayment was less than 10% of the total amount due [well, (2255-1880)/2255 = 16%]  and that the missing amount of "xxx EUR" may be paid within two months under J11/85. The missing amount was paid in that two-month period.  Perhaps the Examining Division was willing to allow interlocutory revision if possible, or the EPO was trying to be helpful under the principle of good faith. However, the appeal was forwarded to the Board and the Board does not seem to consider itself bound very much by that letter and the time limit given therein. 

Summary of Facts and Submissions

I. The decision under appeal refusing European patent application No. 14 194 458.7 was posted on 15 October 2019.

II. On 20 December 2019, the applicant (hereinafter: appellant) filed a notice of appeal in which it indicated that "[t]he appeal fee in the amount of EUR 1,880.00 is paid via EPO online filing". Said amount was also indicated in payment form 1038E which accompanied the notice of appeal letter. On that same day, the above amount was debited. However, the correct amount of the appeal fee at the time of filing was EUR 2 255 since the appellant is not entitled to the fee reduction under Article 2(1), item 11, RFees in conjunction with Rule 6(4) and (5) EPC (contrary to the appellant's indication in the "Fees" box of Form 1038E).

J 0010/20 - Covid extension lacks clear legal basis but saved

 Key points

• The extension of periods from 15 March to 2 June 2020 by way of  Notice of the EPO (OJ 2020, A60) because of Covid-19 by the president was adopted under Rule 134(2). However, Rule 134(2) requires “a general dislocation in the delivery or transmission of mail” in Germany or The Netherlands and post was actually delivered without significant disruptions in that period.
• The Legal Board, when deciding whether the appeal at issue was filed in time: “Rule 134(2) EPC, however, does not refer to a "general dislocation" as such [as mentioned in the Notices of the EPO ], but to a "general dislocation in the delivery or transmission of mail". The [Notices] are silent on whether there was a general dislocation in the delivery or transmission of mail in the Federal Republic of Germany. It thus seems likely that these Notices are based on an application of Rule 134(2) EPC by analogy []. Ultimately, however, this question can be left open.”. 
• The Legal Board then turns to the principle of legitimate expectations. “even if there was no general dislocation in the delivery or transmission of mail in the Federal Republic of Germany during the relevant period, and even if it were not possible to apply Rule 134(2) EPC by analogy under the given circumstances, users could still rely on the information on the extension of time limits provided in the Notices of the European Patent Office without suffering any disadvantages” because under G2/97, “Users must not suffer a disadvantage as a result of having relied on erroneous information received from the EPO”.
  
  
• The appeal concerns the rejection of a RE request because the RE fee was not paid in time, according to the Receiving Section, and the underlying question of whether the further processing fee was paid in time.
• The applicant gave a payment order “on [the last day of the period, a Friday] by a Brazilian bank which has a subsidiary in one of the contracting states to the EPC, namely the United Kingdom. Therefore, the fee should be considered to have been paid in due time under Article 7(3) of the Rules relating to Fees [according to the applicant].” The money entered the EPO bank account on the next Monday.
• There was an Italian lawyer under ARticle Article 134(8) appointed, but that representative did not submit a debit order and indicated that the payment would be made by bank transfer.
• The Board: “under Article 7(3) of the Rules relating to Fees it is of no relevance whether the banking establishment through which payment is made has a subsidiary in one of the contracting states or not. What matters is whether the payment, through a banking establishment, was made in a contracting state (see T 401/97, points 4 and 5 of the Reasons). In the present case, the order to transfer the amount of the payment was given in Sao Paulo, Brazil, and therefore not in a contracting state. Article 7(3) of the Rules relating to Fees is thus not applicable.”
• The RE request is considered to be not filed in the two-months period. “ Even if the cause of non-compliance had, as alleged by the appellant, only been removed on 11 March 2019, the prescribed fees for re-establishment of rights were still only paid on 17 February 2020. This would in any case be long after the expiry of the two-month time limit under Rule 136(1) EPC.”
• The removal of the cause of non-compliance was actually 1 February 2019 when the appointed representative was informed by the EPO, not 11 March 2019 when the applicant, a natural person in Brazil was allegedly informed of the situation.
• A letter with a request for re-establishment ('Memorandum in support of the request for further processing'  but referring to all due care) was filed 31.03.2019.
• The re-establishment fee was (according to the decision) paid with the Notice of appeal. The submitted Form 1038E indicates the debit order for the appeal fee.
• The impugned decision of the Receiving Section indicates that the RE request is deemed to not have been filed (at that time, the fee had not been paid) and that the European patent application is deemed to be withdrawn with legal effect of a certain date (expiry of the original period) and that all fees paid after the date of legal effect will be refunded once the decision becomes final. 
• The EPO had issued a Notice under Rule 51(2) concerning the renewal fee for the 3rd year in the course of the proceedings.
• The renewal fee for the 4th year was paid in the course of the appeal proceedings.
• The original period was for the fees under Rule 159. The Italian lawyer had only filed the translation(s) and the  Form 1200 Request for entry into the European phase, indicating that the fees would be paid by bank payment and not including a debit order.

EPO Headnote

If the European Patent Office issues a promise or statement on how to act in a given area, the principle of legitimate expectations requires that promise or statement to be honoured unless there is good reason not to do so. Users and representatives cannot be expected to question, without any apparent reason, statements on the extension of time limits which are made in publications under Rule 134(4) EPC. Even in the absence of a general dislocation in the delivery or transmission of mail, they can rely on such publications without suffering any disadvantages

EPO J 0010/20 J10/20 J 10/20

https://www.epo.org/law-practice/case-law-appeals/recent/j200010eu1.html

Summary of Facts and Submissions

I. The appeal of the applicant (appellant) lies against the decision of the Receiving Section of 5 December 2019 on European patent application No. 16874169.2. In this decision, the appellant's request for re-establishment of rights into the period for filing a request for further processing was deemed not to have been filed and the European patent application was deemed to be withdrawn with effect of 17 July 2018.

II. On 16 July 2018, the appellant filed Form 1200 for entry into the European phase of the international application No. PCT/BR2016/050317.

T 0319/18 - Rejoinder in appeal

 Key points

• This is an opposition appeal.
• “The fifth auxiliary request, which had already been filed in opposition proceedings, was submitted with the rejoinder to the statement of grounds of appeal. Claim 1 of this request had been limited essentially by combining features of granted claims 2, 3 and 4. The only explanation provided in said rejoinder was an indication of the claims of the granted patent from which the features had been derived. However no reasons were provided explaining why the amendments had been made and how they were intended to overcome the objections raised by the appellant.”
• As a matter of terminology, in inter partes appeals we have the Statement of grounds, the written reply of the respondent under Art. 12(1)(c) RPBA 2020, and the further reply of the appellant indicated in Explanatory Note 13(2) to the RPBA 2020 (“The intention behind the two-month minimum waiting time is to give a party the opportunity to react to another party’s written reply with submissions falling under the less strict second level of the convergent approach, i.e. Art. 13(1)”). 
• I personally tend to use the terms ‘appeal reply brief’ of the respondent and the rejoinder (under Explanatory Note 13(2)) of the appellant. Both can be critical to the appeal procedure for parties to maintain their case.
• The Board: “Unless the purpose of the amendments in respect of overcoming the prevailing objections is self-explanatory, in the situation where reasons explaining why the new claims overcome the outstanding objections are filed after the statement of grounds of appeal or the reply, these reasons constitute an amendment to the party's appeal case, which may be admitted into the proceedings only at the discretion of the Board.”.
• “In the present case, the mere fact that the fifth auxiliary request was formally filed during the opposition procedure does not automatically render it part of the appeal case, since its admission had not been examined by the opposition division, due to the fact that the patent was maintained as granted.”
• “It is established jurisprudence of the Boards of Appeal that requests that are not self-explanatory become effective only at the date on which they are substantiated”
• “the Board in agreement with the case law cannot follow the respondent's [patentee's] argument that the amendment is as such admissible as it merely constitutes a combination of granted claims (see e.g. T 1752/09, reasons 3.3 and T 569/08, headnote). Therefore also a mere combination of granted claims, which, as in the present case in the light of the particular objections raised, is not self-explanatory, does not satisfy the requirements of Article 12(2) RPBA 2007.”
• The explanation/substantiation was submitted with a letter filed after notification of the summons.
• “ the new submissions provided [with said letter] constitute an amendment to the respondent's appeal case compared to that set out in the initial pleadings, the admission of which is subject to the discretion of the Board”. There were no exceptional circumstances and the 5th AR is not admitted. 

EPO T 0319/18

https://www.epo.org/law-practice/case-law-appeals/recent/t180319eu1.html

2. Fifth auxiliary request - admittance

The fifth auxiliary request, which had already been filed in opposition proceedings, was submitted with the rejoinder to the statement of grounds of appeal. Claim 1 of this request had been limited essentially by combining features of granted claims 2, 3 and 4.

The only explanation provided in said rejoinder was an indication of the claims of the granted patent from which the features had been derived. However no reasons were provided explaining why the amendments had been made and how they were intended to overcome the objections raised by the appellant.

An explanation was provided with the letter bearing the date 19 October 2020, received on 19 November 2020, after the Board had indicated in its preliminary opinion the lack of motivation with respect to the auxiliary requests.

T 1679/17 - No partial inadmissibility, and checking the minutes

 Key points

• The respondent/ patentee argues that the appeal of the opponent is partially inadmissible so far as inventive step is concerned. The Board explains that the EPC does not have the concept of partial inadmissibility of appeals and provides a summary of some established case law.
• The Board, in German: “Zum einen kennt das EPÜ und die dazu ergangene Rechtsprechung das Konzept einer teilweisen Unzulässigkeit nicht. Sofern ein Einwand gegen die angefochtene Entscheidung in einer der Regel 99(2) EPÜ entsprechenden Weise vorgetragen wurde, ist die gesamte Beschwerde zulässig. Andere Einwände mögen dann vielleicht nicht ausreichend substantiiert im Sinne von Artikel 12(2) VOBK 2020 sein, dies führt aber nicht zu einer Teilunzulässigkeit, die sich durch späteren Vortrag ja nicht mehr beheben ließe, sondern nur dazu, dass diese Einwände, sofern sie erst später substantiiert werden, unter dem Zulassungsvorbehalt der zum Zeitpunkt ihrer verspäteten Substantiierung anwendbaren Ermessensvorschrift (Artikel 13(1) oder 13(2) VOBK) stehen. Zum anderen wäre gemäß ständiger Rechtsprechung der Beschwerdekammern eine Beschwerde nicht allein deshalb als unzulässig zu betrachten, weil sie sich auf Beweise stützt, die erstmals mit der Beschwerdebegründung vorgelegt wurden.”
• Note that in case you wish to contest the decision of the OD to not admit prior art documents, you must both show the serious error in that decision and that the claims are not patentable taking into account those documents. “Die Beschwerde befasst sich gerade mit dieser Nichtzulassungsentscheidung und versucht zum einen darzulegen, warum die Einspruchsabteilung hier fehlerhaft entschieden hat und warum zum anderen die Erfindung, hätte man die nicht zugelassenen Dokumente berücksichtigt, nahe gelegen hätte. ”
• The Board, in response to a craetive argument of the patentee regarding admissibility: “Die Ansicht der [patentee/respondent], man dürfe zur Patentfähigkeit nicht mit Dokumenten argumentieren [in appeal], die die Einspruchsabteilung nicht zugelassen hat, würde im Ergebnis dazu führen, dass Nichtzulassungsentscheidungen nicht effektiv mit der Beschwerde angefochten werden könnten, was zu ersichtlichen Rechtsschutzlücken führen würde.”
  
  
• The Board, about the obligation to carefully review the minutes of the first instance oral proceedings directly after receipt: “Die Kammer weist darauf hin, dass nach ständiger Rechtsprechung der Beschwerdekammern von den Parteien und deren Vertretern zu erwarten ist, dass der Inhalt einer Niederschrift, insbesondere dessen Vollständigkeit und Korrektheit, direkt nach dem Erhalt sorgfältig geprüft wird und ggf. zeitnah bemängelt wird, weil er die einzige Möglichkeit darstellt, nachzuvollziehen, was sich während der mündlichen Verhandlung vor der ersten Instanz tatsächlich ereignet hat”
• The opponent disputes that it had withdrawn the attacks based on Art. 83 and Art. 123(2) in the first instance oral proceedings. 

EPO T 1679/17 

https://www.epo.org/law-practice/case-law-appeals/recent/t171679du1.html

(decision text omitted)

T 1388/17 - The Zone diet

 Key points

• By way of technical primer: en.wikipedia.org/wiki/Zone_diet : “The Zone diet is a fad diet emphasizing low-carbohydrate consumption. ... The Zone diet proposes that a relatively narrow distribution in the ratio of proteins to carbohydrates, centered at 0.75, is essential to "balance the insulin to glucagon ratio, which purportedly ... ultimately produces a cascade of biological events leading to a reduction in chronic disease risk, enhanced immunity, maximal physical and mental performance, increased longevity and permanent weight loss.””
• Claim 1 is directed to “A nutritional formulation or composition”. The closest prior art is D13/D19, namely the book "The Zone". The Board: “This book is on a diet for achieving several health benefits by maintaining the body's eicosanoids in balance, which is referred to as "the Zone".”
• The patentee is a major multinational.
• “The skilled reader would have learnt from these two studies that a Zone-favourable diet is suited to lower insulin resistance and it may be administered as a single nutritional formulation or composition (e.g. a candy bar). Such a nutritional formulation or composition replaces the diet. This is the disclosure regarded as the closest prior art.”
• No technical effect is credible for the distinguishing features. “he objective technical problem consists in providing an alternative composition for lowering insulin resistance.”
• The features are found obvious further in view of D15.
• As to the request for remittal: “The [patentee] requested that if the board found that the main request was inventive over document O1-D13/D19 in combination with O1-D17, and the board was going to also consider inventive step in light of document O1-D15, that the case be remitted to the department of first instance for further prosecution.”
• “The [patentee] clarified that its intention was to prevent the examination of a claim based on O1-D13/19 as the closest prior art in combination with O1-D15.”
• The Board: “It is true that in accordance with Article 12(2) RPBA 2020 the primary object of the appeal proceedings is to review the decision under appeal in a judicial manner.”
• The Board: “The board fails to see that the use of a different secondary document (O1-D15) instead of the one which the opposition division used in finding that the requests before them lacked inventive step (O1-D17) constitutes special reasons for remittal [in the sense of Article 11 RPBA 2020].”
• “This is all the more so because O1-D15 had been discussed during the opposition proceedings and the opposition division had also acknowledged this, both in the minutes and the decision. Moreover, the appellant had ample time to address this document and did so after receiving the board's  [preliminary opinion which drew attention to D15].”

EPO T 1388/17  - https://www.epo.org/law-practice/case-law-appeals/recent/t171388eu1.html

Reasons for the Decision

1. The patent in suit relates to a nutritional composition for improving glucose and insulin balance in an individual (paragraph [0001]). In particular, it concerns a composition or dietary regimen aimed at increasing insulin sensitivity and lowering insulin resistance (paragraph [0012]).

T 0205/17 - Improving mental capacity of aged canine pets

Key points

• In this opposition appeal, the question is whether the following claim wording is a proper second medical use in the sense of Art. 54(5) EPC.
• Claim 1 at issue: “An antioxidant for use in inhibiting the deterioration of the mental capacity of an aged companion pet ... ”
• The Board finds that this is a medical use.
• “As decided by the board in T 81/84 (in particular Reasons 3), the concept of therapy should not be construed narrowly. The term "therapy" covers "any treatment which is designed to cure, alleviate, remove or lessen the symptoms of, or prevent or reduce the possibility of contracting any disorder or malfunction of the human or animal body" (see T 24/91, Reasons 2.7).”
• “Although ageing as such is not a disease, the treatment or prevention of symptoms which may, but do not necessarily, manifest themselves during the ageing process is a therapeutic intervention. Thus, the board does not accept the appellant's argument that the principles outlined in T 81/84 and T 24/91 do not apply to the case in hand.”
• As to sufficiency: “The tests described in the patent show that aged beagle dogs fed with a diet enriched with the four claimed antioxidants ... scored better in learning and discrimination tests than aged beagle dogs fed with a comparative diet”
  
  
• There is also an attack based on invalid priority due to alleged lack of assignment of the priority right from the inventors/applicants of the four priority applications (US provisional applications) to the PCT applicant. 
• However, the attack is not admitted. “there was no reason to raise new objections relating to P1, P2 and P4 [three of the four priority applications] on appeal. The same applies to [the opponent's] new objection [...] that P3 does not qualify as the first invention under Article 87 EPC. As admitting these issues would have been detrimental to procedural economy, D43 [document with an extract from USPTO public PAIR about assignments] and the aforementioned new objections are not admitted into the proceedings (Article 13(1) RPBA 2020).”
• The claims are found to be novel and inventive.

T 0205/17 - https://www.epo.org/law-practice/case-law-appeals/recent/t170205eu1.html

Reasons for the Decision

The second auxiliary request

The second auxiliary request is the only request relevant for the present decision.

1. Article 12(4) RPBA 2007, Rule 80 EPC, no reformatio in peius

1.1 The second auxiliary request is a revised version of the second auxiliary request filed on 12 February 2016 during the proceedings before the opposition division. It contains essentially the same amendments made to the claims of the main request to address the objections raised during the oral proceedings before the opposition division. The filing of this request with the statement setting out the grounds of appeal, thus at the earliest stage of the appeal proceedings, is therefore justified and does not raise any new unexpected issues, so there is no reason to hold this request inadmissible pursuant to Article 12(4) RPBA 2007.

T 1295/20 - Using webform filing in appeal proceedings

 Key points

• This is an interlocutory decision in examination appeal.  The Notice of appeal lacked the address of the appellant (Rule 99(1)(a). The Registrar invites on 13.07.2020 the applicant to remedy the deficiency within two months (Rule 101(2). The applicant submits the address with a letter of 22.07.2020, however using webform filing. The letter includes the signatures of a European patent attorney.
• Webform filing is not permitted inter alia for appeal proceedings according to the Decision of the President in OJ 2018, A45. That decision provides that "Documents filed in contravention of paragraph 1 will be deemed not to have been received. The sender, if identifiable, will be notified without delay."
• In this case, the sender was notified by the Registrar on 22.10.2020, well after the expiry of the two-month period. Hence, the document is in principle deemed not to have been received and the appeal inadmissible. 
• The appellant files a letter with the address using online filing on 03.11.2020 and (auxiliary) submits a request for further processing with payment of the fee. 
• The present Board decides that the principle of good faith (legitimate expectations) applies. The EPO should have informed the applicant of the error with the webform letter of 22.07.2020 as the error was clear (e.g. in the footer of the letter, receipt by webform was indicated), the appellant could easily be contacted (it was just the applicant on file) and there was still enough time until the expiry of the period. 
• The appeal is therefore admissible and the further processing fee is refunded.
• The Board: “Die Beschwerdeführerin konnte daher erwarten, dass sie unverzüglich auf die nicht statthafte Einreichung ihres Schreibens vom 22. Juli 2020 mittels Web-Einreichung hingewiesen würde. Dies hätte es ihr - angesichts der fast 2 Monate vor Fristende der ihr gesetzten Zweimonatsfrist erfolgten Nachreichung ihrer Anschrift mittels Web-Einreichung - erlaubt, die fehlende Anschrift mittels einer zulässigen Einreichungsform noch fristgerecht nachzureichen.”
• As a comment, see e.g. also T 1633/18 regarding webform filing for an appeal document, and the principle of protection of legitimate expectations. Moreover, T0662/09 held that “It is standard case law that the provisions of Rule 99(1)(a) EPC [i.e. including the address] are satisfied if the notice of appeal contains sufficient information for the identification of the party.” The Notice of appeal mentioned the name of the appellant, which appears to be the applicant on file, and was submitted by the representative on file. I'm not sure if the invitation of 13.07.2020 was justified from the outset, I'm also not sure if the Board can review the decision of the Registrar to send out the invitation under Rule 101(2).
• The order of the decision is that “ 1. Die Behebung des Mangels der fehlenden Anschrift ist als rechtzeitig zu betrachten” (and refund of the FP fee)  I note that the Board does not decide that the appeal is admissible. I also note that the Notice of appeal was filed using OLF on 16.04.2020 and already included the grounds such that it may possibly not relevant that a copy of the Notice of appeal was filed with webform filing also on 22.07.2020, so about 4 months after the refusal decision dated 16.03.2020. 

EPO T 1295/20 - https://www.epo.org/law-practice/case-law-appeals/recent/t201295du1.html

Sachverhalt und Anträge

I. Am 16. April 2020 wurde Beschwerde gegen die Entscheidung der Prüfungsabteilung über die Zurückweisung der europäischen Patentanmeldung Nr. 17 181 318.1 eingelegt.

II. Mit einer Mitteilung gemäß Artikel 108 Satz 1 und Regel 101 (2) EPÜ vom 13. Juli 2020 beanstandete die Geschäftsstelle der Kammer, dass die Beschwerdeschrift entgegen Regel 99 (1) a) EPÜ in Verbindung mit Regel 41 (2) c) EPÜ nicht die Anschrift der Beschwerdeführerin enthielt. Die Beschwerdeführerin wurde aufgefordert, diesen Mangel innerhalb einer Frist von zwei Monaten nach Zustellung dieser Mitteilung zu beheben. Sie wurde auch darauf hingewiesen, dass wenn dieser Mangel nicht rechtzeitig behoben werde, die Beschwerde voraussichtlich gemäß Artikel 108 Satz 1 EPÜ in Verbindung mit Regel 101 (2) EPÜ als unzulässig zu verwerfen sei.

T 0115/18 - Obvious and non-obvious alternatives

 Key points

• This opposition appeal decision deals with various interesting points.
• Oral proceedings took place on 30.07.2020, physically, despite a request for postponement. “The respondent requested postponement of the oral proceedings. The reasons indicated were a very general reference to the ongoing COVID-19 pandemic and expected travel restrictions. However, the board was not presented with information on travel restrictions between The Netherlands, where the representative for the respondent was located, and Munich or Munich and The Netherlands in force at the time the request was filed or up to the date of the oral proceedings. Therefore the request was not allowed and the oral proceedings were not postponed.”
• About inventive step of alternatives: “It is established case law of the boards of appeal of the EPO that, when the objective technical problem addressed is the provision of an alternative, as in the case at hand, an arbitrary selection from amongst a number of known possible solutions cannot be considered to involve an inventive step (see for example decision T 939/92, reasons 2.5.3).”
• For inventive step of the auxiliary request: “Thus the [] objective technical problem that can be derived from the [amended distinguishing feature remains the provision of an alternative method for purifying [a compound].”
• The inventive step attack was based on D4 as the closest prior art, adding a 'virus inactivation step' as taught by D8 (which was obvious, as decided for the main request) and further changing the compound Tween 80 used in D8 into Tween 20 (as now specified in the claim) based on e.g. D24.
• “In the board's view, in the absence of any identified pointer to Tween 20 [as now specified in the claim], the claimed solution was not obvious to the skilled person unless, as was argued by the [opponent] with reference to document D24, Tween 80 [used in the prior art document D8] and Tween 20 were known to the skilled person as being equally suitable for virus inactivation in protein production processes. ... Document D24 is [] silent on the [opponent's] allegation that the detergents are equivalent for the purpose they serve in the method claimed, i.e. virus inactivation. .... In view of the above, the board has come to the conclusion that the skilled person seeking to provide an alternative to the method disclosed in document D4 [the closest prior art] had no reason to modify it by introducing virus inactivation by the use of Tween 20. Thus the claimed solutions were not obvious to the skilled person when starting from the disclosure in document D4.”

T 0115/18 -  link

(decision text omitted)

T 0191/17 - More about the appeal fee refund

 Key points

• The appellant indicated that it will not attend the oral proceedings.
• The present Board agrees with T 73/17 (same Board 3.2.07, different composition) that merely announcing that the appellant will not attend is not enough for the partial refund of the appeal fee under Rule 103(4)(c).
• The present Board disagrees with T 517/17 which had found that such an announcement is enough.
• The present decision, in machine translation: “In the Board's view, these considerations [in T517/17] do not seem to fully capture the fact that the requirements under Article 116 (1) EPC for oral proceedings at the request of a party on the one hand and under Rule 103 (4) c) EPC for the partial reimbursement of the appeal fee, on the other hand, are conceptually different.”
• “Both the wording of the provision and its legislative history thus guide the Board's understanding of Rule 103(4)(c) EPC that a partial reimbursement of the appeal fee requires an express withdrawal of the request for oral proceedings, not just an announcement of non-participation at an oral hearing.”
• The whole point is a bit obiter because the appellant made the announcement well after the period of one month set in Rule 103(4)(c) EPC.
• As a comment, hopefully, the discrepancy in the case law will be resolved soon e.g. by a referral to the Enlarged Board.

EPO T 0191/17  - link

6. Im Ergebnis

- ist weder eine Verletzung des Gebots auf ein faires Verfahren noch eine Verletzung des rechtlichen Gehörs zu erkennen,

- begründet keiner der seitens der Beschwerdeführerin erhobenen Einwände in überzeugender Weise die Unrichtigkeit der angefochtenen Entscheidung sowie

- sind die Hilfsanträge 1 bis 8 nicht ins Verfahren zugelassen.

Die Beschwerde ist daher zurückzuweisen.

7. Regel 103 (4) c) EPÜ - Ankündigung, nicht an der mündlichen Verhandlung teilzunehmen

7.1 Die Beschwerdeführerin erklärte im Schriftsatz vom 25. Januar 2021, dass sie an der für den 29. Januar 2021 anberaumten mündlichen Verhandlung nicht teilnehmen werde, zu der die Verfahrensbeteiligten ordnungsgemäß geladen worden waren.

T 1573/20 - Clearly inadmissible appeal

Key points

• In this appeal against a refusal decision, no Statement of grounds was filed. A Notice of appeal was filed, including a request for oral proceedings, and the appeal fee was paid. The Board invited the appellant to comment on the missing Statement of grounds; no response was received. The question is how to deal with the request for oral proceedings contained in the Notice of appeal.
• It is established case law that no oral proceedings are held in such a case, see e.g. T 1042/07 hn: “In the absence of anything that can be regarded as a statement of grounds of appeal, the lack of any substantive response to a notification of the inadmissibility of the appeal is considered as equivalent to an abandonment of a request for oral proceedings initially made in the notice appeal”. See e.g. also recent case T 1686/20 essentially repeating that headnote. 
• The present Board takes a different approach: “The situation is therefore comparable to the "clearly inadmissible appeals" considered in decisions G 1/97 and G 2/19. These decisions are concerned with appeals by a non-party or based on non-existing remedies only. Nevertheless, the board is convinced that the Enlarged Board of Appeal did not consider these examples to be exhaustive. Rather, it acknowledged as a matter of principle that there are exceptions to the right to oral proceedings under Article 116 EPC (G 1/97, Reasons, point 6, last paragraph; G 2/19, Reasons, B II 2 and 8, C I). It follows from the rationale of the above decisions that the present case falls in the category of clearly inadmissible appeals and can be rejected without holding oral proceedings.”
• I note that in G2/19, the Enlarged Board considered the first question to be inadmissible (“In appeal proceedings, is the right to oral proceedings under Article 116 EPC limited if the appeal is manifestly inadmissible?”), because “[the] first question [] amounts to a generalisation applying to all cases in which an appeal appears to be "manifestly inadmissible". [An] answer to this question is only of extraneous and rather academic interest. That is insufficient to find the question admissible, especially as its reference to the criterion of a "manifestly inadmissible appeal" introduces an imprecise legal notion not taken from the European Patent Convention, which, therefore, does not offer a more detailed basis for defining it more precisely.”
• The present decision finds that there is a “category of clearly inadmissible appeals”, which is not restricted to the two cases considered by the Enlarged Board and is hence open-ended, moreover appeals in this category “can be rejected without holding oral proceedings”.

EPO T 1573/20 - link

Reasons for the Decision

Missing statement of grounds of appeal

1. No written statement setting out the grounds of appeal was filed within the time limit provided by Article 108, third sentence, EPC in conjunction with Rule 126(2) EPC. In addition, neither the notice of appeal nor any other document filed contains anything that could be regarded as a statement of grounds pursuant to Article 108 EPC and Rule 99(2) EPC. Therefore, the appeal has to be rejected as inadmissible (Rule 101(1) EPC).

T 2277/16 - Implicit features and novelty

Key points

• The Board, about novelty: “a prior art document anticipates the novelty of claimed subject-matter if the latter is directly and unambiguously derivable from that document, including any features implicit to a person skilled in the art. A disclosure can only be considered "implicit" if it is immediately apparent to the skilled person that nothing other than the alleged implicit feature forms part of the subject-matter disclosed”.
• I note that  T 0890/17 gave a different summary: “a prior art document is novelty destroying only if the skilled person would derive directly and unambiguously from the whole of that document, using common general knowledge, and seen objectively and relative to the date of said document, a subject-matter falling within the scope of what is claimed”.
• I prefer the approach of T0890/17. In the present case, claim 1 is directed to a composition comprising rozen lactic acid bacteria (LAB) culture which "comprises LAB that are able to utilize sucrose". The question is whether this is the case in document D3. D3 describes an ‘LAB’ bacteria strain (I assume in an enabling way) and according to the present Board the question is “whether document D3 implicitly discloses a LAB strain that can utilise sucrose. An implicit property of a disclosed product, here the specific Lm. cremoris strain ATCC 19254, can be established by evidence in other documents.”
• In terms of T0890/17, the question could be phrases as whether the strain ATCC 19254 at issue would be something falling within the scope of the claim under examination. The capability (or not) of the bacteria strain ATCC 19254 to utilize sucrose is an inherent property which can be established by evidence in other documents.
• I discuss more case law about novelty in my recent article in epi Information. Comments are welcome of course.

EPO T 2277/16 - link

Claim construction - claim 1

1. Claim 1 is directed to a frozen lactic acid bacteria (LAB) culture which is characterised by the following features:

(i) "comprises LAB that are able to utilize sucrose";

(ii) is a mixture of mesophilic LAB, i.e. it contains at least two LAB, having an optimum growth temperature at about 30°C;

(iii) has a weight of at least 50g of frozen material;

(iv) has a content of viable bacteria of at least 10**(9) colony forming units (CFU) per gram of frozen material; and

(v) comprises from 0.5% to 80% of a cryoprotective agent measured as w/w of the frozen material.

5. According to the established case law, a prior art document anticipates the novelty of claimed subject-matter if the latter is directly and unambiguously derivable from that document, including any features implicit to a person skilled in the art. A disclosure can only be considered "implicit" if it is immediately apparent to the skilled person that nothing other than the alleged implicit feature forms part of the subject-matter disclosed (see Case Law, I.C.4.3, 116).

6. Thus, the first issue to be assessed is whether document D3 implicitly discloses a LAB strain that can utilise sucrose. An implicit property of a disclosed product, here the specific Lm. cremoris strain ATCC 19254, can be established by evidence in other documents.

J 0009/18 - RE request, assistant hiding letters

 Key points

• The Receiving Section finds that the application is deemed to be withdrawn because of the designation fee and examination fee were not paid and no response to the search opinion was filed. 
• The applicant requests further processing (represented by a well-known patent firm) but two days after expiry of the time limit for FP according to the EPO. The EPO invites the applicant to comment within a period of two months.
• About six months later, a request for re-establishment is filed. The European patent attorney explains that only recently became aware that the FP request had been filed late.
• The RE request is quite detailed, see below
• The Receiving Section then issues an appealable decision (link), not signed and bearing no name, stating the the RE request 'can not be dealt with' since 'this is not an available means of redress' and that the EPO's opinion regarding the further processing 'has become final since no timely reaction was received' to the Communication of 15 March. The applicant files the appeal.
• The Legal Board's preliminary opinion is quite negative as to whether the RE request was timely filed, but there is a thorough rebuttal and the applicant focuses on the substantial procedural violation in the first instance proceedings.
• The Legal Board finds two procedural violations: deciding on the RE request without deciding on the request for oral proceedings, and the immediate rejection of the RE request "without it having issued any prior communication informing the applicant of the department's preliminary opinion." The dismissal of the RE request was also insufficiently reasoned. The lack of name of the EPO officer writing the decision is the fourth substantial procedural violation.
• The Board remits the case without deciding on the RE request, as per the applicants final main request. 
• The RE request is based on exceptional alleged facts. The assistant of the attorney would have filed to file the response to the search report by the normal time limit and from that time would have hidden all further EPO Communications (received on paper), possibly intercepting them from the attorneys personal letter box and not docketing them. She would  have filed the FP request herself using the attorney's smart card without authorization (this document, p.10,  indicates that the assistent admitted having used the smart card  without authorization).
• The Board does not comment on the alleged facts in the decision.
• The file contains a letter of the applicant with extensive arguments why the 2-month time limit for requesting RE should run only from actual knowledge of the problem of the patent attorney and why it is not correct to ask when the patent attorney would have been aware of the problem if he had acted with all due care (cf. T 0198/16, obiter therein). 

https://www.epo.org/law-practice/case-law-appeals/recent/j180009eu1.html

Summary of Facts and Submissions

I. The applicant (appellant) appealed against the decision of the Receiving Section posted on 7 February 2018. The tenor of the decision reads as follows:

1. The EPO's opinion as stated in our communication under Article 113(1) EPC dated 15 March 2017 (EPO Form 1103B) has become final since no timely reaction from the applicant/representative was received within the appropriate time limit and therefore the application is deemed to be withdrawn with legal effect as of 12 November 2016.