T 1399/17 - Adapting the description

Key points

• In this opposition appeal, “The parties disagreed as to whether the patent specification had been correctly adapted to reflect the added mandatory feature of claim 1. The respondent [patentee] argued that it considered the adaptation of the description appropriate. The term "natural fat" neither excluded modified triglyceride molecules nor was relevant for the patentability of the claims.”
• The Board: “This is not convincing. Article 84 EPC requires that the claims be supported by the description. This also applies to claims which have been amended in opposition (Article 101(3)(a) EPC). A mandatory feature of claim 1 is that the dietary fat be a blend of natural fats. However, the specification of the patent as amended in the oral proceedings does not reflect this. Therefore, it casts doubts on the scope of the claim.”
• “On the basis of this alone, it is manifest that the description of the patent does not comply with the requirement of Article 84 EPC. Consequently, the main request is not allowable.”

T 1399/17 -

epo.org/law-practice/case-law-appeals/recent/t171399eu1.html

2. Main request - adaptation of the description

2.1 Claim 1 includes the feature, added from a dependent claim as granted, that the "dietary fat is a blend of natural fats". The parties disagreed as to whether the patent specification had been correctly adapted to reflect the added mandatory feature of claim 1. The respondent argued that it considered the adaptation of the description appropriate. The term "natural fat" neither excluded modified triglyceride molecules nor was relevant for the patentability of the claims.

2.2 This is not convincing. Article 84 EPC requires that the claims be supported by the description. This also applies to claims which have been amended in opposition (Article 101(3)(a) EPC). A mandatory feature of claim 1 is that the dietary fat be a blend of natural fats. However, the specification of the patent as amended in the oral proceedings does not reflect this. Therefore, it casts doubts on the scope of the claim. The following non-exhaustive examples are given:

- According to paragraph [0014], last sentence, it is not a mandatory feature but only a desirable one:"Desirably the balance of fatty acids is achieved using a blend of natural fats...".

- In paragraph [0040], it is still stated that

"[p]referably" the dietary fat composition is a blend of natural fats. The entire paragraph and in particular the second sentence, in which it is discussed that the dietary fat composition "is... a structurally modified triglyceride-based dietary fat composition", does not support claim 1.

- In paragraph [0125], it is stated that interesterified fats "may still be used in the present invention". It would be straightforward for the skilled person that interesterified fats are not natural fats. This is confirmed in paragraph [0191] of the patent in suit ("The terms 'natural fat' and 'natural oil' ... does not contain a significant level of triglyceride molecules which have been artificially structurally modified (e.g., by chemical or enzymatic interesterification)...") and also in D11-N (e.g. page 110, left column, third paragraph).

- The section of the patent in suit entitled "Examples" and beginning before paragraph [0208] suggests that interesterified fats are part of the invention.

2.3 On the basis of this alone, it is manifest that the description of the patent does not comply with the requirement of Article 84 EPC. Consequently, the main request is not allowable.

T 1991/17 - By inducing osteogenesis

 Key points

• This is an opposition appeal: “The opposition division came to the conclusion that the main request fulfilled the requirements of the EPC. The opponent filed an appeal. ”
• “There was [] disagreement between the parties on whether the term "by inducing osteogenesis" was suitable for establishing novelty over document (11). A closer look is thus necessary.”
• In the present case, the respondent [patentee] has relied on two aspects that would constitute such specific use [in the sense of G2/08] : 1) the term "by inducing osteogenesis" as a technical effect and 2) the sub-group of patients to be treated, distinguished on the basis of this technical effect.
• Claim 1 is directed to “A compound for use in the treatment or prevention of bone metabolic diseases associated with osteopenia by inducing osteogenesis, [wherein the compound is selected from the group consisting of ...]”
• The Board, after an extensive analysis: “To sum up, the technical effect of inducing osteogenesis is closely and inseparably linked to the known effects of the compound under consideration. In consequence, the terms "by inducing osteogenesis" cannot define the inherent presence of a new (sub) group of patients. Such a group of patients is also not explicitly mentioned in claim 1 [at issue]. Therefore, the technical effect of inducing osteogenesis is not suitable for establishing a new specific use in the treatment of osteopenia. In view of the above, the board concludes that the subject-matter of claim 1 of auxiliary request 1 relates to the same compound for use in the same treatment of the same condition as document (11). The subject-matter of claim 1 of auxiliary request 1 lacks novelty (Article 54 EPC).”
• In more detail: “In conclusion, the board considers that the patent in suit provides information on a new mechanism of action of peptide D, one of the claimed compounds. This mechanism of action is closely and inseparably linked to the known activity of peptide D of inhibiting bone resorption. No evidence of complete uncoupling of these two activities has been shown. The claimed use cannot be distinguished from the known use of peptide D. The technical effect of inducing osteogenesis is therefore not apt to constitute a new specific use in the sense [of G2/08] ”
• As to the admissibility of AR-2 filed during the oral proceedings before the Board after the Board had announced its conclusion on AR-1: “The fact that claim 1 of auxiliary request 2 differs from claim 1 of auxiliary request 1 merely in the deletion of features does not change the situation. The patent proprietor is the party that is solely responsible for determining the text of the patent (see Article 113(2) EPC). It is obliged to submit amendments or possible fall-back positions. For reasons of procedural economy and fairness to the other party this must be done at the earliest possible opportunity. The nature of the amendments is not decisive for the application of Article 13(2) RPBA.”
  
  

https://www.epo.org/law-practice/case-law-appeals/recent/t171991eu1.html

T 1991/17 -

Reasons for the Decision

1. The appeal is admissible.

2. Admission of documents (31) to (34)

Documents (31) to (34) have been admitted into the proceedings. In view of the outcome of the proceedings, it is not necessary to provide reasons for their admission.

3. Main request - sufficiency of disclosure

3.1 Claim 1 of the main request defines compounds for use in a method referred to in Article 53(c) EPC. The definition of the compounds falling under (i) relies on a functional and a structural part.

3.2 The functional part requires that any of these compounds "acts on osteoblasts or cells capable of differentiating into osteoblasts and promotes differentiation, proliferation, maturation, or calcification of osteoblasts or cells capable of differentiating into osteoblasts".

The application as filed contains information on how to determine whether the conditions required by the functional part of the definition of the compounds are fulfilled. In paragraph [0044] (of the A publication) the increase in the alkaline phosphatase activity of the cells and the degree of calcification of the cells is mentioned. Protocols for in vitro tests for these two methods can be found in Examples 1 and 2.

3.3 The structural part includes references to precise structures (peptidic structure known as RANK (or fragment thereof)), compounds comprising certain amino acid sequences (SEQ ID NO: 7 or SEQ ID NO: 16), certain functionally defined structures (antibody or functional fragment thereof having a certain specificity), but also includes compounds of which the structure is merely related to a known structure in an unspecific way, i.e. "a variant of RANK".

T 2697/16 - Inventive alternative

 Key points:

• The Board: “Although the case law defines the skilled person as being cautious and having a conservative attitude, it also acknowledges that furthering the state of the art belongs to the normal tasks of the skilled person and that routine adaptations as well as the use of known alternatives do not go beyond what may be normally expected from a skilled person (cf. [T 1715/15 and T 688/14).”

T 2697/16 -

https://www.epo.org/law-practice/case-law-appeals/recent/t162697eu1.html

24.5 Thus, the board agrees with the findings of the opposition division and considers that the objective technical problem needs to be formulated in the terms used by the opposition division and the appellant, namely the provision of an alternative method for the production of IgG1 antibodies.

25. It remains to be assessed whether, starting from the closest prior art document (2) and the above formulated less ambitious technical problem, a skilled person would have arrived at the claimed subject-matter in an obvious manner. For carrying out this assessment, the so-called "could-would approach" followed by the opposition division is appropriate (cf. "Case Law", supra, I.D.5, 197). In this context, the appellant referred to documents (20) and (1) as leading the skilled person, when starting from document (2), to the claimed subject-matter in an obvious manner.

T 0646/20 - Addition of further designated states after grant (no)

 Key points

• “This is a case where the patentee appeals against the grant of its own patent. Most of the arguments revolve around the question of whether the patentee was adversely affected by such grant, but also around questions on the interpretation of the remedy of "further processing" under Art. 121 EPC.”
• “European patent application 07747361 [] was filed on 2 April 2007, that is, before the EPC 2000 came into force on 13 December 2007. Under the EPC 1973, EPC Member States had to be designated individually, and a designation fee for each Member State had to be paid. In the present case, designation fees for five Member States (DE, DK, ES, GB and PT) were paid, but not for the others. [] In regard of the other Member States and Extension States, a "noting of loss of rights pursuant to Rule 112(1) EPC" (in the following "Notification") was sent to the applicant's representative on 5 December 2008. ... The appellant states that the Notification was never received, which the Board under Rule 125 (4) EPC has to accept in the absence of any proof to the contrary.”
• “On 4 July 2019, the Office issued the decision to grant (now subject to appeal) that indicated 31 July as the date when the decision to grant would be published in the European Patent Bulletin. On the very day of 31 July 2019, the applicant filed a request for further processing in regard of the loss of rights for the remaining EPC Member States and Extension States communicated in the Notification of 2008, but not received by the applicant. With this request, the applicant filed the corresponding fee for further processing and the designation fees for the remainder of the EPC Member States and Extension States. Against the decision to grant, the appellant on 12 September 2019 filed a notice of appeal, paid the appeal fee on the same day and supplied the reasons on 13 November 2019.”
• The question is whether the appeal is admissible, in particular, whether the appellant is adversely affected. The Board finds that the appellant is not adversely affected by the decision to grant because it had paid the grant fee; according to the Board this includes approval of the designated states intended in the Druckexemplar
• The issue is not entirely clear to me. Rule 71(3) in the version applicable between 01.04.2009 and 31.03.2012 read "he shall be deemed to have approved the text intended for grant."  (OJ 2008 p.513). However, Rule 71(5) in the version in force since 2012 reads "he shall be deemed to have approved the text communicated to him under paragraph 3 and verified the bibliographic data" (OJ 2010 p.637). The intention to grant under Rule 71(3) was issued in April 2019 in the present case.
• The appellant argues that further processing was still available, the 2008 Notice of loss of rights never having been properly notified. “Not least in light of the appellant's argument that the availability of the remedy of further processing at the time the decision was rendered constituted an adverse effect (quod non), the Board finds it appropriate to address this issue.”
• “The Board accepts that the remedy of further processing does not require a pending application at the time the request is filed. But already the term "further processing of an application" indicates that it requires an application. An application that is deemed withdrawn can return to the stage of a pending application once the request for further processing is successful, but an application that has been granted cannot. An application that has turned into a granted patent cannot be further processed as an application”
• “Given the Board's interpretation of an applicant's approval in response to a communication under Rule 71(3), the Board further observes that even in the absence of receiving the Notification of loss of rights, the two-months period as specified in Rule 135 EPC should commence from the date of the Communication [under Rule 71(3) EPC]. This was the point in time when it fell on the applicant to check the complete file of its application at least in regard of the text and designated Member States mentioned in the Communication, and thus the point in time when the applicant should have had constructive knowledge of the designation of five Member States and the failure to designate the others. ”
• “Only in passing, the Board observes that the notification of a loss of rights under Rule 112(1) EPC is a "voluntary service" of the EPO (Case Law, 9**(th) ed. 2019, III.K.4.1), and the Board has some reservations as to whether the lack of receipt of such notice can indeed allow the applicant to request further processing even years after such notification has been dispatched.”
• I'm not sure if CLBA III.K.4.1 is very helpful on this point, as it seems to summarize J7/92 regarding renewal fees and re-establishment after failure to pay with surcharge. It would be rather strange if the EPO would not send out a Notice of loss of rights for cases where further processing is available.
• In my view, the EPO should docket a check for confirmation of receipt and if no confirmation is obtained, proceed with public notification under Rule 129 EPC (after the second attempt under current Rule 129 EPC. 
  
  
• As a bit of nit-picking, the usual phrasing is Contracting States of the EPC (not Member States). Moreover, for extension states, extension fees must be paid (not designation fees). Further, on the EPO website, the decision was given the catchword "Addition of further Designation States after grant", probably 'Designated States' was intended. Finally, the old designation fee system also applies for European applications filed between 13.12.2007 (entry into force of the EPC 2000) and 01.04.2009, see the current text of Rfees2(2). Nevertheless, it is correct that the application at issue was filed after the entry into force of EPC 2000 and that “Under the EPC 1973, EPC [Contracting States] had to be designated individually, and a designation fee for each [Contracting] State had to be paid.”

T 0646/20

https://www.epo.org/law-practice/case-law-appeals/recent/t200646eu1.html

Reasons for the Decision

1. Admissibility of the Appeal

1.1 It is good law that in order to correct the designation of Member States in a decision to grant, the only available remedy is to file an appeal against such decision (decision T 493/08 of 29 September 2009, point 6.2.1 of the reasons). Yet in order to file an appeal under Art. 107 EPC, the appellant must be adversely affected. This is questionable in a case where the applicant has approved the text intended for grant and the corresponding bibliographical data as set out in the Communication. The Enlarged Board of Appeal has so held in a case where the applicant after having approved the text intended for grant appealed against the decision to grant in order to obtain a correction of the granted patent (decision G 1/10 published in OJ 2013, 194).

T 2241/15 - Minutes are to be checked carefully and immediately

 Key points

• “ The Board observes that the minutes are the only means of ascertaining what had actually occurred during oral proceedings [...]. Thus, they should be checked carefully and immediately on receipt and correction of any perceived deficiency should be requested promptly.”

T 2241/15 -

https://www.epo.org/law-practice/case-law-appeals/recent/t152241eu1.html

decision text omitted.

T 2486/16 - Do not supplant

 Key points

• In this examination appeal the Board decides on the admissibility of an auxiliary request under Article 13(2) RPBA. The headnote is as follows, with the context of the decision added with bullet points.

1. In applying Article 13(2) RPBA 2020 the Board may also rely on the criteria set out in Article 13(1) RPBA 2020 ... . The criteria of Article 13(1) RPBA 2020 may therefore supplement, but do not supplant, the separate requirements of Article 13(2) RPBA 2020 (Reasons, point 6.4.1).

• “In the letter dated 15 December 2020 the only argument provided by the appellant in support of admitting these requests into the proceedings was that they were "prima facie allowable". The Board accepts that this is one of the criteria mentioned in Article 13(1) RPBA 2020. However, the Board does not feel it necessary to decide on the issue of prima facie allowability, since, even if this were accepted, the appellant did not provide cogent reasons why, in the present case, such prima facie allowability alone was sufficient to meet the requirement of Article 13(2) RPBA 2020 that there were "exceptional circumstances".”

2. When filing requests within the period mentioned in Article 13(2) RPBA 2020, the party, in providing its "cogent reasons", should not only identify the circumstances invoked and explain why they are to be regarded as "exceptional", it should also explain why these circumstances had the direct result of preventing the party from filing its requests at an earlier stage. (Reasons, point 6.5.6).

3. The mere fact that, in a communication under Article 15(1) RPBA 2020, the Board departs in some respects from the reasoning of the Examining Division on inventive step (while reaching the same conclusion) does not constitute "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020, nor does it open the door to the filing of new requests as a response (Reasons, point 6.6.3).

•     "The original applicant therefore went into receivership almost two years after the filing of the statement of grounds of appeal. Even if difficulties experienced by the original applicant were considered to constitute "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020, the appellant has submitted no evidence that the original applicant was experiencing any such difficulties at the date of filing the statement of grounds of appeal, when any auxiliary requests on which the appellant wished to rely should have been filed."

https://www.epo.org/law-practice/case-law-appeals/recent/t162486eu1.html

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

6. First and Second Auxiliary Requests: Admission into the Proceedings

6.1 A summons to oral proceedings pursuant to Rule 115(1) EPC was sent in May 2020, and hence it was notified after the date of the entry into force of RPBA 2020 (1 January 2020). By virtue of Article 25(1) and Article 25(3) RPBA 2020 e contrario, Article 13(2) RPBA 2020 therefore applies.

The Board's communication pursuant to Article 15(1) RPBA 2020 stated (under point 5) the following: "The appellant is reminded of the provisions of Article 13 RPBA 2020 on amendments ...".

6.2 Article 13(2) RPBA 2020 reads as follows:

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

The first and second auxiliary requests were filed with the letter dated 15 December 2020, hence after notification of the summons to oral proceedings, and therefore can, in principle, only be taken into account if there are "exceptional circumstances, which have been justified with cogent reasons by the party concerned".

T 1707/17 - Art. 13(2) RPBA 2020

 Key points

• The Board, in the headnote of this decision on an appeal against a refusal decision:
• “Article 13(2) RPBA 2020 requires the party not only to explain why the case involves exceptional circumstances, but also to explain why its amendment, in terms of both content and timing, represents a justified response to these circumstances. In particular, where a party seeks to amend its case at a very late stage in the proceedings, the cogent reasons referred to in Article 13(2) RPBA 2020 should include reasons why it was not possible to file such an amendment earlier”.
  
• The admissibility of an auxiliary request filed in the course of the oral proceedings was at issue. The Board is of the view that the request should have been filed earlier after the receipt of the Board's preliminary opinion raising the Art.123(2) issue that the requests aims to address.
• I note that in T 2486/16 hn.2 the Board stated somewhat similar, namely: "When filing requests within the period mentioned in Art. 13(2) , the party, in providing its ‘cogent reasons’, should not only identify the circumstances invoked and explain why they are to be regarded as ‘exceptional’, it should also explain why these circumstances had the direct result of preventing the party from filing its requests at an earlier stage"

T 1707/17 

https://www.epo.org/law-practice/case-law-appeals/recent/t171707eu1.html

2. Auxiliary Request 2: Article 13(2) RPBA 2020

2.1 Auxiliary Request 2 was filed at oral proceedings before the Board, hence after the notification of the summons to oral proceedings. Article 13(2) RPBA 2020 therefore applies:

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

Article 13(2) RPBA 2020 represents the third level of the convergent approach set out in the document CA/3/19 (see page 12 and the explanatory notes to Article 13(2)) approved by the Administrative Council at its 160th meeting in June 2019.

T 0013/19 - Courtesy owed to a Board

 Key points

• The Board, in the headnote: “It is no more than the usual degree of courtesy owed to a Board of Appeal as a court of final appellate jurisdiction that a party's intention not to attend the oral proceedings or any impediment to attendance is communicated as early as possible”
• The phrase "court of final appellate jurisdiction" appears to be used (according to Google) for referring e.g. to the Privy Council. I think the question of whether the Boards of Appeal are a court is somewhat controversial. 
• “If a representative is able to do so only when oral proceedings are already imminent, the courtesy requirement enshrined in Article 6 of the Code of Conduct of the Institute of Professional Representatives before the European Patent Office ("epi Code of Conduct"; cf. OJ EPO 2020, Supplementary publication 1) should have provided the representative with ample motivation to inform the registry promptly. Instead, the representative merely contented himself with remaining silent until he was contacted by the registrar and even then only filed a corresponding written confirmation after repeated enquiry.”
• I note that we don't know what instructions the representative had received from the client. If the client does not say that they have decided firmly to not attend oral proceedings, but just wishes to keep the options open or is not responsive to the reminders of the representative, the representative may be in a difficult position. 

T 0013/19

https://www.epo.org/law-practice/case-law-appeals/recent/t190013eu1.html

Reasons for the Decision

1. Procedural matters

1.1 The appellant having been duly summoned, the oral proceedings were held in absentia pursuant to Rule 115(2) EPC and Article 15(3) RPBA 2020.

1.2 As stated in point III above, the appellant's then representative informed the board at a very late stage that he would not be attending the arranged oral proceedings because he had resigned from representing the appellant. While it is not uncommon for a party not to appear at oral proceedings, the registry of the competent board is usually given notice well in advance of the oral proceedings.

It may have happened that the former representative became aware of the termination of his representation for the current case only in extremis. However, this seems to be unlikely, given that, from the file, it is apparent that the automatic debit order referring to the deposit account held by the representative's law firm was already revoked on 27 July 2020, upon the representative's request.

1.3 In any case, it is no more than the usual degree of courtesy owed to a Board of Appeal as a court of final appellate jurisdiction that a party's intention not to attend the oral proceedings or any impediment to attendance is communicated as early as possible.

If a representative is able to do so only when oral proceedings are already imminent, the courtesy requirement enshrined in Article 6 of the Code of Conduct of the Institute of Professional Representatives before the European Patent Office ("epi Code of Conduct"; cf. OJ EPO 2020, Supplementary publication 1) should have provided the representative with ample motivation to inform the registry promptly. Instead, the representative merely contented himself with remaining silent until he was contacted by the registrar and even then only filed a corresponding written confirmation after repeated enquiry.

The written confirmation being filed at an unreasonably late stage, the board became aware of an alleged change of the applicant's status de facto only one day before the oral proceedings, which prevented the registry from establishing whether or not that alleged new applicant - or a new representative - would be attending the oral proceedings instead. This necessitated the board to prepare for the oral proceedings and to wait courteously on the day of the oral proceedings in the event that someone would appear on behalf of the appellant - despite the well-known risks associated with the current Covid 19 pandemic.

1.4 It is lamentable that the present board is hence compelled to refer to the statement of T 954/93 (cf. Reasons, point 2) and to recall that such conduct is reprehensible (see also T 930/92, Headnote I).

T 0028/20 - (II) First level of convergence

 Key points

• The Board, applying new Art.12(4) RPBA 2020 (for the first time in a published decision in opposition as far as I know): "In its statement of grounds of appeal, the appellant [opponent] not only put forward an objection of lack of inventive step against the subject-matter of claim 1 of the main request starting from D9 as closest prior art - as during the opposition proceedings - but further argued that it lacked inventive step in view of D4 as closest prior art, in particular [...]”
• “ an objection of lack of inventive step based on D4 as closest prior art was neither dealt with in the contested decision, nor that there were any reasons justifying the submission of said objection for the first time in the statement of grounds of appeal.”
• “Under these circumstances, that objection does not fall under a party's appeal case as defined in Article 12(2) RPBA 2020 (since it is not directed to an objection on which the decision under appeal was based). Therefore it constitutes an amendment of the appellant's case in the sense of Article 12(4), first paragraph, RPBA 2020, whereby also the stipulations of Article 12(4) 2020, second paragraph are not satisfied, since the appellant has not explained why that objection was first raised in appeal.”
• Note that the Board refers to Article 12(4) 2020, third sentence as 'stipulations' that are to be 'satisfied', not merely as factors to be taken into account when making the discretionary decision on admissibility.
• “In view of the above, the Board finds it appropriate to make use of its discretion pursuant to Article 12(4), first paragraph, second sentence, RPBA 2020 by not admitting into the proceedings the objection of lack of inventive step starting from D4 as closest prior art.”
• As a comment, possibly the result would have been the same under Art.12(4) RPBA 2007 but the reasoning required under Art.12(4) RPBA 2007 would have been different in my view.

T 0028/20

https://www.epo.org/law-practice/case-law-appeals/recent/t200028eu1.html

3. Inventive step

3.1 Objections raised

3.1.1 In its statement of grounds of appeal, the appellant not only put forward an objection of lack of inventive step against the subject-matter of claim 1 of the main request starting from D9 as closest prior art - as during the opposition proceedings - but further argued that it lacked inventive step in view of D4 as closest prior art, in particular examples 4D-1 and 4D-2 thereof, in combination with common general knowledge or D9 (sections 6.18 to 6.20). The question of the admittance of that new objection was addressed in the Board's communication (section 7.5) and the respondent requested at the oral proceedings before the Board that said objection be not admitted.

3.1.2 In that respect, it was not contested by the appellant, in particular at the oral proceedings before the Board, that such an objection of lack of inventive step based on D4 as closest prior art was neither dealt with in the contested decision, nor that there were any reasons justifying the submission of said objection for the first time in the statement of grounds of appeal.

Under these circumstances, that objection does not fall under a party's appeal case as defined in Article 12(2) RPBA 2020 (since it is not directed to an objection on which the decision under appeal was based). Therefore it constitutes an amendment of the appellant's case in the sense of Article 12(4), first paragraph, RPBA 2020, whereby also the stipulations of Article 12(4) 2020, second paragraph are not satisfied, since the appellant has not explained why that objection was first raised in appeal.

In view of the above, the Board finds it appropriate to make use of its discretion pursuant to Article 12(4), first paragraph, second sentence, RPBA 2020 by not admitting into the proceedings the objection of lack of inventive step starting from D4 as closest prior art.

T 0028/20 - (I) The established decisive principle

 Key points

• The Board, on inventive step: "the established decisive principle governing the answer to the question as to what a person skilled in the art would have done depends on the result he wished to obtain (T 939/92, OJ EPO 1996, 309: point 2.5.3 of the reasons).”
• “In the case in hand, it must therefore be considered that the skilled person is deemed to be merely seeking to provide further impact-modified compositions in alternative to the ones of D9 but is not wishing to necessarily keep all properties obtained with the compositions of the examples of D9 at the same level.”

However, the established decisive principle governing the answer to the question as to what a person skilled in the art would have done depends on the result he wished to obtain (T 939/92, OJ EPO 1996, 309: point 2.5.3 of the reasons). In the case in hand, it must therefore be considered that the skilled person is deemed to be merely seeking to provide further impact-modified compositions in alternative to the ones of D9 but is not wishing to necessarily keep all properties obtained with the compositions of the examples of D9 at the same level. Thus, the skilled person would consider an increase in the amount of impact-modifier even in amounts higher than the ones taught in D9 as a useful and obvious measure, in particular to further increase the impact resistance of the compositions so prepared. In doing so, the skilled person would be merely accepting possible disadvantages (which were not demonstrated in the present case but only alleged, both by the opposition division and the respondent) related to the use of higher amounts of impact modifiers. In that respect, it is further noted that it is not credible to the Board that increasing the amount of impact-modifier from a maximum of 29.4 wt.% as taught in D9 to a slightly higher amount of 30 wt.% as defined in claim 1 of the main request may be expected to lead to so dramatic changes in the properties of the composition that the skilled person would be deterred from using such an amount of impact modifier.

https://www.epo.org/law-practice/case-law-appeals/recent/t200028eu1.html

T 1764/17 - Insufficient number of dependent claims

 Key points

• The Board makes some remarks about dependent claims as granted.
• The Board: “the proprietor's right to amend the patent is limited by Rule 80 EPC to overcoming opposition grounds, and is not an opportunity to fix shortcomings of the granted patent, such as an insufficient number of independent or dependent claims to define all commercially viable embodiments, or to improve fallback positions in future revocation proceedings before a national court.”
• The case is discussed in the forthcoming Case Law 2020 supplement of the O (link)

T 1764/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t171764eu1.html

4. Admissibility of auxiliary requests 20, 20A, 21, 21A, 22, 22A, 22B.

As already indicated by the Board in its communication, only in exceptional cases can the replacement of a granted single independent claim by two or more independent claims be considered to be occasioned by a ground for opposition. An exception might arise if two granted dependent claims were linked in parallel to a single independent claim. Then the filing of two independent claims including each one of the two parallel claim combinations might be possible, see Case Law of the Boards of Appeal, 9th edition 2019 (CLBA), IV.C.5.1.5.b), thus allowing separate fragments of the scope of protection afforded by the patent as granted to be retained. However, this exception does not apply to the addition of an independent claim directed at an aspect of the invention that was not included in the granted set of claims. As set out in CLBA, IV.C.5.1.1 the proprietor's right to amend the patent is limited by Rule 80 EPC to overcoming opposition grounds, and is not an opportunity to fix shortcomings of the granted patent, such as an insufficient number of independent or dependent claims to define all commercially viable embodiments, or to improve fallback positions in future revocation proceedings before a national court.

In the present case, at least one of the two independent claims of all auxiliary requests 20, 20A, 21, 21A, 22, 22A, 22B is directed at subject-matter that incorporates new features extracted from the description, that might moreover be material for the issue of patentability. These include a face seal portion having a face seal that is at least partially elastic, so that it can move with the user's jaw when the user talks. These independent claims are thus not straight combinations of granted claims and the above exception does not apply.

For the above reasons the Board considers that the filing of the two independent claims in these requests is not justified by a ground for opposition, contrary to Rule 80 EPC. The Board thus decided not to admit auxiliary requests 20, 20A, 21, 21A, 22, 22A, 22B.

T 0816/16 - The purpose of the CPA

Key points

• The Board finds the patent to be obvious in view of D7.
•  “ The [patentee] has stressed that other documents, especially documents mentioning all three mandatory ingredients, are closer to the claimed subject-matter than document [D7].”
• The Board: “the question of whether a particular disclosure is closer or further removed in relation to the subject-matter claimed is irrelevant. Starting the assessment of inventive step from the "closest prior art" serves the purpose of avoiding the need to consider a multitude of potential starting points as it can be assumed that wherever a particular claimed subject-matter involves an inventive step having regard to this "closest prior art", it will all the more involve an inventive step when the assessment is based on a disclosure which is not the "closest" prior art.”
• The Board: “ Under Article 56 EPC, a claimed invention can only be considered as involving an inventive step if it is not obvious to the skilled person having regard to the state of the art, i.e. any prior art disclosure subject to Article 56, second sentence, EPC. The board considers that in view of the outcome of the assessment of inventive step, it is irrelevant that other documents might potentially be closer.”
• As a comment, let me quote Szabo EIPR 1986 p.293-303 (the original source, so to say): “If the invention is, on the other hand, upheld in spite of the existence of the closest art, other less relevant citations need hardly be considered as starting points for such challenge. In case of more than one specific disclosure with virtually equal “closeness”; in this respect, it is worthwhile checking the results of the investigation from each starting point, since the outcome should be the same if eventually the same documents are considered together. An opponent may nevertheless always try to launch an attack based on a different document, and if successful, this would become the closest art in the given circumstances.” (note, 'always' here does not mean 'late in the procedure').

 T 0816/16 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t160816eu1.html

3.7 Further arguments

3.7.1 The respondent has stressed that other documents, especially documents mentioning all three mandatory ingredients, are closer to the claimed subject-matter than document (7).

In the board's opinion, the question of whether a particular disclosure is closer or further removed in relation to the subject-matter claimed is irrelevant. Starting the assessment of inventive step from the "closest prior art" serves the purpose of avoiding the need to consider a multitude of potential starting points as it can be assumed that wherever a particular claimed subject-matter involves an inventive step having regard to this "closest prior art", it will all the more involve an inventive step when the assessment is based on a disclosure which is not the "closest" prior art. Under Article 56 EPC, a claimed invention can only be considered as involving an inventive step if it is not obvious to the skilled person having regard to the state of the art, i.e. any prior art disclosure subject to Article 56, second sentence, EPC. The board considers that in view of the outcome of the assessment of inventive step, it is irrelevant that other documents might potentially be closer.

T 0505/18 - Stopping advertisment display technical

 Key points

• Automotive is technical. Software less so, for the purposes of the Comvik approach. This appeal against a refusal decision concerns the interface between both. Inventive step is to be decided. The distinguishing features are essentially that the computer implemented method involves stopping displaying advertisements on the screen of a navigation system of a car when the car is moving and near a road intersection (my summary). The question is whether this feature is technical.
• The Board: “The distinguishing feature is based on the automatically obtained motion information, the current real-world position of the vehicle and its vicinity to a real-world intersection. By stopping the advertisement based on those physical conditions of the vehicle and its physical environment, it [...] establishes a direct link with physical reality [...]. The distinguishing feature could nevertheless be a mere straightforward implementation of a non-technical requirement [...], for example location-based advertisements for improving sales. However, the board is not convinced that the distinguishing feature has a business motivation, since stopping displaying advertisement in the way claimed is contrary to business objectives. As explained above, the purpose of the feature is to avoid driver distraction for improving safety, which according to T651/12 is a technical effect.”
• “the board decides, in line with decision T 651/12, to recognise improved safety in the technical context of the invention, that of real-time route guidance of a driver of a vehicle, as being a technical effect, and the considerations regarding improved safety in a vehicle navigation system as being technical considerations made by the technical expert in navigation systems.”
• The feature is therefore to be  taken into account for inventive step.
the board is not convinced that the skilled person, without a hint in that direction, would have arrived at the claimed specific safety measure on the basis of the proximity to an intersection and the position and motion of the vehicle.

T 0505/18
https://www.epo.org/law-practice/case-law-appeals/recent/t180505eu1.html

Reasons for the Decision

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

Invention

2. The invention concerns displaying, on a mobile wireless communication device, advertisement and location-based navigation information for a route.

Admission into the proceedings - sole request

3. During the discussion of inventive step at the oral proceedings, the board made the observation that claim 1 of each of the then main and first to third auxiliary requests was so broad that it could also cover a navigation system for pedestrians, which could play a role in assessing which features made a technical contribution.

The appellant then submitted a new auxiliary request 1bis restricting the claimed system to a system for assisting navigation while driving. The appellant argued that the request should be admitted because it was a response to the above observation expressed for the first time at the oral proceedings. The board agrees that its communication pursuant to Article 15(1) RPBA had not mentioned this interpretation of the claim, and that the new auxiliary request 1bis restricted the claimed subject-matter and no longer covered a navigation system for pedestrians. The board considers these to be exceptional circumstances which justify admitting the amendments under Article 13(2) RPBA 2020.

After the board had expressed its preliminary view that claim 1 of the new auxiliary request was inventive, and that the case should be remitted to the first instance for examination with respect to the dependent claims, description and drawings, the appellant submitted the sole request to replace all requests then on file. Since the sole request merely incorporates an obvious correction (deletion of a redundant "and") into claim 1, and since this request does not raise any new issues, its admission contributes to procedural efficiency. Also with respect to this editorial amendment, the board finds exceptional circumstances which justify admitting the request under Article 13(2) RPBA 2020. Consequently, the board admits the sole request into the proceedings.

Clarity and added subject-matter - claim 1

4. No clarity objections have been raised by the examining division and the board finds that claim 1 is supported by the description and clearly defines the subject-matter for which protection is sought.

5. Claim 1 is based on a combination of claim 1 as originally filed and the features specifying that the position determining device determines "the position of the device when driving", and that the obtained current location is the "current driving location". It is directly and unambiguously derivable from paragraphs [0034] and [0038] of the description as originally filed that the system of the invention, including the features of claim 1, is thought to be used for assisting navigation during driving.

6. Therefore, claim 1 fulfils the requirements of Articles 84 and 123(2) EPC.

Inventive step - claim 1

7. Document D2 discloses a mobile advertisement information delivery system comprising an advertisement server (paragraphs [0052] and [0053]; Figure 1, network navigation center 10; Figure 2; paragraph [0093]), as well as mobile wireless communication devices carried in automobiles (paragraphs [0053] and [0086]; Figures 1 and 3, instrument 12/41; claims 1 and 2). Each mobile wireless communication device comprises a display unit, position detecting means and a processor, and receives and displays advertisements from the advertisement server, and location-based navigation information while driving (paragraphs [0087] to [0097]; Figures 3 and 5). As did the examining division, the board regards D2 as the closest prior art.

7.1 The subject-matter of claim 1 differs from the system disclosed in document D2 in that it includes the following feature:

- stop output of the at least one advertisement while said at least one mobile wireless communications device is moving and within a given distance of an intersection.

7.2 In the decision under appeal, the examining division considered that this feature had the effect described in paragraph [0038] of avoiding the user being distracted by advertisements when the user is within a given distance of an intersection and is more likely to be in need of the navigational information. In the assessment of the claims then on file, the examining division considered that this effect was not technical.

7.3 The appellant contested that opinion, arguing that in accordance with decision T 651/12 of 14 April 2016, avoiding driver distraction for improving safety was a technical effect. The subject-matter of T 651/12 was, in the appellant's view, similar to that of the present application, and its reasoning confirmed that there was a technical problem addressed in an improved navigation system which reduced the level of driver distraction and hence improved safety of operation of the vehicle. This was exactly the effect that was provided by the distinguishing feature of the claimed invention.

According to the appellant, the distinguishing feature resulted in the driver being less distracted from the output navigation information close to the intersection. In this way, the driver was more aware of the direction to take at the intersection before reaching the intersection and could thus better focus on the road and traffic at the intersection and was better prepared to avoid a crash or other dangerous sudden situation. Following the rationale of T 651/12, the distinguishing feature provided a technical solution to a technical problem, namely that of improving the safety of operation of a vehicle.

The appellant further argued that the claimed invention provided an "ergonomically" improved navigation system running advertisements, which was optimised for use by the driver because the system assisted the driver in making the right decisions at intersections by stopping the advertisements at a given distance from the intersections. In accordance with T 651/12, in this respect too, the distinguishing feature thus provided a technical solution to a technical problem.

7.4 Even though the claim does not specify how the advertisement is output, the board recognises, as did the examining division in the decision under appeal, that stopping output of an advertisement reduces the level of distraction. As a consequence, the board is satisfied that the distinguishing feature credibly contributes to the safety of operation of the vehicle by reducing the level of driver distraction in a difficult driving phase that requires higher concentration.

8. Decision T 651/12

8.1 With regard to the question of whether that effect is technical, the board agrees with the appellant that decision T 651/12 is pertinent. The claimed invention considered in that decision concerned a map display apparatus capable of displaying a bird's eye view map, which was generated by calculation means of the apparatus. The board was of the opinion that "the outcome of the calculation is used for a technical purpose, namely to display information in an ergonomically improved manner" and that "ergonomics, understood as the applied science of refining the design of products to optimize them for human use, in the context of the map display of [that] case", was a technical field (Reasons 3.2). The board further stated the following (also Reasons 3.2):

"in the context of e.g. a car navigation system, the immediate apprehension of the presented information results in the driver being less distracted from the road and traffic and, thus, also adds to safety. Accordingly, also in this respect, displaying the three-dimensional bird's eye view map provides a technical solution to a technical problem.

As such, the board sees no fundamental difference between the present case and a method for operating a computer-controlled machine where the outcome of some calculation is used for operating the machine in an improved manner, which is generally considered technical in all aspects."

8.2 As the appellant pointed out, decision T 651/12 has recently been referenced as being "exceptional" in decision T 1091/17 of 4 June 2020, according to which the view expressed in T 651/12 that the reference to "presentations of information" in Article 52(2)(d) EPC was meant to relate exclusively to the cognitive content of the presented information ("what is presented") and not to the manner in which it is presented ("how it is presented") has not been adopted by the mainstream case law in the course of legal development. The board in decision T 1091/17 explains, with reference to several decisions, that the predominant view in the case law is what T 1235/07 of 17 March 2011 in point 11 calls the "wider view", according to which both what is presented and how it is presented are considered to be "presentations of information" (see T 1091/17, Reasons 1.6). Similarly, decision T 1802/13 of 10 November 2016 does not follow decision T 651/12 on this question either (Reasons 2.1.5).

The board fully agrees with those conclusions in T 1091/17; however, contrary to the appellant's argument in its letter, the fact that T 1091/17 contradicts decision T 651/12 does not mean that T 651/12 is a "different decision" within the meaning of Article 112(1)(b) EPC or that a problem of uniform application of the law within the meaning of Article 112(1)(a) EPC exists. The statements in T 1091/17 and T 1802/13 merely reflect a development of the law (cf. G 3/08 of 12 May 2010, OJ EPO 2011, 10, Headnote 4).

Moreover, those two decisions diverge from T 651/12 only on account of the adoption of the "wider view" as explained above. They do not contradict T 651/12 with regard to the question of whether features of a navigation system contributing to improving safety by reducing driver distraction during driving are technical. The board is not aware of any decision clearly diverging from T 651/12 with regard to that point of view. In the following, the board describes relevant case law for the present case.

9. Other relevant decisions

9.1 In decision T 2035/11 of 25 July 2014, the competent board states the following (Reasons 5.2.1):

"providing real-time route-guidance information to a user in dependence on the user's real-world position is a technical task. It involves an interaction between the user and the navigation system, wherein the navigation system continuously measures the user's position using technical means and, on the basis of these measurements, provides the user with information aimed at enabling the user to manage the technical task of moving a vehicle to a desired destination.

Although the completion of this technical task depends on the user acting upon the provided route-guidance information and hence on an intervention by the user, it does not rely on subjective considerations by the user or on psychological effects. The user may still decide to ignore the route-guidance information, but that does not detract from the technical character of the navigation system as a technical tool to be used interactively in a technical process and not merely in a preparatory phase as a substitution of what could also be done using pencil and paper."

The board in T 2035/11 then concludes that a mathematical route-planning algorithm, which as such is not technical, when used in a navigation system comprising a position-determining device and route-planning functionality dependent on the actual real-world position of the system, provides a technical contribution at least to the extent that it produces information that enables the route-guidance functionality (Reasons 5.1.3 and 5.2.2).

In the present case, claim 1 clearly specifies the distinguishing feature in the context of a navigation system with means for automatically measuring the driver's position using technical means and displaying the route in real-time in order to continuously provide information aimed at enabling the driver to move the vehicle to a desired destination. That by itself does not mean that the distinguishing feature is technical. The presentation of information for business purposes is not technical (see e.g. T 370/15 of 28 June 2019, Reasons 3.2 and 3.3).

The distinguishing feature is based on the automatically obtained motion information, the current real-world position of the vehicle and its vicinity to a real-world intersection. By stopping the advertisement based on those physical conditions of the vehicle and its physical environment, it provides data about a technical process (see, for example, decision T 1784/06 of 21 September 2012, Reasons 3.1.1, T 2035/11, Reasons 5.1.3) and establishes a direct link with physical reality (T 489/14, OJ EPO 2019, 86, Reasons 11). The distinguishing feature could nevertheless be a mere straightforward implementation of a non-technical requirement (see e.g. T 1455/16 of 20 November 2019, Reasons 5.5), for example location-based advertisements for improving sales. However, the board is not convinced that the distinguishing feature has a business motivation, since stopping displaying advertisement in the way claimed is contrary to business objectives. As explained above, the purpose of the feature is to avoid driver distraction for improving safety, which according to T 651/12 is a technical effect.

9.2 In decision BGH, X ZR 47/07, GRUR 2011, 125 -Wiedergabe topographischer Informationen of 26 October 2010, the German Federal Court of Justice (Bundesgerichtshof) decided that features concerning the choice of a cartographic presentation of position-based topographic information for vehicle navigation were not technical (paragraph 39). However, the decision considered the presentation of cartographic information to be user-friendly (see paragraph 40), and did not address the issue of whether this user-friendly presentation of information was considered to contribute to driving safety.

In decision BGH, X ZR 27/12, GRUR 2013, 909 -Fahrzeugnavigationssystem of 23 April 2013, the German Federal Court of Justice considered that providing street names to the driver in a vehicle navigation system was not technical. The decision recognised that the purpose of the feature was to relieve the user from looking at the screen of the navigation system (paragraph 16). However, the decision did not explicitly address the question of whether improving driving safety is technical or whether the feature was considered to credibly contribute to improving driving safety (rather than merely contributing e.g. to "user comfort", as mentioned in paragraph 28). It is also not clear whether the street names were seen as necessary for the navigation or simply as being additional optional information to meet user preferences.

9.3 In deciding whether features relating to presentation of information make a technical contribution, several criteria have been established in the case law of the Boards of Appeal.

A feature which relates to the manner in which cognitive content is conveyed to the user on a screen normally does not contribute to a technical solution to a technical problem. An exception would be if the manner of presentation can be shown to have a credible technical effect (T 1143/06 of 1 April 2009, Reasons 5.4).

According to decision T 336/14 of 2 September 2015, in assessing whether features relating to the presentation of cognitive content to the user of a graphical user interface (GUI) contribute to a technical effect, it has to be analysed whether the GUI together with the content presented credibly assists the user in performing a technical task by means of a continued and/or guided human-machine interaction process (Reasons 1.2).

According to decision T 1442/16 of 30 August 2019, one criterion for assessing the credibility of an alleged technical effect in inventions involving presentation of information is to take into account whether the alleged effect is the result of subjective psychological factors or objective physiological factors, a distinction that has already been made in several decisions (Reasons 1.8).

The mere fact that mental activities are involved does not necessarily qualify subject-matter as non-technical, but reducing the cognitive burden is not a technical effect in itself (T 1741/08 of 2 August 2012, Reasons 2.1.6; T 1143/06, Reasons 5.4).

In the present case, the board is of the opinion that the distinguishing feature assists in the continued and guided human-machine interaction, for the reasons given in point 9.1 above. The distinguishing feature is not lowering the cognitive burden, but only avoiding driver distraction. The fact that the driver can concentrate better without advertisements is not the result of a subjective psychological effect. Even if some persons may be less distracted than others by advertisements, and subjective psychological aspects can influence the degree to which an advertisement distracts a person, anyone at any time is more distracted if an advertisement is displayed than if it is not displayed.

9.4 Some decisions deal with the question of increased safety, with none of them clearly denying improving safety as a technical effect.

In decision T 547/08 of 10 March 2011, the board considered that prompting the user to press a hard key in a portion of the screen display in a process of confirming entry of information into a dialysis machine contributed to the technical effect of improving safety when the dialysis machine was operated by non-trained personnel (Reasons 5.1.1 and 5.1.2).

In decision T 1188/13 of 27 October 2016, the invention concerned a method of producing a graphical representation of a text message in the context of air control messaging. The board found that the steps of parsing a text message, using rules for applying graphical enhancement, retrieving graphic components and assembling them into a graphic representation were not inventive, but the board considered that the skilled person would be aware of the safety of air control messaging and in this context would consider teachings in respect of graphical representation of textual messages on a display (Reasons 3.1 to 3.3, 5).

In decision T 336/14 the board did not believe that the distinguishing features "help[ed] a nurse in setting up the blood treatment machine in a safe and efficient way" because the information provided could not credibly support a continued and guided human-machine interaction process and thus could not assist the user in performing the technical task. However, the board did not address the question of whether improving safety was a technical effect (Reasons 1.2.5).

10. In view of the considerations above, the board decides, in line with decision T 651/12, to recognise improved safety in the technical context of the invention, that of real-time route guidance of a driver of a vehicle, as being a technical effect, and the considerations regarding improved safety in a vehicle navigation system as being technical considerations made by the technical expert in navigation systems.

The way the advertisement is implemented is the task of the person skilled in the technical field of navigation systems faced with the non-technical requirement of displaying advertisement in the navigation system (T 641/00, OJ EPO, 352, Reasons 6). Independently of the prior art, when implementing the system in accordance with the non-technical requirements, the decision to stop displaying advertisements close to an intersection when the vehicle is in motion for safety reasons is made not by the notional business person but by the technical expert in navigation systems.

The board therefore concludes that the distinguishing feature is to be considered to make a technical contribution and has to be taken into account in the assessment of inventive step. The distinguishing feature solves the technical problem of adapting the navigation system of document D2 in order to improve driving safety.

11. With regard to the question of whether the distinguishing feature is inventive, document D2 concerns outputting advertisements at any point as an advantage over the previous limitation of providing advertisements on sign boards by the roadside. It does not address the subject of driving safety and, with regard to some embodiments, even discloses providing advertisements close to or at road intersection points. For example, it suggests presenting an advertisement for a restaurant in the vicinity that can be reached by taking the opposite direction, thereby actively using on-screen advertisements close to a point of intersection to influence the driver to possibly change direction (paragraph [0118] and [0119], Figure 5).

12. Even though it was common general knowledge that driver distraction is to be avoided for safety reasons, the board is not convinced that the skilled person, without a hint in that direction, would have arrived at the claimed specific safety measure on the basis of the proximity to an intersection and the position and motion of the vehicle.

At the oral proceedings, the appellant argued that there were many possible technical options for the skilled person to improve driving safety in general. Since document D2 taught showing advertisements as often as possible at the right points on the driver's route, including at intersections, the skilled person attempting to improve driving safety would not consider stopping advertising as claimed as a matter of routine development, but would opt for other solutions. Consequently, the invention involved an inventive step.

The board agrees with this argument. Indeed, limiting the advertising negatively impacts the underlying business method of D2 and thus would not be considered as a matter of routine by the skilled person facing the general problem of driving safety.

The appellant also argued that even if the skilled person at all considered stopping the advertising, they would not arrive at the claimed solution, which was a sophisticated compromise between no advertising and the approach disclosed in D2, which maximised advertising.

Again, the board agrees with the appellant.

13. Document D1 relates to measuring the effectiveness of location-based advertisement and does not address the issue of driving safety either.

14. Therefore, the subject-matter of claim 1 of the main request is inventive over the cited prior art (Article 56 EPC).

Concluding remarks

15. The appellant has overcome the objections of the decision under appeal and the board has no further objections to claim 1. However, the board did not examine the dependent claims, description and drawings. The case is thus to be remitted to the department of first instance for any adaptation accordingly.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

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

1786/15 - Transfer of priority

 Key points

• In this opposition case, the decisive issue is transfer of priority.  The priority stems from a US provisional application filed int he name of the inventors.
• The critical document is “D51: Ownership reallocation policy, as applicable to The Massachusetts General Hospital, dated 18 September 2002.” However, that document is not signed and “therefore it cannot provide conclusive evidence that the reallocation policy, set out therein, was in fact adopted”. 
• The Board: “The appropriate standard of proof to be applied in this factual situation is not the balance of probabilities. Indeed, in cases where all evidence supporting a specific statement of fact (for instance a public prior use) is within the power and knowledge of one party, the Boards of Appeal apply a stricter standard of proof, namely the standard "beyond reasonable doubt"”.
• This point might be very important in practice. 
• The Board does not itself positively decide on which law is applicable to the alleged transfer, in view of the parties agreeing on that point.

 1786/15

https://www.epo.org/law-practice/case-law-appeals/recent/t151786eu1.html

Entitlement to priority of document D1 (Article 87 EPC)

5. In the proceedings before the opposition division, the opponent (now respondent) challenged the patent proprietor's entitlement to claim the priority stemming from document D1 (see Section VII., above)

6. The opposition division agreed with the opponent's objection and consequently considered that document D8, published in the priority interval, was prior art and decisive in assessing the patentability of the subject-matter of claim 1 of auxiliary requests 1 and 2.

7. In appeal, the appellant challenged this point of the decision, arguing that the priority was validly transferred. In view of this, the first question to be answered is whether or not the patent can validly claim the priority of document D1.

8. It was common ground between the parties that:

(i) the EPO is entitled to examine whether or not an applicant can claim the priority of a previous filing;

(ii) the applicant can only claim the priority of document D1 if a transfer from the inventors to the applicant occurred before the filing date of the PCT application, document D2;

(iii) the question of whether such transfer occurred should be determined according to national law;

(iv) the relevant national law, in the present case is US law: federal law where the effect of the assignment is concerned, state law where the construction of the contract is concerned.

9. For the purpose of the present decision, the board does not, ex officio, challenge any of the above points of consensus between the parties. Instead, it will address the main point of disagreement between the parties, being the question of whether or not documents D31 and D51 demonstrate, according to the applicable standard of proof (see point 13., below), that the appellant acquired ownership of the priority right created with the US filing of document D1 before the date of filing of the PCT application, without the need for any separate additional transfer.

T 0755/18 - Machine learning

 Key points

• In this examination appeal, the Board concludes that “claim 1 specifies a computer-implemented method for improving the accuracy of automatically generated billing codes. The method is specified in terms of [first] computer program features of the implementation of the task of modifying the [second] computer program which generates billing codes in order to improve the accuracy of the generated billing codes.”
• Billing codes are e.g. 'diabetes' and “may, for instance, be associated with a hospital stay of a patient based on a collection of the documents containing information about the medical procedures that were performed on the patient during the stay [...].”
• The applicant argued that “The appellant argued that the invention used machine-learning techniques to improve the accuracy of the machine output”, the machine output being automatically generated billing codes. 
• The Board: “claim 1 specifies an automated method of performing the administrative task of improving the accuracy of the generated billing codes. Using a computer to automate an administrative task is well known. From the above it follows that, with the exception of its implementation using a general purpose computer, the method is specified in claim 1 in terms of non-technical features which are not to be taken into account for inventive step”

• About machine learning in general: “In the present case, the question of whether the features of the claimed method were made by a "computer engineer in the realm of machine learning" is not decisive for the question of whether the features make a technical contribution. Since the work of an expert in machine learning includes non-technical computer-programming tasks, which are not patentable under Article 52(2) and (3) EPC, what is decisive is whether those features were the result of "technical considerations beyond 'merely' finding a computer algorithm to carry out some procedure"”

T 0755/18 

https://www.epo.org/law-practice/case-law-appeals/recent/t180755eu1.html

Reasons for the Decision

Application

1. The present application is concerned with the generation of billing codes to be used in medical billing. Billing codes may, for instance, be associated with a hospital stay of a patient based on a collection of the documents containing information about the medical procedures that were performed on the patient during the stay and other billable activities performed by hospital staff in connection with the patient during the stay. This set of documents may be viewed as a corpus of evidence for the billing codes that need to be generated and provided to an insurer for reimbursement (see international publication, page 1, paragraphs [0001] and [0002]).

1.1 As explained on pages 1 and 2, paragraphs [0003] and [0004], computer-based support systems have been developed to guide human coders through the process of generating billing codes.

The application describes such a system which includes "concept extraction components" to extract concepts from data sources, for example extracting "allergy" or "prescription" from a medical report, to generate concept codes for these concepts and then generate a "draft transcript" (page 4, paragraph [0016], to page 7, paragraph [0010], Figure 1A). A reasoning module (also referred to as "inference engine") generates or selects appropriate billing codes on the basis of the content of the draft transcript and/or other data sources (page 9, paragraph [0018], Figure 1A). The reasoning module includes "forward logic components", each of which implements a distinct set of logic for mapping document content to billing codes (page 9, paragraph [0020]).