T 0390/18 - Rule 137(5) discretionary?

Key points 

• In this examination appeal, the Examining Division had refused to admit an auxiliary request under Rule 137(5). 
• In the auxiliary request, a feature is added taken from the description. The Board considers that the added feature is directed to a different problem than the original claims, such that it lacks unity of invention with the claims as filed. The decision does not indicate that the applicant had disputed this. This also seems a straightforward and correct application of Rule 137(5), first sentence, to me.
• However, the Board adds, in translation, “The board also notes that, under G7/93, a board of appeal should only overturn a discretionary decision by an examining division if it concludes that the examining division is exercising its discretion on the basis of the wrong criteria, disregarding the correct criteria, or in an arbitrary or arbitrary manner. inappropriately exercised. In the present case, the appellant only questioned the outcome of the discretionary decision, not the way in which the department exercised its discretion.”
• However, Rule 137(5) reads: “Amended claims may not [dürfen ... nicht / ne doivent pas] relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept”. In my view, this can only be understood as meaning that the Examining Division must refuse such amended claims and that Rule 137(5) first sentence can not be used as a ground for not admitting the claims if the two cumulative requirements of that sentence are not met. Hence, Rule 137(5) seems non-discretionary. However, the Examining Division is not barred from carrying out a further search (C-IV 7.2 and 7.3) in which case the subject matter could possibly become searched in the sense of Rule 137(5).* However, I'm not sure if this is what the Board means. 
• * I expressed the same view in my article in epi Information 2/2018, footnote 17.

T 0390/18

https://www.epo.org/law-practice/case-law-appeals/recent/t180390du1.html

Sachverhalt und Anträge

I. Die Beschwerde der Patentanmelderin richtet sich gegen die Entscheidung der Prüfungsabteilung, mit der die europäische Patentanmeldung Nr. 06 724 073.9 zurückgewiesen worden ist. Die angefochtene Entscheidung beruhte auf den Anträgen der Patentanmelderin, ein Patent auf Grundlage des in der mündlichen Verhandlung vom 13 Oktober 2017 geänderten Hauptantrags oder ersten Hilfsantrags zu erteilen. Diese Anträge bleiben für das Beschwerdeverfahren relevant.

[...]

Der erster Hilfsantrag wurde nach Regel 137(3) EPÜ nicht zugelassen, weil die hinzugefügten Merkmale mit der ursprünglichen Erfindung nicht durch eine einzige allgemeine erfinderische Idee verbunden seien und nicht recherchiert worden seien (Regel 137(5) EPÜ).

Entscheidungsgründe

2. Hilfsantrag

2.1 Auf Seite 11, Zeilen 8 bis 14 der Beschreibung der vorliegenden Anmeldung sind die Erhöhungen 100, die Vertiefungen 101 und der Stapelrand 31 (Merkmale M und N) beschrieben, sowie die technischen Wirkungen, die sie erzielen.

T 1716/12 - Remittal for adapting the description

Key points

• In this decision of 21.04.2021, the Board deals with the appeal against the refusal decision of the Examining Division of 27.02.2012 (!).
• The invention is about computer technology, in particular about the BIOS module, and is held to be inventive.
• The Board notes that the description needs to be adapted to the amended claims.
• The Board then has to decide whether or not to remit the case. Article 11 RPBA 2020 specifies that “The Board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so.” The Explanatory Notes state: “Art. 11 only applies to cases that are remitted ‘for further prosecution’. In particular, it does not apply to cases that are remitted with an order by the Board to grant a patent or to maintain a patent in amended form, with or without the description to be adapted.” The present decision does not discuss that Note, but seems to recall that Article 111(1)  provides that “the Board of Appeal may ... remit the case to that department for further prosecution.” Hence, each remittal is “for further prosecution” based on the text of Article 111(1). 
• The Board: “According to Article 11 RPBA 2020, the board shall not remit a case to the department of first instance, unless special reasons present themselves for doing so. In this board's view, the remittal "with a description to be adapted", as has become common practice of the boards of appeal, is, effectively, a remittal for further prosecution within the meaning of Article 111(1) EPC and under the limitations according to Article 111(2) EPC. As the appellant has indicated, its absence from oral proceedings, dealing with the adaptation of the description in the appeal proceedings would require a further written dialogue with the appellant before an eventual remittal with the order to grant a patent. The board takes the view that it is more efficient to deal with the adaptation of the description as part of the grant procedure under Rules 71(3) and (6) EPC, and considers this to be special reasons for remittal under Article 11 RPBA 2020.”
• As a comment, the Board does not simply refer to the remark in the Explanatory Notes but identifies a special reason for remittal.
• As a comment, the Examining Division could also issue a normal Communication under Article 94(3) EPC and Rule 71(1) EPC inviting the application to file an amended description. 
• The order of the decision is that the appealed decision is set aside and “The case is remitted to the first instance for further prosecution.” 

T 1716/12 

https://www.epo.org/law-practice/case-law-appeals/recent/t121716eu1.html

5.8 The board therefore holds that the subject-matter of independent claim 1 and, for similar reasons, of independent claim 5 is inventive (Article 56 EPC 1973).

6. Other issues

The board has no occasion to raise any objections to the claims on its own volition.

However, the board notes that the description appears to require adaptation to the present claims. In the present case, the board takes the view that for instance the sentence spanning pages 3 and 4 of the description, stating that "In at least some embodiments, the BIOS 110 of the computer 100 comprises a boot block 112 and a signature domain 116 used as a CRTM 118A" needs adaptation under Article 84 EPC 1973, given that according to claim 1 this is the case for all embodiments.

7. Remittal

According to Article 11 RPBA 2020, the board shall not remit a case to the department of first instance, unless special reasons present themselves for doing so. In this board's view, the remittal "with a description to be adapted", as has become common practice of the boards of appeal, is, effectively, a remittal for further prosecution within the meaning of Article 111(1) EPC and under the limitations according to Article 111(2) EPC. As the appellant has indicated, its absence from oral proceedings, dealing with the adaptation of the description in the appeal proceedings would require a further written dialogue with the appellant before an eventual remittal with the order to grant a patent. The board takes the view that it is more efficient to deal with the adaptation of the description as part of the grant procedure under Rules 71(3) and (6) EPC, and considers this to be special reasons for remittal under Article 11 RPBA 2020.

Order

For these reasons it is decided that:

1. The appealed decision is set aside.

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

J 0012/19 - The other party under Rule 142

 Key points

• The patentee went bankrupt during the first instance opposition proceedings and the proceedings are interrupted under Rule 142(1)(b). After some time, the Legal Division announces the intention to resume the proceedings under Rule 142(2). The opponent disagrees as it considers that the insolvency proceedings were terminated by the dissolution of the patentee, which is now non-existent, according to the opponent. The opponent submits so accordingly to the Legal Division. The Legal Division is of the opinion that the opponent is not a party to the proceedings in this respect, disregards the opponent's submissions, and issues a Communication to the opponent stating so. The opponent then files an appeal.
• Rule 142(2) reads in relevant part: “When, in the cases referred to in paragraph 1(a) or (b), the European Patent Office has been informed of the identity of the person authorised to continue the proceedings, it shall notify such person and, where applicable, any third party, that the proceedings will be resumed as from a specified date”.
• The opponent files an appeal and a statement of grounds against this Communication. After some months and some exchange of submissions with the EPO, the appeal is forwarded to the Legal Board.
• To jump to the conclusion, the Legal Board decides to set aside the impugned decision and remits the case to the Legal Division. Hence, the Legal Board decides that the opponent is a party to the ‘resumption proceedings’, in the same way as an opponent is a party with respect to a request for re-establishment of rights filed by a patentee and hence must be heard under Article 113(1) EPC on the request for re-establishment of the other party (T552/02, CLBA III.E.6.3).
• “The opponent (appellant) is party to the resumption proceedings. As a consequence, the Legal Division's denial of the appellant's party status to the resumption proceedings in the impugned decision, entitled communication, of 15 March 2019, was unlawful. It follows that the division's failure to consider the observations and requests submitted by the opponent on 5 February 2019 was equally unlawful.”
• The Legal Division accordingly has to take a new decision on the resumption of the proceedings. Possibly the new second sentence of amended Rule 142(2) has to be applied. Accordingly, retroactively the opposition proceedings are still stayed.  
  
  
• Now for the preliminary matters: first, whether the appeal complies with Art.106 requiring that it is filed against a ‘decision’: “Under established case law of the boards of appeal, whether a document constitutes a decision or not depends on the substance of its content and not on its form [] the decisive question was whether the document at issue, when objectively interpreted in its context, could have been understood by its addressees as a final, i.e. not merely preliminary, and binding determination of substantive or procedural issues by the department ("organ") of the EPO which has jurisdiction ("is competent"). The Board shares this view, with the proviso that even a document issued by a department of the EPO that does not have jurisdiction may constitute a decision.
• “The impugned "communication" of 15 March 2019 thus constitutes a final, binding determination of procedural issues by a department of the EPO, i.e. the appellant's party status and the resumption of proceedings. The "communication" therefore is a decision in the meaning of Article 106(1), first sentence, EPC.”
• As to whether the opponent is a 'party' in the sense of Article 107: “the Board shares the appellant's view that although it was not recognized as a party by the department of first instance that rendered the impugned decision, this should not affect the admissibility of the present appeal, since the denial of party status is subject of the appeal. Otherwise, there would be no legal remedy against an incorrect denial of party status by a first-instance department.”
• An interesting exercise could be to compare this to G2/19 hn.1.
• On the date of filing the Notice of appeal, the opposition proceedings were interrupted. This does not affect the admissibility of the appeal in this particular case. “Reason for this is that, as stated, the proceedings before the Legal Division relating to interruption and resumption of the opposition proceedings before the opposition division are intermediate proceedings in relation to the opposition proceedings. Procedural acts filed during the period of interruption of the opposition proceedings may have no legal validity. But the same cannot be said in relation to the proceedings before the Legal Division, simply because they are not interrupted but, rather, meant to determine the end of the interruption of the opposition proceedings.”
• The Board calls it 'intermediate proceedings'. The GL appear to use 'ancillary proceedings' as a general term for such ancillary matters (D-II 4.3), albeit for matters that the opposition division is competent to decide on. Moreover, the decision of the Legal Board does not seem to discuss Article 106(2) EPC (“A decision which does not terminate proceedings as regards one of the parties can only be appealed together with the final decision, unless the decision allows a separate appeal.”). Because the opposition proceedings are not terminated, it is not immediately evident that the Communication is appealable under Article 106(2) EPC.  This turns on an interpretation of the term “proceedings” under Article 106(2) EPC.
  
  
• The Legal Board held oral proceedings but had the difficulty that the summons were not successfully delivered to the patentee (according to the opponent, that made sense, as the patentee was dissolved and non-existent in their view). The Board used public notification in the Bulletin on 25.11.2020 for oral proceedings held on 01.02.2021. 
• Under Rule 129(2), notification is deemed to be effected one month later, i.e. 25.12.2020. This is interesting because Rule 115(1) specifies a minimum period of two months notice of the summons, I assume calculated from the notification of the summons. Probably I overlook something, comments from readers are welcome. 

J 0012/19 -  J 12/19 - 

https://www.epo.org/law-practice/case-law-appeals/recent/j190012eu1.html

Summary of Facts and Submissions

I. The opponent's appeal filed on 21 March 2019 is directed against the document entitled "Communication from the Legal Division" of 15 March 2019 "to deny the Opponent (present Appellant) party status in the proceedings pursuant to Rule 142 and its resulting refusal to consider the observations and requests submitted by the Opponent on 5 February 2019..." (see notice of appeal, page 1). This is the text of the document:

Reference is made to your letter of 05.02.2019 received on the same date at the EPO. The Legal Division informs you [i.e. the appellant] as follows:

Please note that you are not party to the proceedings pursuant to Rule 142 EPC. As a third party to these proceedings, you may file neither observations nor any procedural requests.

Opposition proceedings relating to the European patent No. 2 393 977 will be resumed on 01.04.2019. The opposition division as the competent organ will decide on the further conduct of said opposition proceedings.

(Emphasis added.)

The appellant requested that the Board "set aside the Legal Division's denial of the Opponent's party status, its refusal to consider the observations and requests submitted by the Opponent on 5 February 2019, and the resulting implicit confirmation of the announced resumption of the opposition proceedings with Transito NV as the proprietor of the patent under opposition".

T 0032/17 - Product-by-process feature and burden of proof

Kye points

• The Board, in this opposition appeal “Finally, where a process feature is the only feature allegedly conferring novelty to a product, the burden of proof for showing the fact that the process feature results in a distinct and identifiable characteristic of the product - i.e. in the present case in the chemical composition and/or the specific amino acid sequences of the claimed antibodies - is on the patent proprietor and not on the opponent(s) ” referring to T0179/03.
• I note that T0179/03 appears to not have been cited before. 
• Alternative positions are that the burden of proof of lack of novelty rests with the opponent or that the appellant has the burden of proof in opposition appeal. 
• A final option, also in view of the analysis below, is that under G3/14 r.55 the patentee has the burden of proof in case of improper product-by-process features.
• The Board in the headnote focuses on another aspect of the case, which however seems less broadly applicable. “The deposit of a hybridoma under Rule 31 EPC for compliance with the disclosure requirement of Article 83 EPC does not in itself convey any technical information about the molecular structure of the monoclonal antibody produced by said hybridoma, such as its amino acid sequence ”
• Addendum 10.05.2021: I think this headnote does not pertain to novelty. In particular, the Board does not comment on G1/92 hn. at all (“the chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition.”).
• The operative claim at issue reads: “Monoclonal antibody able to recognize 25-hydroxyvitamin D2 and 25-hydroxyvitamin D3, characterised in that it is produced from a hybridoma  [...] deposited in the BCCM/LMBP under deposit number [...]”
• “The patent does not provide any information about the chemical composition or amino acid sequence of the antibodies produced by the deposited hybridomas either, e.g. in the form of a sequence listing (see also Rule 30 EPC).”
• As a comment, in principle, the deposit system of Rule 31 EPC is only relevant for Art.83 EPC, in that Rule 31 refers only to Article 83. The question may be raised whether implicitly a claim referring to a deposited sample under Rule 31 is also clear under Article 84. Of course, clarity is not a ground for opposition but under  G3/14, r.55: “A granted claim may turn out not to comply with Article 84 EPC but such non-compliance must be lived with. However, any lack of clarity of the claims may still be highly relevant in opposition proceedings in that it can influence the decisions on issues under Article 100 EPC []. For example the lack of clarity of a claim may have a profound effect on the outcome of the grounds for opposition according to (i) Article 100(b) / sufficiency ([], (ii) Article 100(a) EPC / novelty []  or Article 100(a) EPC / inventive step []. ” A question is whether this remark also applies when the patentee legitimately uses the system adopted under Rule 31 EPC. I note that the decision at issue at least not expressly discusses non-compliance or abuse of the deposit system under Rule 31 EPC.
• Counter arguments are certainly possible.
• A very interesting analysis was given by "Greg DeLassus" at Patently (here): “It is not that the standard for enablement of functional genus claims in the chem/bio arts has changed. It is that the technologies being claimed have changed.

  Back in the 80s and 90s (when many of these “antibody that binds [X]” claims were written), the sorts of antibodies that inventors were claiming were polyclonal antibodies. The way you make a polyclonal antibody is that you inject a mouse (or rabbit, or hamster, or goat, etc) with a particular antigen, and then a few weeks later you bleed the animal and collect the serum. The serum will be full of all sorts of antibodies, including a variety of different antibodies responsive to your antigen of interest. Even today, there is no technologically practical way to sequence the CDRs of all the target-responsive antibodies in that polyclonal serum. Therefore, if the CAFC had required that one claim the antibodies in those polyclonal sera according to CDR sequence, this would effectively have meant that there could be no patent protection for antibodies.

  Not only would this policy have been counterproductive to the ends that the patent system is intended to further, but it would not have even been consistent with the words of the statute, which merely require that the specification “contain a written description of the invention, and of the manner… of making… it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains… to make… the same… .” When you raise an antibody by injecting an animal, the important thing to describe with precision is the antigen used. If you can be precise enough about the details of the antigen, then other skilled artisans will be able to replicate your work, even without details about the CDRs of each antibody raised.

  Nowadays, however, almost no one is claiming polyclonal antibodies. Amgen and Sanofi, for example, are not fighting about who controls the IP around a polyclonal. Rather, they are fighting over a monoclonal antibody. In the same way that it would have been impossible to disclose CDR sequence data for polyclonal sera back in the day, it is almost trivially easy to describe CDR sequence data for monoclonals. Therefore, it makes sense for the CAFC to require such disclosure (and precision of claiming), even if it did not make sense to do so in older cases. Different technology requires different ways of describing in order for the skilled person to replicate.

  Moreover, the ends which the patent law is meant to further are better served by requiring precise description of the antibody when one is claiming a monoclonal, just as they were better served by requiring precise description of the antigen back when one was claiming a polyclonal. It is the same statute and the same standards, but when one changes the technology to which they same statutes and standards are being applied, then it will necessarily follow that the spec and claims sufficient to capture each technology will look different.

  There really is no more than a superficial inconsistency between how the CAFC was handling these functional genus claims back then and how it is handling them now. Rather, at the deeper and more meaningful level, the CAFC’s handling is entirely consistent. The tech has simply moved on since then.” (underlining added)

  
   

• The present Board also recalls that: “ the Enlarged Board of Appeal held that "[f]or a product-by-process claim to be allowable it needs to be established that (a) it is impossible to define the claimed product other than in terms of a process of manufacture and (b) the claimed product itself meets the patentability requirements of Article 52(1) EPC. Thus, the specific process needed to obtain the claimed product should make it possible to distinguish the inevitable product of the product-by-process claim over the prior-art" (see decision G 2/12, OJ EPO 2016, 27, Reasons, point IV.(5)).”

• The Board on procedural matters: “After the board's final decision had been announced at oral proceedings, opponent 4 withdrew their opposition. As the final decision became effective immediately on its announcement, the above mentioned withdrawal did not change opponent 4's status as a party to the appeal proceedings.”

T 0032/17 

https://www.epo.org/law-practice/case-law-appeals/recent/t170032eu1.html

4. After the board's final decision had been announced at oral proceedings, opponent 4 withdrew their opposition. As the final decision became effective immediately on its announcement, the above mentioned withdrawal did not change opponent 4's status as a party to the appeal proceedings.

Main request - claim 2

The claimed subject-matter - claim construction

5. Claim 2 is drafted as a product-by-process claim. It is directed to a monoclonal antibody which is characterised by the functional feature "able to recognize 25-hydroxyvitamin D2 and 25-hydroxyvitamin D3**(") and by the process feature "produced from a hybridoma selected from the group consisting of the hybridomas deposited in the BCCM/LMBP under deposit numbers LMBP 7011CB, LMBP 7012CB, LMBP 7013CB, LMBP 7204CB and LMBP 7205CB."

T 0488/18 - Withdrawal request oral proceedings

 Key points

• In this opposition appeal, the appellant did not request oral proceedings and the respondent withdrew the request for oral proceedings within one month of notification of the preliminary opinion of the Board. The decision is issued without oral proceedings. Rule 103(4)(c) says "if any request for oral proceedings is withdrawn". Does this mean that the appellant benefits from a partial refund of the appeal fee because the respondent withdrew the request for oral proceedings?
• The present Board concludes that the partial refund is to be ordered, thereby expressly not following  T0777/15. 
• The present Board undertakes a detailed analysis of Rule 103(4)(c) but in the end appears to be persuaded by this remark in the Explanatory Notes: “The point at which the appellant – as well as the other parties to appeal proceedings – should be incentivised to withdraw the request for oral proceedings is upon being notified of the Board's communication under Article 15(1) RPBA, revised version.” (CA/80/19 para 84, italics added). 
• As a comment, it remains unclear to me how e.g. the opponent as respondent is incentivised to withdraw its request for oral proceedings if that results in a financial benefit for the patentee (as appellant) only. 
• The refund in the present case was indeed made to the patentee.
  
  
• The opponent/respondent also became insolvent in the course of the proceedings and an administrator was appointed. The Board notes that (under German law) the insolvency administrator becomes the party to the proceedings. However (also in light of specific circumstances) the professional representative remained appointed. 
• The request for transfer of opponent status to the company buying the enterprise of opponent is refused for lack of evidence submitted.
• The opponent's request for interruption of the proceedings is refused first of all because Rule 142(1)(b) refers only to the patentee or applicant. 
  
  
• The OD had revoked the patent based on a feature lacking basis in the application as filed. In appeal, requests are filed wherein the feature was omitted. The appeal is admissible because according to established case law it is not necessary to argue as appellant that the first instance decision was wrong; it may also be enough (for a patentee as appellant) to address the decisive point by amending the claims. 
• The amended request is admitted. The opponent had raised the added subject matter attack for the first time during the oral proceedings before the opposition division which the patentee did not attend.
• “Nach Meinung der Kammer kann daher im vorliegenden Fall das Fernbleiben der Beschwerdeführerin von der mündlichen Verhandlung nicht zu ihren Ungunsten bewertet werden.”. 
• Compare T2154/13, discussed in the present decision as well: “Following the principle according to which the appellant should be prevented from seeking unjustified procedural advantages in disregard of procedural economy and to the disadvantage of other parties (nemo auditur propriam turpitudinem allegans), the Board therefore decides not to admit auxiliary requests 1-3 into the appeal proceedings.”
• The present Board says that “Anders als im Fall T 2154/13 gab es jedoch im vorliegenden Fall für einen Einwand der unzulässigen Erweiterung gegen das Merkmal M8 im erstinstanzlichen Verfahren keinen Anhaltspunkt vor [i.e. prior to] der mündlichen Verhandlung.”
• In T 2154/13, an inventive step attack based on D6 had been raised prior to the oral proceedings before the OD, the OD found D6 to be novelty-destroying.
• As a comment, note that according to G4/92, “a decision against a party who has been duly summoned but who fails to appear at oral proceedings may not be based on facts put forward for the first time during those oral proceedings” (in inter partes proceedings) and according to T0748/17, an Art.123(2) objection is a 'fact' in the sense of at least Art.12(4) RPBA 2007.

https://www.epo.org/law-practice/case-law-appeals/recent/t180488du1.html

8. Rückzahlung der Beschwerdegebühr in Höhe von 25% - Regel 103 (4) c) EPÜ

Die am 1. April 2020 in Kraft getretene neu gefasste Regel 103 EPÜ gilt für die vorliegende Beschwerde, da sie am Tag des Inkrafttretens bereits anhängig war (siehe Artikel 2 des Beschlusses des Verwaltungsrats CA/D 14/19 vom 12. Dezember 2019 (ABl. EPA 2020, A5)).

8.1 Regel 103 (4) c) EPÜ sieht die Rückzahlung der Beschwerdegebühr in Höhe von 25 % vor, wenn "ein etwaiger Antrag auf mündliche Verhandlung innerhalb eines Monats ab Zustellung einer von der Beschwerdekammer zur Vorbereitung der mündlichen Verhandlung erlassenen Mitteilung zurückgenommen wird und keine mündliche Verhandlung stattfindet".

8.2 Im vorliegenden Fall stellte die damalige Beschwerdegegnerin in ihrer Beschwerdeerwiderung hilfsweise einen Antrag auf mündliche Verhandlung. Diesen Antrag nahm sie innerhalb eines Monats nach der Zustellung der zur Vorbereitung der mündlichen Verhandlung erlassenen Mitteilung der Kammer nach Artikel 15 (1) VOBK 2020 zurück. Daraufhin wurde der anberaumte Termin zur mündlichen Verhandlung aufgehoben. Die Beschwerdeführerin hat während des gesamten Beschwerdeverfahrens keinen Antrag auf mündliche Verhandlung gestellt.

T 0386/17 - Angle of more than 0 degrees

 Key points

• The Board, in the headnote: “A claimed feature that an angle has a magnitude of "more than 0 degrees" does not establish novelty over a prior art disclosure in which the corresponding angle is equal to 0 degrees, since the feature encompasses values closer to 0 degrees than the finite error margin to which the determination of the magnitude of the angle would always be subject, and such values would, in practice, be indistinguishable from 0 degrees”
• The Board: “In the present case, there was a disagreement between the applicant and the Examining Division on the question whether D1 explicitly disclosed an error margin for the inclination angle azimuth (Reasons, point 14.1). The Board does not regard this question as having any importance, since, in any laboratory or industrial operation, it is impossible to measure an angle or align a direction with infinite accuracy, and such operations will always be subject to a small but finite error. This includes (whether explicitly disclosed or not) the alignment of the inclination azimuth with the [001] and [00-1] directions in D1 (or, in the terminology of the present application, the operation of setting psi = 0).”
• As a comment, the holding of the Board is as such limited to angles of/between physical objects.
• I'm not sure if the Board concerns the value 0 degrees in the claim to have the usual rounding off convention i.e. only one significant digit or to have an absolute zero meaning.

T 0386/17

https://www.epo.org/law-practice/case-law-appeals/recent/t170386eu1.html

2.2 Document D1 also discloses a silicon wafer having an epitaxial layer, the main surface of the wafer being inclined from a {110} plane (see e.g. claim 3). In D1 the inclination of the main surface with respect to the (110) plane is aligned with the [001] and [00-1] directions (see D1, paragraph [0039]; Figs. 7 and 8).

The appellant accepts that the arrangement of D1 has, in the terminology of the present application, an inclination angle azimuth (psi) of 0 degrees. Since the claimed range for psi has a lower limit of "more than 0 degrees", the appellant argues that the claimed invention is novel over D1.

2.3 At oral proceedings the appellant confirmed that this feature was seen as the sole difference over D1, and hence, in relation to the question of novelty, the task of the Board is to decide whether a lower limit for the claimed parameter psi defined as "more than 0 degrees" is sufficient to establish that the invention is new within the meaning of Article 54(1) EPC 1973 when the corresponding parameter in the state of the art is 0 degrees.

2.4 In its communication pursuant to Article 15(1) RPBA, the Board cited the decision T 594/01. The case concerned a "process for the preparation of ethylene glycols", and claim 1 of the main request and the first auxiliary request included inter alia the feature that "the process is performed with less than 0.1 wt% of carbon dioxide in the reaction mixture" (Summary of Facts and Submissions, point VI).

G 1/21 (I) - Objection regarding partiality

Key points

• An objection under Article 24(3) EPC against the Chairman and two members (X and Y) of the Enlarged Board for reasons of suspected partiality was raised by the appellant/opponent in this case (letter 27.04.2021, here). The Enlarged Board decides that the Chair is replaced. The rapporteur himself also informed the Enlarged Board of concerns under Art.24(2) EPC and the Enlarged Board decided that he is replaced as well. Members X and Y are not replaced. However, they did not participate in the panel issuing the present decision, so in the present decision, four of the seven members were replaced (the Enlarged Board in original composition found the objections admissible, subsequently the Chairman of the Enlarged Board recomposed the panel to deal with the partiality objection). The present decision was taken on 17.05.2021.
• The present decision gives me confidence in the proceedings and will likely contribute to the procedural legitimacy of the substantive decision to be taken in G1/21.
• I expect that the video conference oral proceedings scheduled for 28.05.2021 will be opened but will possibly continue as vico only with the consent of the parties (which I believe is not on file yet) and will be adjourned for proceedings on the EPO premises (in person) if one of the parties does not consent to vico oral proceedings so as to not prejudice the decision. The oral proceedings ‘on premises’ can then take place in early August under Rule 115 EPC but perhaps the parties agree with an earlier date. 
  
  
• The opponent/appellant submitted that vico oral proceedings are not a priori unacceptable but lack legal basis in the EPC. I tend to agree that mandatory vico oral proceedings are acceptable as an emergency measure during the Covid-19 pandemic and associated travel restrictions under Article 125 EPC. I also think that the Administrative Council is competent to adopt rules about the organization of oral proceedings in Rule 115 and Rule 116 EPC (alternatively in the RPBA under G6/95, r.1 para.2, i.e. new Art.15a RPBA). In other words, in my view, an amendment of Article 116 is required. I don't expect that a new provision regulating mandatory vico proceedings will be found invalid under Article 164(2) EPC under a dynamic interpretation of Article 116 duly taking into account the AC's decision in particular if taken with large majority of the votes, as in G3/19 (and possibly having regard to the Implementing Regulations adopted at the Munich Conference 1973 including in Part VII a Chapter II ‘Oral Proceedings and taking of evidence’; p.72 of the PDF further in view of G6/95 r.1). 
• Moreover, in my view switching to vico oral proceedings without travel to Munich and The Hague may very well be justified as a legislative choice as contributing to a green economy and to diversity and inclusion of the profession and the patent system and access to justice, in terms of geographic distribution over the EPC Contracting States but also in terms of combining the patent attorney job with the often still genderized demands of family life. Due regard is to be given to the practical availability of high-quality vico systems. The Division/Board may still be required to sit and deliberate in person on the EPO premises so as to ensure the collegiate decision-making enshrined in the EPC. Further on motivated request of a party in-person oral proceedings should be available when justified by the specific circumstance of the case. Merely offering voluntary vico proceedings may not suffice for the indicated goals in opposition (appeal) proceedings, because if the other party can unexpectedly show up on the EPO premises to attend the oral proceedings, a party may feel reluctant to choose for vico, such that simply voluntary vico's in opposition may not effectively contribute to those goals. 
• Alternatively, the EPO could introduce in opposition (appeal) proceedings the possibility for parties to give binding (i.e. irreversible) consent to vico oral proceedings on the condition that the opposing party does the same. I think a simple Decision could suffice as the legal basis for first instance opposition proceedings. 
• 
  

On the partiality

• The Enlarged Board: “The fact that a judge has expressed an opinion on a legal issue that is to be decided upon in a case is not in itself and not always a ground for suspicion of partiality (see also G 3/08 and G 2/08).”
• The Enlarged Board: “the Chairman was involved in all stages of the preparation of the legislation, which is at least indirectly under review in G 1/21. His involvement was direct and decisive, as follows from the above mentioned facts. He initiated the proposal, presented it for adoption and approval by the competent organs, he steered the practice of the Boards of Appeal in this direction and communicated this practice to the public. The reasoning of the ECHR that a direct involvement in the passage of legislation is likely to be sufficient to cast doubt on partiality [in case 28488/95 regarding the (Deputy) Bailiff of Guernsey], therefore seems to apply a fortiori to the present case”
  
  
• As to member Z of the Enlarged Board: “A further member of the panel dealing with G 1/21 (Z) informed the Enlarged Board that he was also involved in the preparation of Article 15a RPBA and that his involvement could be qualified as relating to circumstances underlying the objections made by the appellant.”
• The Enlarged Board decides that Mr. Z is also replaced because he was actively involved in the preparation of the proposal. 

• The composition of the Enlarged Board as per the Communication of 17.03.2021: Josefsson (chair), Beckedorf, van der Eijk, Arnold (external), Chatzikos (external), Eliasson, Ritzka. 
• The panel taking the present decision: Blumer (chair), van der Eijk, Bokor, Arnold, Chatzikos, Gryczka, Pricolo. 

G 1/21 G 0001/21 G1/21 EPO

ECLI:EP:BA:2021:G000121.20210517

https://www.epo.org/law-practice/case-law-appeals/recent/g210001eu1.html

A. FACTS AND SUBMISSIONS

1. At the end of the oral proceedings of 8 February 2021 in case T 1807/15 before the Board of Appeal 3.5.02 (the Board), the Board's Chairman informed the parties that the Board would refer a question under Article 112 EPC to the Enlarged Board of Appeal.

With its interlocutory written decision of 12 March 2021 the Board referred the following question:

Is the conduct of oral proceedings in the form of a videoconference compatible with the right to oral proceedings as enshrined in Article 116(1) EPC if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference?

2. By Order of 17 March 2021 the Chairman of the Enlarged Board of Appeal (Enlarged Board) determined the composition of the panel to decide on the referral. On 17 March 2021 the parties to the appeal proceedings in case T 1807/15 and the President of the European Patent Office (EPO) were invited to file submissions on the referred question by 27 April 2021. By a communication of 24 March 2021 the public was invited to file written statements on the referred question within the same timeframe.

3. More than 40 amicus curiae briefs were filed, the President of the EPO provided his comments and also the appellant-opponent (further: appellant) filed a submission. In this submission, dated 27 April 2021, the appellant raised an objection under Article 24(3) EPC against the Chairman and two members (X and Y) of the Enlarged Board for reason of suspected partiality. The objection was based on the involvement of the Chairman in the preparation and enactment of Article 15a of the Rules of Procedure of the Boards of Appeal (RPBA), which entered into force on 1 April 2021. For the members X and Y the objection was based on their membership of the Presidium of the Boards of Appeal.

T 0443/18 - Announcing decisions vs opinions

 Key points

• In this opposition appeal case, the OD had announced during the oral proceedings that the Main Request was not inventive. The OD later reverses on this point. The appellant/opponent considers this to be a substantial procedural violation.
• “The Board concurs with the respondent that the relevant passage of the minutes, which have never been contested, wordily states that, unlike the cases underlying the decisions of the Boards of Appeal and of the Enlarged Board of Appeal cited by the appellant, what was announced and thereafter withdrawn by the opposition division was an opinion without any binding character and not a final interlocutory decision.”
• “the Board observes that after the revision of the initially announced opinion in view of a further distinguishing feature which became apparent to the opposition division only upon discussion of D4' with respect of the auxiliary request 1 [] the object of the discussion was reverted to the main request []  whereby the appellant did have the opportunity to defend its position with respect to the revised conclusion of the opposition division regarding inventive step of the main request. The Board is thus convinced that the review of the non-binding opinion announced by the opposition division in the course of the oral proceedings did not negatively and substantially affect the position of the appellant/opponent in defending its case.”

T 0443/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t180443eu1.html

1. The appellant alleged a major procedural deficiency caused by the circumstance that the opposition division reversed in the course of the oral proceedings a previously announced and binding interlocutory decision according to which the subject-matter of claims 1 and 6 as granted was considered to lack inventive step in view of document D4' combined with general technical knowledge. In the appellant's view the statement of the opposition division reported under point 5 of the minutes had clearly the binding character of a final interlocutory decision which as such and according to established Case Law of the Boards of Appeal (decisions T390/88, G12/91, T0699/99, T0042/02, T1081/02 and [G4/91] were cited by the appellant) could not be reversed. Furthermore, the appellant argued that the review of the already announced and binding interlocutory decision did have an impact on the development of the whole oral proceedings and on its outcome which negatively affected the appellant's position in defending its case.

1.1 The arguments of the appellant are not convincing for the following reasons:

The Board concurs with the respondent that the relevant passage of the minutes, which have never been contested, wordily states that, unlike the cases underlying the decisions of the Boards of Appeal and of the Enlarged Board of Appeal cited by the appellant, what was announced and thereafter withdrawn by the opposition division was an opinion without any binding character and not a final interlocutory decision. This is further confirmed by the fact that the opposition division gave its opinion without having yet announced a decision on the admissibility of D4', which decision according to point 3 of the minutes, last sentence, was intended to be announced later. The Opposition Division indeed decided to admit document D4' only at a later stage, namely after announcing that the subject-matter of claim 6 as granted was not rendered obvious by the combination of D4' and D1 (see point 10 of the minutes, third paragraph).

Furthermore, the Board observes that after the revision of the initially announced opinion in view of a further distinguishing feature which became apparent to the opposition division only upon discussion of D4' with respect of the auxiliary request 1 (i.e. the claimed arrangement of the buffer part on the saw blade housing), the object of the discussion was reverted to the main request (see line 17 of point 8 of the minutes), whereby the appellant did have the opportunity to defend its position with respect to the revised conclusion of the opposition division regarding inventive step of the main request. The Board is thus convinced that the review of the non-binding opinion announced by the opposition division in the course of the oral proceedings did not negatively and substantially affect the position of the appellant/opponent in defending its case.

1.2 In view of the above, the Board concludes that no substantial procedural violation adversely affecting the rights of the appellant/opponent took place, and that therefore, no "special reasons" in the meaning of Article 11 RPBA 2020 for setting aside the decision under appeal and remitting the case to the opposition division can be identified. As a result, the reimbursement of the appeal fee under Article 103 (1) (a) EPC requested by the appellant is not justified.

T 2481/17 - R.103(4)(a) and decision in writing

 Key points

• “The respondent [patentee, who had originally also filed an appeal] has requested reimbursement of the appeal fee at 25% according to Rule 104(3)(a) EPC. The respondent's request [*] was made more than one month after the notification of a communication issued by the Board of Appeal in preparation for the oral proceedings but before the present decision is issued. For the purposes of application of Rule 103(4)(a) EPC [if the appeal is withdrawn after expiry of the period under paragraph 3(a) but before the decision is announced at oral proceedings] the Board considers it equivalent whether a decision is announced at the oral proceedings or issued in writing. Therefore, the Board considers the respondent's request for partial reimbursement of the appeal fee at 25% justified.”
• (*) the patentee had also withdrawn its appeal more than one month after the preliminary opinion but before the appeal decision was issued in writing. I think the withdrawal of the appeal is relevant.

T 2481/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t172481eu1.html

7. Reimbursement of the Appeal Fee

The respondent has requested reimbursement of the appeal fee at 25% according to Rule 104(3)(a) EPC. The respondent's request was made more than one month after the notification of a communication issued by the Board of Appeal in preparation for the oral proceedings but before the present decision is issued. For the purposes of application of Rule 103(4)(a) EPC, the Board considers it equivalent whether a decision is announced at the oral proceedings or issued in writing.

Therefore, the Board considers the respondent's request for partial reimbursement of the appeal fee at 25% justified.

T 1369/18 - In effect withdrawing appeal

Key points

• “By withdrawing the main request for maintenance of the patent as granted []  and requesting as a new main request []  the maintenance of the patent in the amended form which was allowed by the opposition division and thus the dismissal of the opponent's appeal, the patent proprietor has, in effect, withdrawn its appeal before a decision was issued. The patent proprietor is thus entitled to a reimbursement at 25% of the appeal fee according to Rule 103(4)(b) EPC.” 
• This decision may be contrasted with T0777/15 finding that for a refund under R.103(4)(c) it is not enough that the Board can accede to the applicant's main request when the applicant withdraws higher ranking requests. 

T 1369/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t181369eu1.html

decision text omitted

T 0261/19 - Non-obvious having regard to any prior art

 Key points

• The Board: “ In any case, under Article 56 EPC, in order for an inventive step to be acknowledged, the claimed invention must not be obvious to a skilled person having regard to the state of the art, i.e. any prior art disclosure with the exclusion of documents under Article 54(3) EPC. ”
• I think the emphasis on  “any prior art” in this decision is noteworthy.
• “The determination of the "closest prior art" within the problem-solution approach is an efficient way to address the available prior art disclosures because if inventive step of a claimed invention can be acknowledged when starting the assessment having regard to the "closest" prior art, this will apply all the more so when starting the assessment from a prior art disclosure which is more remote and, hence, such further assessments can be dispensed with. On the other hand, inventive step has to be denied if, having regard to a particular prior art, the claimed solution was obvious to the skilled person.”
• “ In such a case, the choice of that prior art as the starting point for the assessment of inventive step needs no specific justification as the claimed invention must, as a general rule, be non-obvious having regard to any prior art”

T 0261/19 -
https://www.epo.org/law-practice/case-law-appeals/recent/t190261eu1.html

2.5 In any case, under Article 56 EPC, in order for an inventive step to be acknowledged, the claimed invention must not be obvious to a skilled person having regard to the state of the art, i.e. any prior art disclosure with the exclusion of documents under Article 54(3) EPC. The determination of the "closest prior art" within the problem-solution approach is an efficient way to address the available prior art disclosures because if inventive step of a claimed invention can be acknowledged when starting the assessment having regard to the "closest" prior art, this will apply all the more so when starting the assessment from a prior art disclosure which is more remote and, hence, such further assessments can be dispensed with. On the other hand, inventive step has to be denied if, having regard to a particular prior art, the claimed solution was obvious to the skilled person. In such a case, the choice of that prior art as the starting point for the assessment of inventive step needs no specific justification as the claimed invention must, as a general rule, be non-obvious having regard to any prior art (see also in this context T 1742/12, points 6.3 and 6.6 of the reasons and T 967/97, point 3.2 of the reasons).

Therefore, although D5 may relate to the same purpose as the patent (D5, paragraph [0008]), this does not disqualify disclosures relating to a similar purpose such as D4 being considered as a valid starting point in the assessment of inventive step.

T 2825/19 - Linguistics vs abstract formulation of algorithms

 Key points

• The Board finds the claim shown below not inventive under the Comvik approach. The Board: “In essence, the invention translates natural language input into internal formal language expressions and then further translates these expressions into executable formal expressions in a formal language such as SQL (structured query language)”
• The present Board: “The Enlarged Board of Appeal [in G3/08] defined the expression "further technical considerations" by analogy to the expression "further technical effect" introduced in decision T 1173/97 (Computer program product/IBM, OJ EPO 1999, 609). That decision pointed out two cases in which the technical character of a computer program is supported. First, when a computer is used to solve a technical problem related to a technical field outside of computing such as control of industrial manufacturing processes. Second, when there is a "further technical effect" that solves a technical problem internal to the computer system”
• “The board understands opinion G 3/08 as taking a negative view on the technical character of the activity of programming a computer as also expressed in the decision T 1539/09”
• “the board agrees with the examining division that steps b) to p) do not contribute to the technical character of the claimed invention as these steps do not involve technical considerations going beyond "merely" finding an abstract computer algorithm to carry out the translation from natural language text into an internal formal language. In particular, nothing in steps b) to p) reflects considerations that concern the internal technical operations of a computer system on which these steps are carried out. Rather, these steps are specified merely on an abstract level”
• “the board has made it clear that according to opinion G 3/08 the issue of technicality is not only relevant for linguistic aspects but also for the abstract formulation of algorithms. ”
  
  
  
• “Consequently, [under the Comvik approach] the objective technical problem may be formulated as how to implement a non-technical algorithm comprising steps b) to r) in the computer system disclosed in document D4. The board judges that the method of claim 5 does not contain any implementation details going beyond a mere automation of the underlying non-technical algorithm using computing means known from document D4. In view of the above, the board concludes that the method of claim 5 lacks inventive step and is therefore not allowable”

T 2825/19 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t192825eu1.html

IX. Claim 5 of the new main request reads as follows:

"A computer-implemented method for translating natural language into a formal language executable on a programmable device, said method comprising the steps of:

a) receiving (3.1.1) natural language text;

characterised by:

b) parsing (3.1.2) said text into a sequence of sequences of pretokens;

c) recognizing (3.2.0) the pretokens as tokens in a lexicon of terms;

d) inserting new terms into the lexicon under specific control;

e) assigning syntactic types to pretokens by comparison to lexical terms in the lexicon for further syntactic processing;

f) generating a sequence of expressions by reassigning lexical types to tokens based on syntactic context based on the assigned types;

g) correlating terms occurring in the set of expressions in order to replace indirect references by direct references;

h) performing a process of term reduction, using a type reduction matrix, to establish syntactic dependencies between terms in an expression created by said correlating of terms, wherein the type reduction matrix maps sequences of tokens into a relative reduction ordering that represents syntactic dependencies between tokens;

i) constructing in a process of term inversion chains of syntactic dependencies among lexical terms in an expression provided by the term reduction process and determining dependencies;

j) generating (3.2.3) syntactic trees which represent the syntactic structures of said processed expressions provided by the term reduction process;

k) representing said processed expressions as terms in a syntactic algebra on the basis of the syntactic trees, the syntactic algebra comprising syntactic terms formally representing processed expressions;

l) representing terms in the syntactic algebra as objects in a semantic algebra, the semantic object algebra comprising semantic objects as internal references of terms in the syntactic algebra;

m) combining objects in a semantic object algebra by means of a semantic product on pairs of semantic objects to form more complex semantic objects;

n) representing (3.3.1) correlated syntactic algebraic terms and semantic objects as terms in a semantic tensor algebra, the semantic tensor algebra comprising correlated syntactic terms and semantic objects;

o) representing terms in the semantic tensor algebra as internal formal models;

p) transforming terms in the syntactic algebra into equivalent expressions in an internal formal language;

q) associating external operation environments with internal formal models; and

r) translating expressions of the internal formal language into equivalent formal expressions executable in an external operational environment."

[decision text omitted]

https://www.epo.org/law-practice/case-law-appeals/recent/t192825eu1.html

T 2348/19 - Decision lacking a signature

 Key points

• The decision of the OD was signed by the first and second member and the first member also signed for the chair, i.e. the chair did not sign the decision.
• The Board, in the headnote: “If a member of the department of first instance, who participated in the oral proceedings before that department, is unable to act at the time the reasoned decision is to be issued, for example due to death or a longer lasting illness, one of the other members may sign on behalf of the incapacitated member. However, in such a situation, a written explanation as to why one member is signing on behalf of another must be provided. In the absence of such an explanation, the contravention of Rule 113(1) EPC constitutes a substantial procedural violation”
• “The fact that the chair did not sign the decision, i.e. that the decision is tainted with a substantial procedural deficiency, does not render that decision "null and void" in the sense that it never had any legal effect, contrary to the conclusions drawn in T 390/86 (cf. point 8 of the Reasons). Rather, a reasoned decision affected by such a substantial procedural violation ceases to have a legal effect only if set aside by the competent Board of Appeal (T 2076/11, point 5 of the Reasons; see also J 8/18, point 2 of the Reasons).”
• The case is remitted back to the OD.

T 2348/19 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t192348eu1

Reasons for the Decision

1. Signatures on the reasoned decision and the minutes

1.1 Pursuant to Rule 113(1) EPC, any decision from the European Patent Office must be signed by, and state the name of, the employee responsible.

1.2 The board endorses the established view that this requirement is not just a mere formality but an essential procedural step in the decision-taking process. The name and the signature serve to identify the decision's authors and express that they unconditionally assume responsibility for its content. The requirement laid down in Rule 113(1) EPC is aimed at preventing arbitrariness and abuse and at ensuring that it can be verified that the competent body has taken the decision. It therefore constitutes an embodiment of the rule of law. According to settled case law, a violation of the requirement under Rule 113(1) EPC amounts to a substantial procedural violation (cf. J 16/17, points 2.2 and 2.3 of the Reasons; T 2076/11, point 1 of the Reasons; T 989/19, point 3 of the Reasons). Moreover, a Board may address such a substantial procedural violation of its own motion (cf. T 989/19, point 2 of the Reasons).

{more after the jump break}

T 0081/20 - First level of convergence

 Key points

• “[In] its statement of grounds of appeal the appellant [opponent] for the first time brought forward objections of a lack of original disclosure with respect to [certain claim features]. Therefore, they do not meet the requirements of Article 12(2) RPBA 2020 and are, according to Article 12(4) RPBA 2020, to be regarded as an amendment to the appellant's case.”
• “Furthermore, the appellant did not demonstrate that these objections were admissibly raised and maintained in the opposition proceedings leading to the decision under appeal. Therefore, according to Article 12(4) RPBA 2020, any such amendment may be admitted only at the discretion of the board. Contrary to the requirement under Article 12(4), third sentence, RPBA 2020, the appellant did not provide any reasons why it submitted the amendment only in the appeal proceedings.”
• The objection is also covered by “Article 12(6), second sentence, RPBA 2020”. In particular, “the board is of the opinion that the appellant could and should have submitted the newly raised objections already in the first-instance proceedings. The appellant did not set out any circumstances (and the board fails to see any) which would justify the admittance of the new objections.”
• “In view of the above, the need for procedural economy and the fact that these objections appear prima facie not to prejudice maintenance of the patent, the board, exercising its discretion under Article 12(2),(4) and (6) RPBA 2020, does not admit the objections raised by the appellant for the first time in the grounds of appeal into the proceedings.”

T 0081/20 -

https://www.epo.org/law-practice/case-law-appeals/recent/t200081eu1.html

1.2 Further features

In the present appeal case the statement of grounds of appeal was filed on 25 February 2020, i.e. after the date of entry into force (1 January 2020) of the new Rules of Procedure of the Boards of Appeal (RPBA 2020).

According to Article 12(2) RPBA 2020, a party's appeal case should be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based. However, in its statement of grounds of appeal the appellant for the first time brought forward objections of a lack of original disclosure with respect to features relating to the reflective element and the primary and secondary paths. Therefore, they do not meet the requirements of Article 12(2) RPBA 2020 and are, according to Article 12(4) RPBA 2020, to be regarded as an amendment to the appellant's case.

Furthermore, the appellant did not demonstrate that these objections were admissibly raised and maintained in the opposition proceedings leading to the decision under appeal. Therefore, according to Article 12(4) RPBA 2020, any such amendment may be admitted only at the discretion of the board. Contrary to the requirement under Article 12(4), third sentence, RPBA 2020, the appellant did not provide any reasons why it submitted the amendment only in the appeal proceedings.

[read more after the jump]

T 0106/16 - Art.123(2) objection raised by Board

 Key points

• “The board has doubts that an objection of added subject-matter raised by a board in reaction to amendments submitted at the appeal stage may, in general, constitute cogent reasons for submitting new requests, as an appellant has to be aware that every amendment will have to be examined for compliance with Article 123(2) EPC (see T 2214/15, Reasons, point 5.4).”

T 0106/16

https://www.epo.org/law-practice/case-law-appeals/recent/t160106eu1.html

decision text omitted

T 1148/15 - A review of the PSA

Key points

• The Board provides a very useful general review of the problem-solution approach.
• “The first step of the problem-and-solution approach is to determine the closest prior art, i.e. the item of prior art which appears to be the most promising starting point for arriving at the claimed subject-matter in an obvious manner.”
• “The main reason for identifying the closest prior art is that if it can be established that the skilled person would not have arrived at the claimed subject-matter in an obvious manner when starting from the closest prior art, then it can be reasonably assumed that the same conclusion would be true when starting from any other item of prior art” (italics added). The Board adds that if the assumption turns out to be wrong “the problem-and-solution approach may have to be repeated for any prior art that also qualifies as a suitable starting point”.
• “As a first criterion, the closest prior art should be related to the claimed invention, in the sense that it should disclose subject-matter conceived for the same purpose or aiming at the same objective, corresponding to a similar use, or relating to the same or a similar technical problem or, at least to the same or a closely related technical field.”
• “As a second criterion, the closest prior art should disclose subject-matter having the greatest number of technical features in common with the claimed invention, i.e. requiring the minimum of structural and functional modifications.”
“ the first criterion should be given more weight than the second” (summarizing CLBA I.D.3.2)
• “If the closest prior art also had to disclose the purpose or effect of the distinguishing feature(s) [as argued by the applicant], it would mean that only items of prior art which contained a teaching towards the distinguishing feature(s) would qualify as the closest prior art. However, this is not required by the problem-and-solution approach because the teaching towards the distinguishing feature(s) may come from another item of prior art or from the skilled person's common general knowledge.”
• “the closest prior does not have to disclose all the problems solved by the claimed invention. In particular, it does not have to disclose the objective technical problem [...]”
• “the technical effect in question is that achieved by the distinguishing features. The technical effect is usually one or more technical advantages (and possibly one or more accompanying disadvantages). When the claimed subject-matter is a process for making an object, it is also the object itself.”
• “In most cases, the objective technical problem can be formulated as how to achieve the technical effect. ” (clerical error corrected)
• “[The objective technical problem] is usually a problem the skilled person is familiar with because it relates to known drawbacks of the prior art in the technical field of the invention.”
• “Determining the technical effect is a useful intermediate step for ensuring the proper formulation of the objective technical problem.”
• “The determination of the technical effect is objective because it is based on an objective comparison of the claimed subject-matter with the closest prior art.”
• “In the third step of the problem-and-solution approach, according to the established case law of the boards of appeal, in order to determine whether the claimed invention would have been obvious to the skilled person starting from the closest prior art and having regard to the state of the art within the meaning of Article 54(2) EPC [], the boards apply the "could-would approach". This means asking not whether the skilled person could have arrived at the claimed invention by modifying the closest prior art, but whether they would have done so in the expectation of solving the objective technical problem or in the expectation of some improvement or advantage”.
• As a comment, the alternative of “or in the expectation of some improvement or advantage” not necessarily tied to the objective technical problem is in my view not the basic form of the PSA. Why formulate to objective technical problem carefully in the second step to forget about it in the third step?
• As a further comment, I think that question is whether the skilled person would have arrived at something falling within the ambit of the claimed invention. A claim specifying a broad range is not inventive if one embodiment in that range is obvious even if the prior art does not make the whole range obvious. 
• The Board: “ it is established case law that selecting one solution from a host of obvious solutions does not render the selected solution inventive, in the absence of an unexpected technical effect associated with that selection”.

T 1148/15 -

https://www.epo.org/law-practice/case-law-appeals/recent/t151148eu1.html

Reasons for the Decision

1. The appeal is admissible.

The present application

2. The present application relates to a set-top box for cable television, comprising a front-end portion for receiving and transmitting signals over said cable and a back-end portion for further processing the signals received by or to be transmitted by the front-end portion. The front-end and back-end portions are controlled by a front-end processor and a back-end processor, respectively, which communicate with each other.

Main request - inventive step (Article 56 EPC 1973)

3. Problem-and-solution approach

The problem-and-solution approach has been developed by the case law of the boards of appeal of the EPO to ensure that inventive step is assessed objectively and avoid ex post facto analyses of the prior art (see Case Law of the Boards of Appeal of the European Patent Office (hereinafter "CLBoA"), 9th edition, July 2019, I.D.2).

The steps of the problem-and-solution approach may be summarised as follows:

(a) identifying the closest prior art and determining the distinguishing features, i.e. the features of the claimed subject-matter that are not disclosed by the closest prior art;

(b) determining the technical effect achieved by the distinguishing features and deriving from the technical effect the objective technical problem solved by the claimed subject-matter with respect to the closest prior art;

(c) examining whether the skilled person, starting from the closest prior art and having regard to the state of the art within the meaning of Article 54(2) EPC 1973, would have arrived at the claimed subject-matter in an obvious manner.

T 0884/18 - Wayback Machine

 Key points

• “As variously stated in case law, the appropriate standard of proof for Internet citations is the "balance of probabilities" and not "beyond reasonable doubt". The conclusions reached in the earlier decision T1134/06 that the stricter standard of proof "beyond reasonable doubt" had to be applied to Internet disclosures has been superseded by more recent case law [] Thus availability to the public is considered to be established on the balance of probabilities by the date stamps on evidence A4a/A4b from the Wayback Machine.”
• “ The respondent-proprietor also submits that according to information available on the WebArchive, the recording date of the images by the Wayback Machine may not always be the same as that of the general HTML page on the date stamp. However, they neither argue that this is in fact the case for A4a/A4b nor have they submitted any evidence to that effect. The Board therefore sees no reason to question the validity of the availability to the public of the whole assembled web page shown in A4a/A4b, including the images, on their date stamp of 2 April 2006.”
  
  
• The Board also applies Article 13(2) RPBA 2020, and highlights that part of the decision in the catchword, but I don't see any remarkable point in that. The Board seems to suggest that if they issue the preliminary opinion months in advance of the hearing, the patentee should not file a new main request at the beginning of the oral proceedings even if the preliminary opinion does not set any time limit for filinga  response.

T 0884/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t180884eu1.html

6. Internet evidence A4a/A4b

6.1 As variously stated in case law, the appropriate standard of proof for Internet citations is the "balance of probabilities" and not "beyond reasonable doubt". The conclusions reached in the earlier decision T1134/06 that the stricter standard of proof "beyond reasonable doubt" had to be applied to Internet disclosures has been superseded by more recent case law, see Case Law of the Boards of Appeal, 9th edition 2019 (CLBA), I.C.3.2.3.c)(i).

6.2 Thus availability to the public is considered to be established on the balance of probabilities by the date stamps on evidence A4a/A4b from the Wayback Machine.

6.3 The respondent-proprietor also submits that according to information available on the WebArchive, the recording date of the images by the Wayback Machine may not always be the same as that of the general HTML page on the date stamp. However, they neither argue that this is in fact the case for A4a/A4b nor have they submitted any evidence to that effect. The Board therefore sees no reason to question the validity of the availability to the public of the whole assembled web page shown in A4a/A4b, including the images, on their date stamp of 2 April 2006. This is before the relevant valid date for claim 1 of the main request, 6 November 2006 (second priority date) or 7 November 2006 (filing date).

6.4 The Board concludes that A4a/A4b is part of the prior art in the sense of Article 54(2) EPC for claim 1 of the main request.

T 0879/18 - New objection is new fact

Key points

• The OD decided to not admit AR-1 reasoning that “The opposition division is however of the opinion that MR was late filed in the sense of that O [the opponent] could not anticipate such an amendment due to the fact that the alleged basis was only present in the description. The opposition division therefore holds the view that MR is not admissible”. 
•  However, the opponent had raised a new objection based on a new claim interpretation during the oral proceedings before the OD and the patentee had filed the request in response to that objection.
• The Board: “In accordance with the Guidelines for examination (in the 2017 version then valid), section E-VI.2.2 point (a), if new facts and evidence are admitted a request of the proprietor for corresponding amendment would have to be admitted as the subject of the proceedings has changed. A new objection of lack of novelty based on documents not previously cited in this context constitutes new facts and evidence. As these were discussed (and thus admitted) the proprietor should have been given an opportunity to amend.” (emphasis added).
• The AR was an appropriate response to the new objection.
• “Consequently, the Board finds that the opposition division exercised its discretion unreasonably in not admitting the amended main request (now auxiliary request) in response to the opponent's fresh objection” and the request is admitted.
• 
  

T 0879/18

https://www.epo.org/law-practice/case-law-appeals/recent/t180879eu1.html

3. Auxiliary request 1, admittance, Article 12(4) RPBA with Article 114(2) EPC

3.1 The opposition division decided (see impugned decision, reasons, point 14) to exercise its discretion under Article 114(2) EPC by not admitting this request into the opposition proceedings.

3.2 According to settled jurisprudence of the Boards of appeal (see CLBA IV.C.4.5.2, and the cited decisions, for example T0640/91, headnote III and reasons, 6.3) a board of appeal should only overrule the way in which a department of first instance has exercised its discretion if it concludes that it has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way.

3.3 In the impugned decision (see reasons, point 14), the opposition division reasoned this point as follows:

"P [The proprietor] argued that this new MR [main request] was filed in response to the new argument relating to the definition of an array.

The opposition division is however of the opinion that MR was late filed in the sense of that O [the opponent] could not anticipate such an amendment due to the fact that the alleged basis was only present in the description. The opposition division therefore holds the view that MR is not admissible in accordance with Article 114(2) EPC".

3.4 It appears to the Board that the new argument referred to by the opposition division was a new interpretation of the term "array" submitted in connection with a new lack of novelty objection against the current main request with respect to D5 and D13 (see the minutes, points 8 and 13). This objection based on a new interpretation was first raised by the opponent at the oral proceedings, as acknowledged by the appellant opponent at the oral proceedings before the Board. Indeed, neither the summons of 19 July 2017 nor the opponent's subsequent submission dated 23 November 2017 which deal with this request (filed as 2nd auxiliary request with letter of 9 March 2017) mention novelty vis-a-vis D5 or D13 or the new interpretation of the term "array".

3.5 In accordance with the Guidelines for examination (in the 2017 version then valid), section E-VI.2.2 point (a), if new facts and evidence are admitted a request of the proprietor for corresponding amendment would have to be admitted as the subject of the proceedings has changed. A new objection of lack of novelty based on documents not previously cited in this context constitutes new facts and evidence. As these were discussed (and thus admitted) the proprietor should have been given an opportunity to amend. That they did so by adding detail from the description to clarify the meaning of the term "array" in order to delimit the claimed subject-matter from the cited prior art appears an appropriate response, that could be expected.

3.6 Consequently, the Board finds that the opposition division exercised its discretion unreasonably in not admitting the amended main request (now auxiliary request) in response to the opponent's fresh objection.

3.7 Therefore, the Board decided to admit the first auxiliary request into the appeal proceedings.