T 1294/16 - (II) Inventive step

 Key points

• “Under Article 56 EPC 1973, the only relevant question is whether the skilled person, having regard to the state of the art, would find the claimed invention to be obvious. This does not exclude the skilled person starting their considerations from any piece of prior art they might be aware of. Thus, the choice of the starting point is not restricted. ”
  
  
• On the right to be heard before the Examining Division: “The appellant submits that in the oral proceedings before the Examining Division only D2 was considered as the "closest prior art" in the framework of the "problem and solution approach", whereas the decision is based on document D1 as "closest prior art". The applicant was not heard on the grounds that led to the refusal, in breach of Article 113(1) EPC 1973.”
• “In its preliminary opinion [], the Board expressed its doubts, stating, with reference to passages from the minutes, that it seemed to be "at least implicit" that both D1 and D2 had been considered as closest prior art by the Examining Division. The appellant takes issue with the idea that an only "impli­cit discussion" could be sufficient to satisfy the appellant's right to be heard under Article 113(1) EPC 1973 and asks the Board to submit that question to the Enlarged Board. ”
• “The board takes the view that a potential violation of the appellant's right to be heard by the Examining Division would have no impact on the present decision, as the appellant did not contest that the right to be heard on the matter was respected by the Board. The appellant acknowledged to have had ample opportunity to present its case before this Board. In particular, it was discussed what is the appropriate starting point ("closest prior art") for the assessment of inventive step, the Board explicitly considered both D1 and D2 as possible "closest prior art" documents, and the appellant was given several opportunities to file amendments at a very late stage of the proceedings.”
  
  
• “The Board does not dispute that a technical effect might be obtained [by the feature of the claimed computer-implemented method] under some circumstances. But this is not sufficient for acknowledging an inventive step, because those circumstances are not claimed (nor are they in fact made clear by the description), which means that the effect is not obtained over the full breadth of the claim, which in turn leads to the conclusion that at least a subset of the claimed matter is not to be seen as a technical solution to a technical problem and hence cannot be acknowledged as an invention involving an inventive step ”

T 1294/16 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t161294eu1.html

Starting point (closest prior art)

3. The Examining Division considered that claim 1 of the main request lacked an inventive step starting from document D1.

4. The appellant (page 4 of the grounds of appeal) disagrees with the choice of D1 as "closest prior art" and submits that D2 should instead be the "closest prior art", because D2 has, or at least mentions, the same purpose, i.e. a search for a model in an image, whereas D1 is only about defect detection. In support, the appellant quotes the "Case Law of the Boards of Appeal" (I.D.3.1, seventh edition; same section in the ninth edition) stating:

The boards have repeatedly pointed out that the closest prior art for assessing inventive step is normally a prior art document disclosing subject-matter conceived for the same purpose or aiming at the same objective as the claimed invention and having the most relevant technical features in common.

5. This Board endorses the opinion that a document with a different purpose can be selected as a starting point in an inventive step analysis (see, e.g., T 1742/12, points 9 and 10). Under Article 56 EPC 1973, the only relevant question is whether the skilled person, having regard to the state of the art, would find the claimed invention to be obvious. This does not exclude the skilled person starting their considerations from any piece of prior art they might be aware of. Thus, the choice of the starting point is not restricted. The Board notes that the above passage quoted by the applicant is a rule which states which document is "normally" (not "always") to be chosen as closest prior art. This rule is employed for efficiency reasons, but it cannot be taken to exclude the selection of different prior art as a starting point and thus as "closest prior art" (see T 0694/15, point 13; T 0405/14, point 19; T 0816/16, point 3.7.1).

6. Considering the situation as put forward by the appellant, the fact that a document has a different purpose than the invention does not mean that it cannot lead to a finding of obviousness. There can be obvious reasons for using the teachings of the document for the claimed purpose, e.g. when the skilled person reading it knows that the teaching can be used, as it is or analogously, for that purpose.

[...]

25. In response to this second point, the Board recalls that it is of constant jurisprudence that only features contributing to the solution of a technical problem by providing a technical effect can contribute towards a finding of inventive step (T 0641/00 Two identities/COMVIK, point 6). This is because the EPC provides for protection of inventions, which require a technical solution to a technical problem (Rule 27(1)(c) EPC 1973). It is the (claimed) invention, i.e. the technical solution, that needs to involve an inventive step (Articles 52 EPC and 56 EPC 1973) for a patent to be granted.

26. In response to the first set of arguments (point 23. above), the Board first remarks that, whichever way the data is arranged, the number of operations (data read-outs, additions, multiplications) cannot change, because the computation of the NCC requires all data to be read and the same products to be computed and added.

26.1 So, if there is any speed-up, it must come from a faster data read-out, caused by the allegedly simpler structure. This, however, cannot be assessed without information on the software and hardware architecture. Such information is not provided, neither in the claim, nor in the description. A simpler indexing structure does not necessarily translate to a faster read-out. This depends on a number of factors, including the data structures allowed by the programming language, the memory management, the compiler design etc. If, for instance, the programming language is optimized for treating RGB images in the standard 3-plane format (see D6), then forcing a rearrangement of the data matrix will actually reduce performance. There is no information in the description allowing to assess this.

26.2 The Board does not dispute that a technical effect might be obtained under some circumstances. But this is not sufficient for acknowledging an inventive step, because those circumstances are not claimed (nor are they in fact made clear by the description), which means that the effect is not obtained over the full breadth of the claim, which in turn leads to the conclusion that at least a subset of the claimed matter is not to be seen as a technical solution to a technical problem and hence cannot be acknowledged as an invention involving an inventive step (see also T 0939/92, points 2.4 to 2.6).

27. Regarding the argument as to the convenience for the programmer, i.e. easing the programming effort, this, in principle, cannot be considered to define an invention at all (T 1539/09, Catchword). Arguendo, even if that could be the case, the technical effect cannot be objectively assessed here, because on the one hand the programming language is not specified, and because on the other hand the answer is a matter of subjective preference: while writing code with only two loops may be more convenient, the indexes will no longer intuitively directly represent the standard RGB format, making code reading less convenient.

28. Thus the claimed data transformation means does not solve any technical problem at all, and hence cannot contribute to a finding of inventive step. As in the case of the main request, claim 1 of this request lacks inventive step starting from D1 in view of the common knowledge in the art or from D2 in view of D1 and the common knowledge in the art.

[...]

Alleged procedural violation

37. The appellant submits that in the oral proceedings before the Examining Division only D2 was considered as the "closest prior art" in the framework of the "problem and solution approach", whereas the decision is based on document D1 as "closest prior art". The applicant was not heard on the grounds that led to the refusal, in breach of Article 113(1) EPC 1973.

38. The minutes of those oral proceedings mention that the "preliminary opinion of 23-11-2015" was discussed (1st page, paragraph 4), especially its "section 1.3.2" (pa­­ra­graph 10), and state (1st page, last sentence, to 2nd page, 1st paragraph) that the "Art 52 objection of the preliminary opinion under point 1.3.2 was withdrawn" and that "the Art 52 objections raised in sec­tion 1.5 [...] were maintained". There is no point 1.5 in the preliminary opinion of 23 November 2015. The summons to oral proceedings dated 5 June 2015 contain objections starting from both D1 and D2 (in combination with D1) in points 1.4 and 1.5. The discussion during the oral proceedings then focused on the teachings of D1 (2nd page, top: "fills the gaps of D1"; further down "The contiguous data is not explicitly disclosed in D1").

39. Thus, on the basis of the examination file itself, it appears that it was at least implicit during the oral proceedings, i.e. it should have been known to the applicant that both D1 and D2 were considered as "closest prior art".

40. The appellant disagreed. It was clear during the oral proceedings before the Examination Division that the starting point was D2. The arguments were different if one started from D1 or D2. The case could then have been argued differently.

41. The Board is not in a position to verify this allegation. It would have been for the members of the Examining Division to do so had the applicant contested the minutes of the oral proceedings before the division. Thus, the Board cannot find that a (substantial) procedural violation took place.

The request for referral to the Enlarged Board

42. The appellant argued that the Examining Division had based its decision on D1 as closest prior art that had not as such been discussed during the oral proceedings. In its preliminary opinion (see points 5.3 and 5.4), the Board expressed its doubts, stating, with reference to passages from the minutes, that it seemed to be "at least implicit" that both D1 and D2 had been considered as closest prior art by the Examining Division. The appellant takes issue with the idea that an only "impli­cit discussion" could be sufficient to satisfy the appellant's right to be heard under Article 113(1) EPC 1973 and asks the Board to submit that question to the Enlarged Board.

43. The board takes the view that a potential violation of the appellant's right to be heard by the Examining Division would have no impact on the present decision, as the appellant did not contest that the right to be heard on the matter was respected by the Board. The appellant acknowledged to have had ample opportunity to present its case before this Board. In particular, it was discussed what is the appropriate starting point ("closest prior art") for the assessment of inventive step, the Board explicitly considered both D1 and D2 as possible "closest prior art" documents, and the appellant was given several opportunities to file amendments at a very late stage of the proceedings.

44. Hence, the answer to the question the appellant asks the Board to refer would have no consequences on the present case, so that a decision is not required (Article 112(1)(a) EPC 1973).

Order

For these reasons it is decided that:

The appeal is dismissed.

T 1294/16 (I) - A close reading of Art. 13(2) RPBA

 Key points

• In this examination appeal, the Board gives a critical assessment of Article 13(2) specifying that certain amendments to party's appeal case “shall, in principle, not be taken into account, unless there are exceptional circumstances, which have been justified by cogent reasons by the party concerned”. 
• “The Board finds Article 13(2) RPBA 2020 to be ambiguous.”
• The applicant had submitted an auxiliary request after receiving the Board's preliminary opinion. The reasons for filing the requests stated by the applicant are not exceptional circumstances according to the Board (r.17.3).
• The Board, on the meaning of ‘exceptional’ in Art. 13(2) RPBA 2020: “The exceptionality is hence not necessarily linked to events being exceptional in the sense of deviating from the expected, but can also be caused by considerations related to the legal framework, notably the principles underlying the rules of procedure” because the Explanatory Notes to Art. 13(2) mention as example the Board raising a new objection, “although the Board raising a new objection is in a situation that may not necessarily be qualified as exceptional in the (dictionary) sense of unusual or uncommon.”
• “If admittance of a (late-filed) submission is not detrimental to procedural economy this Board considers it appropriate to accept that "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020 are present, and justified to admit the submission, provided that this does not adversely affect any other party. ”
• The Board, on “ justified ... by the party concerned”: “ if the Board, of its own motion, finds the circumstances exceptional in view of the purpose of the convergent approach, then cogent legal reasons need not be brought forward by the party.”
• The Board, on “in principle”: “The Board concludes that the term "in principle" should be ignored.” as the term is either redundant, or makes Art. 13(2) contradictory, or “it is unclear inter alia whether the term "in principle" is meant to provide a residue of discretion for the Board to admit a request even in the absence of exceptional circumstances (or where no cogent reasons were supplied for their justification).” (the Board in fact assuming such residue of discretion). 
• See also T2155/15 of the same Board admitting a request under Art. 13(2) RPBA 2020: “The opponent had no objections to this auxiliary request being taken into account, and it was possible for the board to deal with the request without undue delay. Hence the board, of its own motion, found the situation to be exceptional, Article 13(2) RPBA 2020, no arguments in this respect from the respondent [patentee] being necessary. The board therefore admitted the auxiliary request. In so doing, the board concurred with the findings of T1294/16” 
  
  

T 1294/16

https://www.epo.org/law-practice/case-law-appeals/recent/t161294eu1.html

Reasons for the Decision

Auxiliary requests: admittance

(Article 13(1) and (2) RPBA 2020)

15. Article 13(1) RPBA 2020 states that any amendment to a party's appeal case after it has filed its grounds of appeal or reply may be admitted only at the discretion of the board. Article 13(2) RPBA 2020 further provides that any amendment to a party's appeal case made 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 by cogent reasons by the party concerned.

16. The amendments to the first two requests with respect to the auxiliary requests as filed with the grounds of appeal consisted in the addition of the following specification of the form of single data array resulting from the first alternative predetermined rule: which is two-dimensional.

16.1 The appellant explained that the amendments were a reaction to the Board citing document D7. It clarified that the first transformation rule lead to data being transformed into a two-dimensional matrix, and not a linear array for storage into memory, which was the teaching of D7.

16.2 The Board accepts that this is the case but notes that it had introduced D7 only as evidence that an argument by the Examining Division was based on common general knowledge (see the summons, point 17). This is a development that the appellant should have foreseen and which does not change the objection in substance.

17. The third auxiliary request was filed during the oral proceedings before the Board. The appellant stated that the filing was caused by the explanations provided by the Board during the oral proceedings as to why no technical effect could be acknowledged, in particular the distinction made between mathematics, software and hardware. The amendment aimed to make clear the difference with D1 in terms of the mathematical equation used and the usage of just two loops for computation instead of three.

17.1 However, the Board's finding of a lack of inventive step is a confirmation of the same finding of the Examining Division. Furthermore, it was already set out in the summons to oral proceedings that the mathematical result was the same and that no technical effect could be identified in view of the lack of software and hardware specification. That the Board is not persuaded by the argumentation of the appellant is a foreseeable possibility.

17.2 The amendments to the third auxiliary request limit the claims in such a way that an argument important to the appellant finds basis in the claim. The appellant's interest to make a claim fit its arguments is not, in the Board's view, sufficient to justify the late filing of amendments.

17.3 As explained in points 16.2, 17.1 and 17.2 the Board holds that the reasons provided by the appellant have not established "exceptional circumstances" in the meaning of Article 13(2) RPBA 2020 for filing the three auxiliary requests at late stages in the proceedings.

18. It needs to be decided whether, in view of the very stringent wording of Article 13(2) RPBA 2020, the Board may admit the new requests nonetheless.

18.1 The Board finds Article 13(2) RPBA 2020 to be ambiguous.

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• More posts e.g. about G 4/19 (double patenting), J 14/19 (stay of proceedings) and T 0096/20 (clinical trial document as prior art) are lined up for the next few weeks.

T 1855/16 - Resubmitted request admitted

Key points

• The Board in this opposition appeal decides on admissibility of AR 6 and 7. “Auxiliary requests 6 and 7 correspond to the first and the second auxiliary request, respectively, filed with letter dated 4 May 2016 in preparation of the oral proceedings before the opposition division. At the beginning of those oral proceedings, they were withdrawn and substituted by five new auxiliary requests.”
• Nevertheless, the requests are admitted. 
• The Board: “a criterion often cited in this context is whether the withdrawal of the request has prevented the department of first instance from giving a reasoned decision on the critical issues, thereby compelling the board either to give a first ruling on those issues or to remit the case to the department of first instance”
• “It is the board's view that auxiliary requests 6 and 7 do not amount to an entirely fresh case. The critical issue in the first auxiliary request filed with letter dated 4 May 2016 was [the interpretation of feature M]. Claim 1 of the second auxiliary request filed with letter dated 4 May 2016 merely differed from claim 1 of said first auxiliary request by the additional feature M6. Both issues were discussed at the oral proceedings and decided on by the opposition division, albeit in the context of different auxiliary requests []. The admission of auxiliary requests 6 and 7 would therefore not put the board in a position where it was forced to give a first ruling on the critical issues.”

T 1855/16 -

https://www.epo.org/law-practice/case-law-appeals/recent/t161855eu1.html

Resubmission of requests withdrawn during opposition proceedings (Auxiliary requests 6 and 7)

6.8 Auxiliary requests 6 and 7 correspond to the first and the second auxiliary request, respectively, filed with letter dated 4 May 2016 in preparation of the oral proceedings before the opposition division. At the beginning of those oral proceedings, they were withdrawn and substituted by five new auxiliary requests.

6.9 The case law is clear that auxiliary requests that were filed but subsequently withdrawn during first-instance proceedings also fall under the category of requests that could have been presented in first-instance proceedings. A criterion often cited in this context is whether the withdrawal of the request has prevented the department of first instance from giving a reasoned decision on the critical issues, thereby compelling the board either to give a first ruling on those issues or to remit the case to the department of first instance (cf. "Case Law", V.A.4.11.3.f)).

T 0247/20 - What's an amendment of a party's appeal case

 Key points

• The Board: “The test under Article 13(2) RPBA 2020 is a two-fold one. The first question is whether the submission objected to is an amendment to a party's appeal case. If that question is answered in the negative, then the Board has no discretion not to admit the submission. If, however, that question is answered in the positive, then the Board needs to decide whether there are exceptional circumstances, justified by cogent reasons, why the submission is to be taken into account.”
• As a comment, Article 13(1) RPBA has the same two-prong test, with the first prong being the same, and with a different threshold in the second prong.
• For the second prong, see also T 1294/16.
• The Board, as to the first question - whether the submission is an amendment: “The Board thus concludes that an amendment to a party's appeal case is a submission which is not directed to the requests, facts, objections, arguments and evidence relied on by the party in its [initial appeal submissions. In other words: it goes beyond the framework established therein.”
• As a comment, this may pertain to the legal and factual framework, with the disclaimer that Article 114 speaks of 'facts and evidence'.
• “The arguments presented by the appellant during the oral proceedings [...] were all aimed at illustrating, refining or further developing the arguments already presented with the grounds of appeal and to counter the arguments of [the respondent] made in this context. To the extent that additional passages or figures were referred to this merely served that purpose. The Board notes that no additional pieces of evidence were introduced and that the patent as well as D1 are very concise documents. The Board takes the view that the arguments [at issue] do not amount to an amendment of the appellant's appeal case.”
• “The above approach takes account of the fact that oral proceedings form an important part of proceedings before the Boards of Appeal. [...] Oral proceedings would serve no purpose if the parties were limited to present a mere repetition of the arguments put forward in writing. Instead, parties must be allowed to refine their arguments, even to build on them provided they stay within the framework of the arguments, and of course the evidence, submitted in a timely fashion in the written proceedings.”
• This analysis probably applies equally to any written submissions filed after the notification of the summons and prior to the oral proceedings before the Board.

T 0247/20 -

https://www.epo.org/law-practice/case-law-appeals/recent/t200247eu1.html

Reasons for the Decision

1. Admittance of D30, D31 and alleged amendment of the appellant's case

1.1 The respondents regard D30 - filed by the appellant with letter dated 25 January 2021 - as new evidence which should not be admitted into the proceedings under Article 13(2) RPBA 2020.

D30 contains figures which illustrate the appellant's interpretation of the production processes of the collecting bags of the patent and D1. Similar illustrations are often made on flip charts in oral proceedings in situ in order to clarify arguments which may be difficult to formulate in words. The figures are not regarded as evidence, or a change of the appellant's appeal case, but as supportive information of the appellant's oral presentation, albeit filed in advance of the oral proceedings. They were thus part of the appeal proceedings and the Board had no discretion not to admit them pursuant to Article 13(2) RPBA 2020.

T 0725/18 - Should file fallback positions before OD

 Key points

• The Board applies Art.12(4) RPBA 2007.
• “In the present case the appellant (patent proprietor) justified the filing of these auxiliary requests at the appeal stage [with the statement of grounds] in view of the fact that, at the oral proceedings, the Opposition Division changed its preliminary view on lack of novelty over D2, and therefore the amendments had become necessary in order to better distinguish the subject-matter of claim 1 from D2. ”
• “The Board, however, sees no reasons in the course of the opposition proceedings that justify the filing of these requests in appeal proceedings. The arguments of the opponent as regards lack of novelty in view of D2 were already present in its notice of opposition and the appellant should have from the outset of the opposition proceedings reacted with its requests accordingly. As regards the change of view of the Opposition Division during the oral proceedings with respect to novelty in view of D2, it is the nature of a preliminary opinion that it is not binding of the final decision and the [patent proprietor] should have expected that the lines of argument of the opponent could persuade the Opposition Division and should have filed auxiliary requests as fall-back positions accordingly ”
• “Hence, the appellant should have filed in the course of the opposition proceedings - preferably with the reply to the notice of opposition, but at the latest before the oral proceedings within the given time limits [note i.e. the last day for written submissions under Rule 116] - the requests it deems necessary to overcome the objections that in its view are validly raised [note: by the opponent in the Notice of opposition] in order to maintain its patent in a form that it approves including the relevant fallback positions.”

T 0725/18 -

https://www.epo.org/law-practice/case-law-appeals/recent/t180725eu1.html

Reasons for the Decision

1. Main request and first auxiliary request - Novelty

[...]

Lastly, that the structure and functionality of the anti slip device of D2 differs from the one shown in the specification of the patent is not relevant when assessing novelty of the subject-matter of claim 1. What matters is whether the anti slip device disclosed in D2 falls under that subject-matter claimed. This is indeed the case.

2. Second and third auxiliary requests - admissibility

2.1 The second and third auxiliary requests were submitted by the appellant (patent proprietor) for the first time with the statement of grounds of appeal.

2.2 Article 12(4) RPBA 2007 (Rules of Procedure of the Boards of Appeal OJ EPO 2007, 536) applies to the current appeal (see Article 25(2) RPBA 2020; Rules of Procedure of the Boards of Appeal OJ EPO 2019, A63). Under this provision the Board has the power to hold inadmissible requests which could have been presented in the first instance proceedings.

R 0006/19 - Amendments in opposition

Key points

• The Enlarged Board: “The basis for a board's (and opposition division's) discretion to admit or not claim requests is Article 123(1) EPC”
• “ the amendments and their admission into the proceedings shall be in accordance with the provisions of the implementing regulations. These provisions are stipulated in Rules 81(3) EPC for opposition proceedings and in Rule 137 EPC for examination proceedings.”
• “Rule 100(1) EPC provides that provisions relating to proceedings before the department which has taken the decision impugned shall apply to appeal proceedings. For such proceedings the exercise of discretion of a board with regard to admitting or not new claim requests is further specified in Articles 12 and 13 RPBA.”
  
  
• “The right, found in the second sentence of Article 123(1) EPC, to at least one opportunity to amend, is not extended to a patent proprietor in opposition proceedings, where the opposition division has the discretion, given in the first sentence of Article 123(1) EPC, not to admit such requests. In such proceedings an opportunity to amend shall be given only where necessary (Rule 81(3) EPC). This reflects the fact that opposition proceedings are inter partes and hence involve the EPO in balancing the interests of both parties.”
• As a comment, this is codified in Rule 80 EPC: “the description, claims and drawings may be amended, provided that the amendments are occasioned by a ground for opposition under Article 100, even if that ground has not been invoked by the opponent.” Hence, there is no opportunity for tidying up the claims, unlike under the Rule 70a or Rule 161(1) response in examination.
• The above remark of the Enlarged Board is presumably without prejudice to Article 113(1) EPC.
• The Enlarged Board does not cite any case law, but the matter was also reviewed in recent decision T0966/17 (referring in r.2.2.1 to Art. 123(1)) and is in fact established case law since T0406/86 which I  posted about in July 2020. 

R 0006/19 -

https://www.epo.org/law-practice/case-law-appeals/recent/r190006eu1.html

Does a board of appeal have a power not to admit claim requests?

5. The Petitioner has argued that a board of appeal has no power not to admit claim requests. The Petitioner bases this argument upon the wording of Article 114(2) EPC which states that the EPO may disregard facts or evidence which are not submitted in due time by the parties. The Petitioner argues that claim requests are neither facts nor evidence and hence Article 114(2) EPC cannot be the basis for a power to disregard claim requests.

G 4/19 - Double patenting prohibited under Art. 125 EPC

 Key points

• The decision in G 4/19 was given and the press release can be found here.
• The Enlarged Board “stated that the prohibition on double patenting constitutes a principle of procedural law within the meaning of Article 125 EPC and is generally recognised in the Contracting States.”
• Hence, an application can be refused under Article 125 EPC if it claims the same subject-matter as a European patent which has been granted to the same applicant  (and Article 54(2) and (3) do not apply).

The Enlarged Board of Appeal answered the referred questions as follows:

1. A European patent application can be refused under Articles 97(2) and 125 EPC if it claims the same subject-matter as a European patent which has been granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC.
2.1 The application can be refused on that legal basis, irrespective of whether it

a) was filed on the same date as, or
b) is an earlier application or a divisional application (Article 76(1) EPC) in respect of, or
c) claims the same priority (Article 88 EPC) as

the European patent application leading to the European patent already granted.
[...]

J 0014/19 - (I) A tutorial on admissibility

 Key points

• The Legal Board of Appeal uses a case about a stay of proceedings to give a tutorial about the meaning of ‘amendment’ in the sense of Art. 12 and 13 RPBA 2020. I've made a translation of the relevant paragraphs 1.1-1.11 below. I recommend reading the decision entirely in the original or in translation.
• The Board recalls that only submissions that are an amendment to the party's appeal case can be held inadmissible under Art.13(1) and (2) and that the appeal case is defined by the appellant's Statement of ground and the respondent's (timely filed) appeal reply brief.
• The Board: “a submission that is not directed to the "requests, facts, objections, arguments and evidence" contained in the statement of grounds or the reply will result in an amendment of the appeal case” (note, this leaves open whether the comparison is to initial appeal submissions of the party concerned, or to all initial appeal submissions in inter partes cases).
• cf. T 247/20: “In other words: it goes beyond the framework established therein”
• “[The] term "arguments" in Article 12(2) RPBA 2020 should be interpreted in such a way that the result of interpretation is in line with Article 114(2) EPC. Statements by a party that relate solely to the interpretation of the EPC contain no element of fact, i.e. no reference to "facts and evidence" within the meaning of Article 114(2) EPC. In the opinion of the board, such purely legal explanations, therefore, do not fall under the term "arguments" in Article 12(2) RPBA 2020. In the board's view, [the term "arguments" in Article 12(2) RPBA 2020] rather relates to statements that contain both legal and factual elements. ”
• See also the foundational decision T 1914/12 and e.g. T 1875/15, headnote.
• “This [i.e. a statement containing both legal and factual elements] is regularly the case in particular with questions of patentability, for example when one of the parties involved, makes submissions regarding the disclosure content of the originally filed application or a previously published patent specification invoking the fictitious person skilled in the art and with a view to a desired legal consequence.”
• Cf. USA patent law: “Obviousness is a question of law based on underlying findings of fact.” (In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009)).
• As of yet, the EPO Boards of Appeal review both conclusions in law and findings of fact of the first instance department de novo (T1604/16).
• As to the example, the “invoking the fictitious person skilled in the art” probably introduces the legal argument (also purely factual assertions are made in legal proceedings with a view to a desired legal consequence, so that does not lend the legal character to the submission). On a separate note, I think the Board could have referred to any kind of prior art document in the given example, and that there was no reason to refer to a published patent specification in particular (the example is about patentability). 
• An amendment of the appeal case must be distinguished from the mere refinement of an already existing line of argument (cf. T 247/20, No. 1.3 of the reasons).
• The mere fact that a party has already introduced a particular document into the appeal proceedings does not mean that all of its content is part of that party’s appeal case. If a party invokes other passages in the text of such a document than those previously used, this can result in an amendment of the appeal case (see T 482/18, no. 1.2.5.e of the reasons). In the board's view, both a new combination of factual elements (e.g. the choice of a different citation or a different passage in the text of a citation as the starting point for assessing inventive step) and a new combination of factual and legal elements (e.g. the reference to an already discussed text passage in a different legal context) represents an amendment of the appeal case. 
  
  
• Applying this framework to the present case:
• “The appellant's statements in its letter of January 27, 2021 are either (i) a repetition or refinement of statements already contained in the statement of grounds of appeal, (ii) statements that exclusively support the interpretation of Article 61(1) EPC and Rule 14(1) EPC or (iii) statements [about a topic] that are directly related to the statements made by the board on [that topic] for the first time in the communication pursuant to Article 15 (1) RPBA 2020. The appellant's statements in the brief of January 27, 2021 will therefore be taken into account by the board in accordance with Article 13(2) RPBA 2020. ”
• Note, that in each of the first two cases, the Legal Board has no discretion under Art. 13(2) as it is not a case amendment. As to the third case, my analysis is the submission is actually a case amendment but is considered to be a timely (and appropriate) response to a new development in the appeal proceedings such that not admitting it would violate the appellant's right to be heard under Art.113(1) if the Board's decision were to be based on the point concerned. 

J 0014/19 -

https://www.epo.org/law-practice/case-law-appeals/recent/j190014du1.html

Translation

Reasons for decision

1. Consideration of the appellant's submissions in the letter of January 27, 2021

1.1 Pursuant to Article 13(2) RPBA 2020, amendments to a party's appeal case after a period specified by the board in a Communication under Rule 100(2) EPC or, if no such Communication is issued, after the summons to oral proceedings has been notified, shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

1.2 The prerequisite for the application of Article 13(2) RPBA 2020 is that the submission in question is an "amendment of the appeal case" within the meaning of that provision. This term must first be interpreted using Article 13(1) RPBA 2020, in which the same term is used. The [time] point of reference for the examination of whether there is an amendment of the appeal case in the sense of Article 13(2) RPBA 2020 is therefore the statement of grounds of appeal or the reply (if filed timely). As a result, Article 13(1) and (2) RPBA 2020 differ from Article 12(4) RPBA 2020. With the latter provision, the point of reference for the question of whether a part of the appeal case is to be regarded as an amendment is the contested decision.

T 0545/19 - If oral proceedings are to serve a purpose

 Key points

• The Board holds a request filed during oral proceedings inadmissible even though the Board came to a different claim interpretation during the oral proceedings and somewhat different reasoning for inventive step.
• “In passing, the board also notes the following. If oral proceedings are to serve a purpose, it would seem that there must be room for the discussion during oral proceedings to deviate to an extent from the preceding written submissions - at least in terms of facts and arguments within the meaning of Article 114 EPC. It would therefore be necessary for everybody concerned, the parties and the board, to have some leeway to adapt their opinions in view of that discussion without such a change, in and by itself, being sufficient to justify further amendments [as admissible under Art.13(2) RPBA].”
• As a comment, I think the relevant provision is Art.113(1) EPC (wherein the right to comment on the grounds (for the future decision) involves a right to submit amended claims where appropriate).

T 0545/19 -

https://www.epo.org/law-practice/case-law-appeals/recent/t190545eu1.html

Third auxiliary request

18. The third auxiliary request is an amendment to the respondent's case which, according to Article 13(2) RPBA 2020, shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the respondent. In view of the above discussion (point 15), the board stresses that Article 13(2) RPBA 2020 puts - deliberately and clearly - a much more stringent requirement on the admittance of the amendment than Article 12(4) RPBA 2007.

T 1872/17 - Inspection of samples

Key points

• “Claim 1 of the main request defines a cosmetic water-based ink in form of a suspension comprising ...”
• “Inspection of samples of the compositions used in these comparative tests during the oral proceedings held before the Board on 26 April 2021 confirmed that the composition of "Versuch 4" showed similar low pigment settlement as the composition of "Versuch 3" and that when drawing multiple lines on the back of a hand without reloading the used applicator the composition of "Versuch 3" showed a slightly increased fading tendency in comparison with the composition "Versuch 4".
• In view of the presented evidence the Board is satisfied that the use of the particular non-ionic surfactant [having feature X] is associated with the advantage of reduced fading upon application of a single loading. The problem to be solved may therefore be seen in the provision of an cosmetic water-based ink in form of a suspension with such improved resistance to fading.”

T 1872/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t171872eu1.html

[...]

2.3 Problem to be solved

With the submission of 15 December 2020 the appellant provided results of comparative tests involving a composition according to example 3 of document D5 ("Versuch 1"), a similar composition which differed in the additional presence of sodium polyacrylate as thickener ("Versuch 3") and a similar composition comprising the sodium polyacrylate as thickener and in which the polyoxyethylene laurylether (21 EO, HLB 19) of example 3 of document D5 is replaced by PEG-6 caprylic/Caprylic glycerides ("Versuch 4"). The composition of "Versuch 4" represents a composition as defined in the claims of the main request.

The results presented on page 8 (see diagram and photo) of the appellant's submission of 15 December 2020 indicate that the composition of "Versuch 1" shows lower viscosity and faster pigment settlement associated with cake-formation in comparison with a composition which additionally included sodium polyacrylate as thickener "Versuch 3".

T 1095/18 - Selection invention / multiple selections

 Key points

• The claim at issue is directed to a polyethylene composition having a density in a range, a component A in a range, a component B in a range, a component C in a range, and having a further property (MFI value) in a specified range. The question is whether the claim is novel over D1.
• The undisputed fact is that the ranges defined in claim 1 of the main request do not merely overlap but are fully comprised within the ranges disclosed in D1.
• “in the Board's view, the criteria for selection inventions referred to in the contested decision and by respondent 1 and briefly summarised in T 279/89 []), have been developed for a so-called "selection" of only one single parameter from a numerical range. It is apparent [] that beside the necessary selection of a specific value/range [for the MFI property], the skilled reader has to perform further selections in the four ranges defining the density as well as each of the amounts in components A, B and C”
• “In the Board's view, it is in particular not possible in the present case to treat each of the five features mentioned in claim 1 []t individually as was done by the opposition division and the [opponents] because these features are to some extent interconnected (e.g. the MFI190/5 feature is related to some extent to the amounts of components A to C). Also, a series of selections in several (here 5) ranges amounts to a more severe limitation in terms of the scope of the subject-matter so defined (as compared to each single selection). In that regard the situation of the present case is not that of a single selection made in a range of the prior art but rather that of multiple selections in multiple ranges already disclosed in combination in D1. The fact that the ranges defined in claim 1 of the main request do not merely overlap but are fully comprised within the ranges disclosed in D1 do not affect the above conclusion.”
• “he question that the Board had to answer was thus whether from the broader disclosure of generic compositions in [claim 1 of D1], the skilled person would have, in consideration of the whole of D1 and in particular of its examples, directly and unambiguously derived a composition that fell under the scope of claim 1 of the main request. It was not contested to that effect that any of examples 1 to 4 of D1 could be seen as being relevant to answer that question.”
• “It can thus not be concluded from the description of D1 and/or from its examples that polyethylene compositions having a density, amounts in components A, B and C as defined in operative claim 1 and an MFI190/5 in the range of 1.2-2.1 g/10 min were at all prominent in D1 to such an extent that such compositions could be seen as being directly and unambiguously disclosed in that document. In the Board's view, the respondents' objection amounts to create a novel combination of features by cherry-picking within the disclosure of D1 but which combination is not directly and unambiguously derivable from D1.” emphasis added.

T 1095/18 -  -

https://www.epo.org/law-practice/case-law-appeals/recent/t181095eu1.html

1.3 In the present case, the respondents first relied on the disclosure in claim 1 or on column 2, lines 13-46 of a generic composition according to D1 and argued that claim 1 of the main request did not satisfy the accepted criteria required to constitute a selection invention.

1.4 However, in the Board's view, the criteria for selection inventions referred to in the contested decision and by respondent 1 and briefly summarised in T 279/89 of 3 July 1991 (not published in the OJ EPO, point 4.1 of the reasons), have been developed for a so-called "selection" of only one single parameter from a numerical range. It is apparent from the disclosure relied upon by the respondents that beside the necessary selection of a specific value/range in MFI190/5 within the broader range disclosed therein, the skilled reader has to perform further selections in the four ranges defining the density as well as each of the amounts in components A, B and C in the passage of column 2, lines 13-46 of D1 in order to arrive at the ranges defining operative claim 1. In addition, the ultra high polyethylene must be selected to be a copolymer and not a homopolymer. In the Board's view, it is in particular not possible in the present case to treat each of the five features mentioned in claim 1 of the main request individually as was done by the opposition division and the respondents because these features are to some extent interconnected (e.g. the MFI190/5 feature is related to some extent to the amounts of components A to C). Also, a series of selections in several (here 5) ranges amounts to a more severe limitation in terms of the scope of the subject-matter so defined (as compared to each single selection). In that regard the situation of the present case is not that of a single selection made in a range of the prior art but rather that of multiple selections in multiple ranges already disclosed in combination in D1. The fact that the ranges defined in claim 1 of the main request do not merely overlap but are fully comprised within the ranges disclosed in D1 do not affect the above conclusion.

1.6 In view of the above, the respondents' arguments based on the concept of selection invention did not convince.

1.7 In the case of a composition allegedly resulting from a multiple selection in the prior art, as it is the case for claim 1 of the main request in view of D1, assessing whether a subject-matter is directly and unambiguously derivable from the prior art requires, beyond the identification of the individual selections made in the composition considered in claim 1 or column 2, lines 13-46 of D1, that a careful comparison be carried out in order to assess whether or not the subject-matter being claimed was made available to the skilled person in the prior art in particular because the parameters defining the composition of claim 1 of the main request are to some extent, interconnected to one another.

1.8 The question of novelty in the case of a multiple selection of parameters in ranges disclosed in a composition of the prior art can thus not be simply answered by considering the ranges of the various parameters separately from one another, it must also be determined whether the combination of these parameters was directly and unambiguously derivable and was made available to them in the relevant document. In that regard, the mere consideration that the ranges of a multiple selection in the parameters of the prior art were as such not excluded from that prior art, as argued by the respondents, is not sufficient to establish lack of novelty as that consideration falls short of showing that the combination of the selected ranges was directly and unambiguously derivable from the prior art.

1.9 The question that the Board had to answer was thus whether from the broader disclosure of generic compositions in column 2, lines 13-46 (or claim 1), the skilled person would have, in consideration of the whole of D1 and in particular of its examples, directly and unambiguously derived a composition that fell under the scope of claim 1 of the main request. It was not contested to that effect that any of examples 1 to 4 of D1 could be seen as being relevant to answer that question.

[...]

1.17 It can thus not be concluded from the description of D1 and/or from its examples that polyethylene compositions having a density, amounts in components A, B and C as defined in operative claim 1 and an MFI190/5 in the range of 1.2-2.1 g/10 min were at all prominent in D1 to such an extent that such compositions could be seen as being directly and unambiguously disclosed in that document. In the Board's view, the respondents' objection amounts to create a novel combination of features by cherry-picking within the disclosure of D1 but which combination is not directly and unambiguously derivable from D1.

1.18 The respondents further argued that the skilled person would have seriously contemplated preparing a composition as defined in said claim 1. However, for the same reasons as indicated in above section 1.17, in the absence of a direct and unambiguous disclosure in D1 of the combination of features defined in operative claim 1, it cannot be concluded that it was shown that D1 provides a teaching or a good reason for the skilled person to prepare specifically such a composition. In particular, all the arguments submitted by the respondents in that respect involving the examples of D1 amount to artificially modify the disclosure of D1 in order to (possibly) arrive at the subject-matter according to claim 1 of the main request, whereby D1 provides no indication in that sense (see in particular the above arguments regarding the modification of the process conditions used in example 3 of D1 in order to achieve the desire MFI190/5 feature). Also, no evidence was provided that in doing so, the other features of claim 1 of the main request would still be satisfied. For these reasons, the respondents' objection did not convince.

1.19 It follows that the subject-matter of claim 1 of the main request must be seen as being novel over D1.

T 0795/19 - Appeal fee refund

 Key points

• Both the patentee and the opponent appealed. The Board concludes that the patentee has shown that the impugned decision is incorrect in finding claim 1 as granted to be not novel and decides to not admit the opponent's inventive step attack such that the patent is to be maintained as granted. The opponent had withdrawn its request for oral proceedings within one month from the preliminary opinion. Hence, oral proceedings are not necessary. The appeal fee is to be refunded at 25% to the opponent. 
• The question is whether the patentee also gets a 25% refund because T0488/18 held that Rule 103(4)(c) does not require that the appellant withdraws its own request for oral proceedings.  In that case, the Board found that the appellant got the partial refund because the respondent (not the appellant) withdrew their request for oral proceedings.
• The present Board follows T0777/15 in finding that a party who withdraws its own request for oral proceedings, is given the partial refund. 
•  Moreover, it is not enough that patentee's request for oral proceedings is mooted by patentee's main request being allowable.
  
  
• The opponent's request for remittal is held inadmissible (is disregarded) under Article 13(2) RPBA already on the ground that opponent had not indicated any exceptional circumstances for filing that request late.
• “Die Einsprechende hat es entgegen der Erfordernisse des Artikels 13 (2) VOBK 2020 versäumt, zu einem Vorliegen außergewöhnlicher Umstände, die eine Änderung ihres Beschwerdebegehrens rechtfertigen könnten, vorzutragen, so dass der Antrag auf Zurückverweisung der Angelegenheit an die Einspruchsabteilung bereits deshalb unberücksichtigt zu bleiben hat.”

Sachverhalt und Anträge

I. Die Patentinhaberin und die Einsprechende legten jeweils frist- und formgerecht Beschwerde gegen die auf den 14. Januar 2019 datierte Entscheidung der Einspruchsabteilung ein, mit welcher das europäische Patent 2 536 442 unter Berücksichtigung der von der Patentinhaberin im Einspruchsverfahren vorgenommenen Änderungen in geänderter Fassung aufrechterhalten wurde.

II. Der Einspruch richtete sich gegen das Streitpatent im gesamten Umfang und stützte sich auf Artikel 100 a) und 54 EPÜ (Neuheit).

III. In einer auf den 5. Februar 2021 datierten Mitteilung nach Artikel 15 (1) VOBK 2020 teilte die Kammer den Parteien ihre vorläufige Beurteilung der Sach- und Rechtlage mit, wonach die Beschwerde der Patentinhaberin voraussichtlich erfolgreich sein dürfte.

IV. Mit Schriftsatz vom 25. Februar 2020 verzichtete die Einsprechende auf eine Durchführung der von ihr hilfsweise beantragten mündlichen Verhandlung und stimmte einer Fortsetzung des Verfahrens als schriftliches Verfahren zu.

[...]

3.5 Der Einwand der mangelnden erfinderischen Tätigkeit der Unteransprüche ist daher gemäß Artikel 12 (4) VOBK 2007 im Verfahren nicht zu berücksichtigen.

3.6 Entsprechend ist der Antrag auf Zurückverweisung der Angelegenheit an die Einspruchsabteilung, um die Prüfung des Einspruchs im Umfang der mangelnden erfinderischen Tätigkeit der Unteransprüche des Hauptantrags fortzusetzen, unbegründet.

T 2277/18 - Trapped by a disclaimer

 Key points

• This case illustrates that undisclosed disclaimers arguably belong to the don't-try-this-at-home category.
• The patentee added an undisclosed disclaimer in the independent claim to restore novelty over an Article 54(3) document during the first instance opposition proceedings. The opponent appealed, the patentee did not. 
• The Board judges that the disclaimer removes more than necessary and is hence not allowable under G 1/03. This created a trap for the patentee/respondent. Because of the prohibition of reformatio in peius (G1/99) the patentee can not simply narrow or delete the disclaimer. The Board turns to the exceptions indicatedin G1/99 and finds that patentee could amend the claim to restrict to basically the embodiment of the example thereby deleting the disclaimer while still being novel. Accordingly, patentee can use option 1 of the headnote of G1/99 and may not use option 2 and 3 of that headnote and may not delete the disclaimer.
• The Board considers that for the the phrase “ if such a limitation is not possible” in G1/99, hn., the question how much scope of protection remains after an amendment of the first categeory of that headnot is not relevant. 
  
  
  
• The present Board considers the phrase “A disclaimer should not remove more than is necessary either to restore novelty ” in G1/03 hn. II.2 to be a strict requirement.
• As a comment, T 1399/13  (not cited in the present decision) held that “ In other words, a disclaimer removing more than strictly necessary to restore novelty would not be in contradiction with the spirit of G 1/03, if it were required to satisfy Article 84 EPC and it did not lead to an arbitrary reshaping of the claims.”

T 2277/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t182277du1.html

Entscheidungsgründe

Abhaltung der mündlichen Verhandlung als Videokonferenz

[...]


Der Disclaimer der aufrechterhaltenen Anspruchsfassung

2. Im Vergleich zur erteilten Fassung enthält der unabhängige Anspruch 1 des von der Einspruchsabteilung aufrechterhaltenen damaligen und jetzigen Hilfsantrags 2 einen Disclaimer, der Implantate aus den spezifischen Mg-Zn-Ca Legierungen der Ausführungsbeispiele 2, 5, 6 und 8 des Artikel 54(3) EPÜ Dokuments E1 vom Schutzbereich ausnimmt.

Dieser Disclaimer ist in der ursprünglich eingereichten Fassung nicht offenbart.

3. In G 1/16 (AB 2018, A70, Leitsatz) wurde bestätigt, dass für einen solchen nicht offenbarten Disclaimer weiterhin die Kriterien von G 1/03 (AB 8-9/2004, 413) anzuwenden sind.

Nach letzterer Entscheidung sollte ein Disclaimer nicht mehr ausschließen als nötig, um die Neuheit wiederherzustellen (Leitsatz II.2).

T 2271/18 - New clarity objections by Board in preliminary opinion

 Key points

• In this examination appeal raises a number of new clarity objections. The applicant files a few auxiliary requests in response. The Board does not admit the requests. The Board indicates that the requests are not clearly allowable but adds, as first ground for the non-admittance, that a preliminary opinion is not an invitation to file new submissions, such as new sets of claims.
• I'm not at all sure if this is compatible with Article 113(1) EPC: the Board rising new clarity objections (which is fine as such) but holding amended claims timely filed in response inadmissible. The applicant's right to be heard is in no way limited if the Board raises new objections late in the appeal.
• The Board in the headnote: “In particular, amendments submitted in response to such a preliminary opinion cannot give rise to "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020”
• What if hypothetically the Board cites new prior art of ow motion in the preliminary opinion? Is there a difference between the Board raising new novelty objections and new clarity objections?

EPO Headnote

A clear and detailed preliminary opinion provided by a board - rather than merely "drawing attention to matters that seem to be of particular significance for the decision to be taken" (cf. Article 15(1), fourth sentence, RPBA 2020) - is predominantly intended to give the party(ies) an opportunity to thoroughly prepare their arguments in response to it but not to file new submissions, such as new sets of claims, and to thereby arguably shift the focus on the issues on file to be decided in appeal proceedings. In particular, amendments submitted in response to such a preliminary opinion cannot give rise to "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020 (see point 3.3 of the Reasons).

T 2271/18
https://www.epo.org/law-practice/case-law-appeals/recent/t182271eu1.html

3. First to fourth auxiliary requests: admittance

3.1 The first to fourth auxiliary requests were filed after notification of the summons to oral proceedings (cf. point III above). In accordance with Article 13(2) RPBA 2020, such an amendment to the party's appeal case shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned. In the application of the exercise under Article 13(2) RPBA 2020, the criteria mentioned in Article 13(1) RPBA 2020 may be used. One such criterion concerns whether the party has demonstrated that the amendments to its appeal case, prima facie, overcome the issues raised by the board and do not give rise to new objections.

3.2 The appellant justified the amendments underlying the first to fourth auxiliary requests by

(i) referring to the introduction, in the board's communication pursuant to Article 15(1) RPBA 2020, of a lack of clarity as a new objection in the appeal proceedings;

(ii) highlighting that the newly found lack of clarity was motivated by a list of multiple clarity objections;

(iii) indicating that the board had implied that the list of clarity objections was not exhaustive.

3.3 While arguments (i) to (iii) may in principle constitute "cogent reasons" (cf. the third paragraph of the explanatory remarks to Article 13(2) RPBA 2020), it is within the board's power to raise new objections during the appeal proceedings (cf. G 10/93; T 862/16, Reasons 8.3.1).

Message for email subscribers

I will transition the system used for sending out email updates about new posts to the paid, ad-free version of Follow.it this week. I will try to automatically transfer all current subscribers (except for what appear to be fake email addresses at the outlook.com domain). I've checked the Follow.it system and the emails you will receive are add free because I use the paid version. Of course, you can unsubscribe at any time.

T 2441/18 - Search fee refund appeal

 Key points

• The applicant filed an appeal against the interlocutory decision of the Examining Division to not refund three paid additional search fees. The decision was made separately appealable by the Examining Divisional. The application was a Euro-direct application, not a Euro-PCT application.
• The Board finds that claim 1 is novel over D1 and the other claims are novel over D1 as well because of the same feature that is not taught in D1.
• The claims therefore have unity of invention: “Somit kann die einzige allgemeine erfinderische Idee, die der Anmeldung zugrunde liegt, nicht als durch den zitierten Stand der Technik vorweggenommen angesehen werden und die Einheitlichkeit (Artikel 82 EPÜ) des beanspruchten Gegenstands liegt vor.”
• The Examining Division has taken no action during the course of the appeal (three years), in line with GL E-X,3 noting that: “The [first instance] proceedings must be suspended until the decision has become final”
• There is no refund of the appeal fee.

T 2441/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t182441du1.html

Sachverhalt und Anträge

I. Die Beschwerde der Patentanmelderin (Beschwerdeführerin) richtet sich gegen die Zwischenentscheidung der Prüfungsabteilung, dem Antrag nach Regel 64(2) EPÜ, drei zusätzlich entrichtete Recherchegebühren nach einem Einwand nach Art. 82 EPÜ zurückzuerstatten, nicht stattzugeben.

II. Die Patentanmeldung ist auf ein Galvanisierverfahren gerichtet.

Anspruch 1 lautet:

"Verfahren zum Herstellen eines gehärteten Formteils mit den Schritten: [...]

IV. Die Rechercheabteilung erhob einen Einwand wegen mangelnder Einheitlichkeit der Anmeldung (Artikel 82 EPÜ) und lud die Anmelderin ein, 5 weitere Recherchegebühren zu bezahlen.

Sie argumentierte, der Oberbegriff des Anspruchs 1 sei in der D1, Abs. [0029]-[0031] offenbart und der kennzeichnende Teil ginge implizit aus Abs. [0032] hervor. Damit wäre der Gegenstand des Anspruchs 1 nicht neu. Die abhängigen Ansprüche würden 6 Gruppen bilden, die 6 potentielle Erfindungen repräsentierten. Die Vorrichtungsansprüche wurden analog zu den Verfahrensansprüchen aufgeteilt und den entsprechenden Gruppen zugeordnet.

V. Die Beschwerdeführerin bezahlte daraufhin unter Protest drei zusätzliche Recherchegebühren.

VI. Nach einem Antrag nach Regel 64(2) EPÜ, drei Recherchegebühren zu erstatten, bestätigte die Prüfungsabteilung die Auffassung der Rechercheabteilung und erließ die angefochtene Zwischenentscheidung.

T 0233/18 - The meaning of grounds

 Key points

• In this examination appeal, the Examining Division had issued one communication raising objections under Article 123(2) and after the applicant's response, refused the application based on completely different Article 123(2) objections ‘without further ado’.
• The Board explains that this is a violation of Article 113(1) EPC (the right to be heard): “It thus appears that the Examining Division felt entitled to refuse the application under Article 123(2) EPC for the sole reason that it had previously raised an objection under that same legal provision. However, according to the established jurisprudence, the term "grounds or evidence" in Article 113(1) EPC should not be narrowly interpreted and has to be understood as referring to the legal and factual reasons leading to the refusal of the application, and not in the narrow sense of a (legal) requirement of the EPC (Case Law of the Boards of Appeal, 9th Edition, 2019, III.B.2.3.2; see in particular T 556/15, point 1.3.1 of the Reasons).”
• The foundational decision seems to be T951/92 but therein there had been no articulated reasons under Article 123(2) at all until the refusal decision.
• The present case is indeed similar to T0556/15 (in French).
• I think the phrase ‘legal and factual reasons’ interprets the term ‘grounds’ in Article 113(1) EPC rather than the term ‘evidence’.
• The term ‘grounds of opposition’ under G10/91 (no fresh grounds of opposition in appeal) is interpreted “in the narrow sense of a (legal) requirement of the EPC” (G1/95 and G7/95).

https://www.epo.org/law-practice/legal-texts/html/caselaw/2019/e/clr_iii_b_2_3_2.htm

https://www.epo.org/law-practice/case-law-appeals/recent/t920951ex1.html

https://www.epo.org/law-practice/case-law-appeals/recent/t180233eu1.html

2. During the examination proceedings, a single communication under Article 94(3) EPC (dated 20 January 2016) was issued. Therein, claim 1 (filed on 8 October 2009) was objected under Article 123(2) EPC with the following brief reasoning:

"Claim 1: there is no obvious basis for the replacement of the terms "(first/second) position" by the terms "(first/second) configuration"."

3. The applicant responded by filing amended replacement claims (received on 25 May 2016). Without further ado, the Examining Division refused the application for lack of compliance with Article 123(2) EPC based, however, on an entirely different reasoning  [as follows ...]

None of these reasons were mentioned in the brief reasoning given in the sole communication issued by the Examining Division (see point 2 above).

4. Hence, the applicant has not been given an opportunity to present its comments against the grounds on which the decision is based. A fortiori, the Examining Division could not duly consider the merit of such comments in the decision.

5. It is noteworthy that the Examining Division explicitly remarked in the decision (page 2, penultimate paragraph) that:

"In the office communication of 20-01-2016 under item 3, applicant's attention had been drawn to the fact that failure to meet the requirements of Art. 123(2) EPC will lead to the refusal of the Application."

It thus appears that the Examining Division felt entitled to refuse the application under Article 123(2) EPC for the sole reason that it had previously raised an objection under that same legal provision.

However, according to the established jurisprudence, the term "grounds or evidence" in Article 113(1) EPC should not be narrowly interpreted and has to be understood as referring to the legal and factual reasons leading to the refusal of the application, and not in the narrow sense of a (legal) requirement of the EPC (Case Law of the Boards of Appeal, 9th Edition, 2019, III.B.2.3.2; see in particular T 556/15, point 1.3.1 of the Reasons).

6. The infringement of the right to be heard is a substantial procedural violation justifying the reimbursement of the appeal fee under Rule 103(1)(a) EPC.

In accordance with Article 11 RPBA 2020, it is therefore appropriate to remit the case to the Examining Division for further prosecution.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the Examining Division for further prosecution.

3. The appeal fee is reimbursed.

T 1780/17 - Rule 100(2) and RPBA

 Key points

• In this examination appeal, the Board issues a Communication under Rule 100(2) EPC. The applicant replies using further processing. This keeps the application alive. 
• However, the claim requests filed with that response are treated as being filed after the expiry of the period specified by the Board in the communication under Rule 100(2) EPC, i.e. under Art.13(2) RPBA. 
  
  
• The applicant had requested oral proceedings with their Statement of grounds as follows: “In the event that the Board of Appeal is minded to refuse the application without the opportunity for further written submission, oral proceedings are hereby requested.”
• The Board notes that the appellant had made further written submissions (namely, with further processing) and that therein no further request for oral proceedings was made. Hence, the decision is issued in writing without oral proceedings. 
• No partial refund of the appeal fee is ordered. The applicant could have obtained a partial refund of the appeal fee by formally maintaining a request for oral proceedings and withdrawing it upon receipt of the summons for oral proceedings. 

Reasons for the Decision

1. Request for further processing (Article 121 EPC, Rule 135 EPC)

1.1 A loss of rights occurring from the failure to reply to a communication, pursuant to Rule 100(2) and (3) EPC, can be remedied with a request for further processing within two months from the communication noting the loss of rights under Rule 112 EPC, provided that the omitted act is complemented within this period (Article 121(1) and (3) in conjunction with Rule 135(1) EPC).

T 0716/17 - Reordering requests inadmissible

 Key points

• In this opposition appeal, “ the patent proprietors substantially re-ordered their pending requests several times. This resulted in a repeated change of the subject-matter to be discussed, since the auxiliary requests selected by the patent proprietors related to a variety of different and diverging attempts to find allowable subject-matter”.
• However, can the Board hold this reordering inadmissible? Nothing new is filed by reordering requests. 
• Yes they can. The Board: “as follows from the above discussion, the re-ordering of pending requests carried out by the proprietors amounts to an amendment of the case, which needs to be justified according to Article 13(2) RPBA 2020. However, no special circumstances for such amendments, in the sense of Article 13(2) RPBA 2020, have been justified with cogent reasons by the patent proprietors”.
• I'm not sure what part of the preceding paragraphs in the decision forms the ‘above discussions’. However, the Board noted that “As a consequence [of the reordering], during the oral proceedings it became more and more difficult for the opponent and the board to follow what the patent proprietors were attempting to achieve. ”
• Not only the reordering is inadmissible, also the requests at issue. The patent is revoked. 

T 0716/17 -

https://www.epo.org/law-practice/case-law-appeals/recent/t170716eu1.html

9. First to third, fifth, new sixth, ninth and tenth auxiliary requests - admittance


During the oral proceedings the patent proprietors substantially re-ordered their pending requests several times. This resulted in a repeated change of the subject-matter to be discussed, since the auxiliary requests selected by the patent proprietors related to a variety of different and diverging attempts to find allowable subject-matter.

T 1282/16 - Conditional withdrawal request oral proceedings

Key points

• The Board clarifies that the withdrawal of a request for oral proceedings under Rule 103(4)(c) EPC can be conditional, e.g. on the Board allowing the Main Request (or some other claim request). The one month period appears to be calculated from the date of the condition being fulfilled. In this case, the opponent had withdrawn the opposition. 

T 1282/16 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t161282du1.html

5. Anteilige Rückzahlung der Beschwerdegebühr

5.1 Da die Kammer den Hauptantrag als gewährbar erachtet, ist die von der Beschwerdeführerin in ihrem Schriftsatz vom 14. Dezember 2020 genannte Bedingung erfüllt (vgl. Punkte IX und 1.2 oben). Deshalb ist die Rücknahme ihres Antrags auf mündliche Verhandlung nach Artikel 116 (1) EPÜ auch am 14. Dezember 2020, also innerhalb eines Monats ab Zustellung der von der Kammer zur Vorbereitung der mündlichen Verhandlung erlassenen Mitteilung nach Artikel 15 (1) VOBK 2020, wirksam geworden.

5.2 Weil tatsächlich keine mündliche Verhandlung stattgefunden hat, ist der Rückzahlungstatbestand nach Regel 103 (4) c) EPÜ erfüllt. Deshalb entscheidet die Beschwerdekammer nach Regel 103 (6) Satz 2 EPÜ, dass gemäß Regel 103 (4) c) EPÜ die von der Beschwerdeführerin entrichtete Beschwerdegebühr anteilig in Höhe von 25 % zurückzuzahlen ist.