J 0014/19 - (II) Stay of proceedings

Key points

• The Legal Board uses this case to give an overview of the legal framework for the stay of proceedings under Rule 14 EPC. A translation is given below. I recommend reading the entire decision.
• All following quotes are translations.
• “[A stay] will take place immediately. The applicant is informed of the stay of the proceedings by means of a communication - without having to be heard beforehand. He then has the opportunity to oppose this and to obtain an appealable decision []. The stay of the grant procedure takes effect immediately on the day on which the fulfillment of the requirements of Rule 14(1) EPC has been proven by the third party [] and can also be pronounced retrospectively to this day” (internal citations omitted).”
• “3.5 If the stay of the proceedings was wrongly ordered by [the Legal Division], in the appeal proceedings only the continuation of the granting proceedings with effect for the future can be ordered. The immediate effect of the stay can neither be eliminated retrospectively nor reversed by a decision in the appeal proceedings [].”
• “According to Rule 14(1) EPC, in order to stay the grant procedure, a third party must prove that the third party (i) has initiated proceedings (ii) against the applicant, (iiii) with the aim of obtaining a decision within the meaning of Article 61(1) EPC”
• “the European Patent Office has no discretion in deciding on a stay under Rule 14 (1) EPC. If a third party proves that the requirements specified in Rule 14 (1) EPC have been met in good time, the grant procedure must be stayed”
• The applicant had also requested a lifting of the stay, based on the argument that the stay was abuse of procedure. The Legal Board then turns to the meaning of that concept under the EPC.
• “ In order to avoid contradictions in valuation, such questions [about alleged abuse of procedure] are to be assessed by the European Patent Office autonomously within the framework of the stay procedure, i.e. independently of national legal systems". 
• “The improper use of a legal right can under certain circumstances constitute abuse of procedure. This is the case, for example, if the exercise of rights is predominantly intended to cause damage and other legitimate purposes take a back seat. Abuse of procedure must be unequivocal and requires careful examination and weighing of the individual circumstances. The burden of proof lies with the person who invokes abuse of procedure”

 

Headnote (translation)

1.) Evidence of the existence of the prerequisites for the stay of the proceedings under Rule 14(1) EPC must be provided during pending grant proceedings and thus before the notice of grant is published in the European Patent Bulletin. Evidence that is submitted after this point in time may not be taken into account by the European Patent Office (No. 4.3 of the reasons).


2.) The question at which point in time a national procedure within the meaning of Rule 14 (1) EPC in conjunction with Article 61(1) EPC is deemed to have been initiated is to be assessed according to the procedural law of the state whose courts are responsible for taking a decision within the meaning of Article 61 (1) EPC (No. 6.1 and 6.2 of the reasons).



3.) When applying foreign law, the European Patent Office must apply this, as far as possible, in the overall context of the foreign legal system. As an international organization independent of state authorities and courts, the European Patent Office is not bound by the case law of national courts for the interpretation of the foreign legal norms to be applied. However, if known to the European Patent Office, national case law of the highest court in particular should be taken into account and assessed in the decision-making process (No. 6.5 of the reasons).


4.) Questions of abuse of rights also arise in the proceedings before the European Patent Office (see e.g. Article 16 (1) e) RPBA 2020). In order to avoid contradictions in valuation, such questions are to be assessed by the European Patent Office autonomously within the framework of the stay procedure, i.e. independently of national legal systems (No. 6.22 of the reasons).

5.) The improper use of a right can under certain circumstances constitute abuse of procedure. This is the case, for example, if the exercise of rights is predominantly intended to cause damage and other legitimate purposes take a back seat. Abuse of procedure must be unequivocal and requires careful examination and weighing of the individual circumstances. The burden of proof lies with the person who invokes abuse of procedure (No. 13.1 of the reasons).

J 0014/19 -  J14/09

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

 

Translation

 [...]

2. Right to the grant of a European patent

 2.1 According to Article 60(1) EPC, the right to a European patent belongs to the inventor or his successor in title. In proceedings before the European Patent Office, according to Article 60(3) EPC, it is deemed that the respective applicant - i.e. the person who formally requested the grant of the European patent - has the right to the European patent.

2.2 The European Patent Office is not empowered to decide whether a particular applicant has a claim under Article 60(1) EPC to the grant of a European patent for the subject matter of a particular application (G 3/92, No. 3 of the reasons). According to the Protocol on Recognition, the courts of the contracting states are exclusively responsible for this. These can award the right to the grant of the European patent to a person who is different from the applicant before the European Patent Office.

G 4/19 - Double patenting

 Key points

• The Enlarged Board confirms the EPO's practice that applications can be refused for double patenting under Art. 125. The referring Board had doubted Art. 125 as the legal basis.
• The Enlarged Board: “Article 125 is dealt with in the Minutes of the Proceedings of Main Committee I [of the 1973 Diplomatic Conference], points 665. to 669., with points 665. to 668. being dedicated to the issue of double patenting, while point 669. records the unanimous opinion that the EPO may correct inadvertent errors [note: see Rule 139 EPC 2000]. ”
• “Point 665. is worded as follows in the English version: "In connection with Article 125, it was established at the request of the United Kingdom delegation that there was majority agreement in the Main Committee on the following: that it was a generally recognised principle of procedural law in the Contracting States that a person can be granted only one European patent for the same invention in respect of which there are several applications with the same date of filing."” “ the proper interpretation of this statement is rather that it "... followed from the ... principles of procedural law in the Contracting States that only one European patent [can be granted]...". ”
• “the preparatory documents demonstrate with overwhelming certainty that there was a real and effective agreement that the European Patent Office should prohibit double patenting by taking into account principles of procedural law generally recognised in the Contracting States, i.e. by a direct application of Article 125 EPC. Furthermore, there must have been a common understanding among the potential signatories to the Convention that this majority agreement was made on behalf of the Plenary of the Diplomatic Conference and recorded with the purpose of defining the scope of Article 125, and that therefore the principle expressed in the agreement [i.e. point 665 cited above] formed part of the Convention. ... the competent legislator, here the Diplomatic Conference, established that the prohibition on double patenting was a generally recognised principle as a question of fact, and in addition made it clear that this was a principle falling under Article 125 EPC as a matter of interpretation of the law, [and] the Office was thereby not only empowered to apply this principle but effectively also duty-bound to do so.”
• The above are some of the key paragraphs of the very thorough legal analysis of the Enlarged Board.
• The Enlarged Board also notes that Art. 123(2) (added subject-matter) is a ground for refusal even though it is comprised in Chapter I of Part VII of the EPC with the title ‘Common provisions governing procedure’. Hence, the term ‘procedural law’ in Article 125 does not exclude consideration of double patenting under that provision: “Thus the Enlarged Board concludes that, from a purely systematic point of view, Article 125 EPC may provide a legal basis for the regulation of double patenting - whether this means permitting or prohibiting it - even though a consideration of substantive issues such as "the same subject-matter" may be involved as well.”
• “The Enlarged Board reads Question 2.1 narrowly, and as essentially asking whether the possible legal basis in the EPC is equally applicable to the three identified constellations, or whether there may be reasons for treating them differently, for example by establishing an exception for one of them. Further questions which may arise in connection with double patenting, such as the question of the same invention or the same applicant, are not considered to be covered by the referral.”
• The interested reader may consult C-IV, 6.4, in particular the reference to C-VI,9.6 of the first edition of the Guidelines (1978) [not published on the EPO website currently], basically the GL then required the difference between the claims of the two application to ‘conceivably be of inventive significance’. (Note, I do not think the EPO should revert to the 1978 practice).

Headnote

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.

2.2 In view of the answer to Question 2.1 a separate answer is not required.

Comment: headnote 1 should probably be understood in the question of the referral: based on the literal wording of hn.1 the granted European patent may also have a later effective filing date (under USA patent law, (obviousness-type) double patenting objections can apparently be based on later filed patent applications. 

G 4/19 - G 0004/19

https://www.epo.org/law-practice/case-law-appeals/recent/g190004ex1.html

Summary of facts and submissions

I. By its decision in appeal case T 0318/14 dated 7 February 2019 (OJ EPO 2020, A104) and issued in writing on 20 December 2019, Board of Appeal 3.3.01 referred the following questions to the Enlarged Board of Appeal:

"1. Can a European patent application be refused under Article 97(2) EPC if it claims the same subject-matter as a European patent which was 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 If the answer to the first question is yes, what are the conditions for such a refusal, and are different conditions to be applied depending on whether the European patent application under examination was filed

a) on the same date as, or

b) as a European divisional application (Article 76(1) EPC) in respect of, or

c) claiming the priority (Article 88 EPC) in respect of a European patent application on the basis of which a European patent was granted to the same applicant?

2.2 In particular, in the last of these cases, does an applicant have a legitimate interest in the grant of a patent on the (subsequent) European patent application in view of the fact that the filing date and not the priority date is the relevant date for calculating the term of the European patent under Article 63(1) EPC?"

II. The appeal before the referring Board (in the following "the Board") was against the decision of the Examining Division refusing European patent application No. 10718590.2 under Article 97(2) EPC in conjunction with Article 125 EPC. The Examining Division found that claim 1 of the sole claim request on file was directed to subject-matter which was identical to the subject-matter claimed in European patent No. 2 251 021, which was granted for the European patent application from which the application-in-suit claimed priority. Granting a second patent on this claim was held to be contrary to the principle of the prohibition on double patenting (in the following also referred to as just "the prohibition"), this being an accepted principle in most patent systems, as stated in the Guidelines. The applicability of the prohibition was furthermore confirmed by an obiter statement in the Enlarged Board of Appeal's decisions G 1/05 and G 1/06. The Examining Division held that the prohibition also extended to European applications claiming an internal priority from another European application, and that decision T 1423/07 was not applicable because the applicants were different in that case.

T 2613/19 - Mandatory ViCo OP at the Boards

 Key points

• Board 3.3.09, making its point in an obiter dictum: “The board and all the parties were in agreement that oral proceedings held by video conference constitute oral proceedings under Article 116 EPC. At present, this understanding reflects the interpretation of this provision according to the case law (see T 2320/16, Reasons 1) and as codified in Article 15a RPBA.”
• “It may be that the Enlarged Board of Appeal at some future date will decide in case G 1/21 that this is not the case. Any such decision would involve a change in the interpretation of law. The Enlarged Board of Appeal normally seeks to ensure that such changes do not have a retroactive effect (see G 3/19, Reasons XXIX). In light of these considerations, the board saw no reason to postpone the oral proceedings and its decision in this case until the Enlarged Board of Appeal had issued a decision in case G 1/21.”
• The decision at hand was taken during vico oral proceedings on 12.05.2021, written decision issued 26.07.2021.
  
  
• There is also an interesting point about Art. 123(2). The application as filed was > 200 pages yet claim 1 at issue lacks basis. Furthermore claim 2 as filed was a list of 40 clauses and the feature that "one or more of all" of these clauses were present. The patentees argued that "The features of claim 2 as filed could be combined due to the formulation "one or more or all". The only question to be answered was whether there was a pointer to the specific combination made. This question was to be answered in the positive." 
• The Board finds that “there is no pointer to select only features (i) and (ii) from original claim 2 or any of the other passages cited by the appellants as a basis for the amendment in the description.”
• “the board is not convinced, as argued by the appellants, that the relative position of a list member of the list recited in claim 2 as filed indicates a corresponding relative preference for that member. Thus, the first two list members would not be considered as being the first two most preferred variants of claim 2 as filed.”
• “Likewise, the statement on page 87, lines 9 to 10 of the description as filed that each possible combination defining the lipid as described in the application is also encompassed does not provide the basis for the combination of exactly the two features (i) and (ii) as specified in original claim 2. Consequently, the board concludes that the list of claim 2 as filed discloses 40 list members of an equal degree of preference. Hence, to arrive at claim 1 as amended, two independent selections have to be made in original claim 2.”

T 2613/19 -

https://www.epo.org/law-practice/case-law-appeals/recent/t192613eu1.html

Reasons for the Decision

1. Request to postpone the oral proceedings (Articles 112a(2)(c), 113(1) and Rule 106 EPC)

The appellants argued that their right to be heard was violated by the holding of the oral proceedings by video conference. The appellants put forward that the COVID-19 restrictions in France (where the appellants' representatives are located) were different from those in Germany (where the respondent's representatives are located) and that the French restrictions had a negative impact on the appellants' preparation of its case. Thus, the appellants implicitly argued that there was an inequality between the parties in that it was easier for the respondent to prepare its case due to the less onerous restrictions it faced. It is this inequality that is the cause of the violation of the right to be heard.

The appellants have not argued that oral proceedings held by video conference as such inevitably lead to a violation of the right to be heard or that they are not oral proceedings within the meaning of Article 116 EPC. Rather, they submitted that they had no objection in principle to the holding of oral proceedings by video conference if it was equitable to do so.

The above arguments were made by the appellants at the oral proceedings before the board. The appellants limited their arguments to generalities and neither carried out any specific analysis of the differences between French and German COVID-19 restrictions nor indicated how these differences had prejudiced their case preparation as compared to the respondent's case preparation.

The board is thus of the opinion that each party has had similar difficulties in preparing its case and that an "equality of arms" prevails between the parties. Such difficulties have not prevented the parties from presenting their cases to the board in the oral proceedings before it, and the appellants have not suggested that this was the case. The board thus finds that no violation of the appellants' right to be heard has taken place. The board thus dismisses the appellants' objection under Rule 106 EPC.

The appellants have not argued that the referral in Enlarged Board of Appeal case G 1/21 requires the postponement of the oral proceedings in this case. They only argued that the outcome of G 1/21 could affect the validity of the present decision. The board and all the parties were in agreement that oral proceedings held by video conference constitute oral proceedings under Article 116 EPC. At present, this understanding reflects the interpretation of this provision according to the case law (see T 2320/16, Reasons 1) and as codified in Article 15a RPBA. It may be that the Enlarged Board of Appeal at some future date will decide in case G 1/21 that this is not the case. Any such decision would involve a change in the interpretation of law. The Enlarged Board of Appeal normally seeks to ensure that such changes do not have a retroactive effect (see G 3/19, Reasons XXIX). In light of these considerations, the board saw no reason to postpone the oral proceedings and its decision in this case until the Enlarged Board of Appeal had issued a decision in case G 1/21.

T 0256/19 - Appellate review of Rule 80 decision

 Key points

• The Board: “Rule 80 EPC represents a non-discretionary provision of the EPC that relates to the allowability of a patent as amended rather than to admissibility.” The Guidelines specify inadmissibility as consequence. 
• This is probably relevant for the appellate review of the decision. Indeed, the Board finds that: “in conclusion, contrary to [the opponent's] request, auxiliary request 1 cannot be disregarded in these proceedings. However, given that the underlying amendment does not lend itself to counter any invoked opposition ground in the present case (cf. point 4.5 above), claim 1 of auxiliary request 1 is not occasioned by such a ground for opposition and is thus not allowable under Rule 80 EPC.”
• The Board bases its analysis on the similar wording of Rule 80 and Article 123(2) EPC. Further, “This conclusion is also corroborated by the preparatory work to Rule 80 EPC (cf. notes on the introduction of Rule 57a EPC 1973, i.e. the predecessor of Rule 80 EPC, in Notice dated 1 June 1995, OJ 1995, 409; see in particular pages 416 and 417, point 2) and thus in line with the legislator's intent (board's emphasis):  "New Rule 57a [Rule 80 EPC] ... addresses the purely substantive aspects of the proprietor's entitlement to amend his patent, and does not specify the point in time up to which amendment is allowed ... Its restriction of the right to amend is in line with the sense and purpose of opposition proceedings, and does away with the need for a discretionary provision like Rule 86(3) [Rule 137(3) EPC]".
• As a comment, I think this Notice requires careful interpretation. Clearly, the OD still has the discretion to hold late-filed amendments inadmissible even if they comply with Rule 80.
• In the board's view, discretion to disregard an amended version of a patent in inter partes proceedings can only emanate from Article 123(1) EPC in conjunction with Rule 79(1) and/or 81(3) EPC and, in case of arranged oral proceedings, with Rule 116(2) EPC (see also T 966/17, Catchword 1; R 6/19, Reasons 6 and 7).”
• I note that also Rule 80 needs a legal basis in some Article of the EPC.
• Quite possibly T 0406/86 is also relevant. Note that the phrase “the proprietor of the European patent shall, where necessary, be given the opportunity to amend, where appropriate, the description, claims and drawings” currently in Rule 81(3), interpreted in T 406/86, recently recalled in R6/19, originates from the original EPC 1973 rules. 
• Particularly relevant is T 295/87 hn.2: “Amendments to the text of a granted patent during opposition proceedings should only be considered as appropriate and necessary in the sense of Rules 57(1) and 58(2) EPC [1973] and therefore admissible if they can fairly be said to arise out of the grounds of opposition. An amendment proposing new claims having no counterpart in the granted patent, which is not in response to a ground of opposition, is not admissible”
• The subsequent introduction of (now) Rule 80 in 1995 codifies the above case law, with the important addition of "even if that ground has not been invoked by the opponent".
• The consequence of inadmissibility hence originates in old case law. 
• It may be asked whether the consequence under e.g. Rule 137(5) first and/or second sentence is inadmissibility or non-allowability.
• Note that where inadmissibility is solely based on substantive considerations, the  Board's review is not limited by G7/93. 

T 0256/19
https://www.epo.org/law-practice/case-law-appeals/recent/t190256eu1.html

4. Auxiliary request 1: claim 1 - Rule 80 EPC

4.1 Claim 1 of auxiliary request 1 differs from claim 1 of the main request in that here the word "sound" is inserted between the words "voice" and "portion" of feature (e).

4.2 The appealed decision states that the "first auxiliary request does not fulfill [sic] the requirements of Rule 80 EPC, and thus is not admissible" (see point 3.1 of the Reasons; board's emphasis; see also point 6, second paragraph of the Reasons) and refers in that context to the Guidelines for Examination in the EPO (see point 3.1.1, last sentence of the Reasons).

4.3 The board understands from the above statement that the opposition division did not admit the present auxiliary request into the opposition proceedings ("first auxiliary request [...] is thus not admissible"). In that regard, it is worth noting that the referred Guidelines for Examination (edition of November 2017, H-II, 3.2, second paragraph) have the following wording (board's emphasis):

"... where a 'clarification' can be considered as a limitation of the claim, it would be admissible under Rule 80 and could form the basis for maintaining the patent in amended form ...".

The board can only surmise that the opposition division assumed that, if an amendment made to a claim of a granted patent can be considered to be a limitation of that claim, the set of claims (such as the present first auxiliary request) containing that claim is to be admitted into the proceedings, otherwise it is not to be admitted. This suggests that Rule 80 EPC would relate to the matter of admittance (implying a discretionary decision) rather than the matter of allowability (as invoked for the other claim requests on file under Articles 54, 56 and 123(2) EPC).

T 0339/18 - Review decision not to admit opposition ground

 Key points

• The OD held the ground of Article 100(c), submitted after the expiry of the opposition period, to be inadmissible based "its lack of prima facie relevance". The opposition was rejected (also on the other grounds), the opponent appeals and resubmits the Art. 100(c) attack. 
• G 10/91, hn.3 held that fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee; the patentee does not consent in the present case.
• However, is it a fresh ground? 
• T 1286/14, r.1.2.4,  indicates that a ground of opposition rejected as inadmissible by the OD and resubmitted with the Statement of grounds is a "new ground" in appeal.
• On the other hand, what if the Opposition Division made a clear mistake when refusing to admit the ground?
• Based on G 7/93 r.2.6, “a board will only overrule a first instance discretionary decision if it was taken according to wrong principles, or without taking into account the right principles, or in unreasonable way, and thus exceeding the proper limits of the discretion.”
• The present Board follows T 1286/14: “In T 1286/14 the board addressed the limited scope for reviewing exercises of discretion [by the opposition division] to refuse a "fresh ground for opposition" where the proprietor objects to its admittance on appeal. In the case at issue, the opposition division had considered a late-filed ground irrelevant and refused to admit it. In such circumstances, it was sufficient for the board to establish that there was evidence that the opposition division had actually examined whether the ground was prima facie relevant and given reasons for its finding on this. So, instead of reviewing whether the opposition division had examined such prima facie relevance "correctly" in substance, it merely had to check that such an examination had demonstrably been conducted.”
• “In the present case, the board follows the rationale of T 1286/14 and takes the view that it is apparent from the decision under appeal that the Opposition Division has actually examined whether the ground was prima facie relevant and given reasons for its finding on this, as summarised above”
• See also e.g. T 0178/16.
• T 0188/16 recalls that if the decision not to admit a request is based on a substantive assessment (compliance of the amendment with Art. 123(2) EPC), the Board has to review this substantive assessment.

T 0339/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t180339eu1.html

Reasons for the Decision

1. Admittance of the new ground under Article 100(c) EPC

1.1 This new ground for opposition was filed with letter of 21 July 2017, i.e. outside the time limit set by Article 99(1) EPC.

1.2 For the board, the Opposition Division correctly found that deciding on its admittance was within its discretion.

1.2.1 In this respect the first instance questioned whether it was prima facie evident that a violation of Article 123(2) EPC was present as the opponent had obviously not noticed it when drafting the notice of opposition, and found that upon taking into account the complete disclosure of the original application, including the examples, it was clear that []

non-soap surfactants (NSS) were present at a ratio to ethoxylated polyethyleneimine (EPEI) polymers of 2:1 to 7:1, so that the ratio NSS/EPEI of 1:2 to 1:7 disclosed on page 12, lines 13 to 19, of the original application was evidently erroneous, and the obvious rectification was to swap the numerical ratio.

Further, the disclosure on page 12 did not link the amount of the polyethyleneimine (PEI) polymers with the disclosed ratio based on the EPEI, and in any case the amount of PEI was anyhow limited by the amended ratio to a value falling within the originally disclosed range for all PEI polymers. Although granted claim 2 referred to the ratio of NSS to EPEI in step b), i.e. after dilution, as no further actives were added upon dilution in step (b), the claimed ratio present in the wash liquor after dilution was the same as that of the detergent composition in step a) of claim 1. Finally, the subject-matter of either of claims 1 and 2 was not based on multiple selections from different lists, as there was ample support in the original application (e.g. page 38, lines 22 to 25) for compositions comprising additionally a soil release polymer (SRP) together with EPEI polymers.

1.2.2 The Opposition Division thus decided not to admit the late-filed ground for opposition under Article 100(c) EPC into the opposition proceedings in view of its lack of prima facie relevance.

1.3 According to an established principle (Case Law of the boards of Appeal of the EPO, 2019, IV.C.4.5.2) a board will only overrule a first instance discretionary decision if it was taken according to wrong principles, or without taking into account the right principles, or in unreasonable way, and thus exceeding the proper limits of the discretion.

T 2285/17 - Review additional search fees

 Key points

• This is an appeal against a decision to refuse the application and to reject the refund of the paid seven additional search fees.
• The Board: “The review under Rule 64(2) EPC has to be carried out by the examining division having regard only to the facts presented by the search division in its communication under Rule 64(1) EPC, i. e. the partial European search report including "sheet B" in the present case. Hence, the examining division has to base its review solely on the documents cited in the partial search report and on the specification of the different inventions drawn up by the search division, while taking into account any arguments which the applicant might have submitted in support of his request for a refund”
• “ From the above, the contentious question with respect to the non-unity objection raised by the search division and upheld by the examining division is whether the subject-matter of claims 1 and 6 as originally filed is novel over D1 or not. If D1 discloses the subject-matter of original claims 1 and 6, then raising an objection under Article 82 EPC by the search division and requesting the payment of seven additional fees were justified; if the subject-matter of original claims 1 and 6 is novel over D1, then the search division's objection was not justified and the seven additional search fees are to be reimbursed.”
• “The subject-matter of original claim 1 is therefore novel over D1. ”
• “Hence, the seven additional search fees are to be reimbursed.”
• The applicant reverses to basically the original claims as main request after receiving the Bord's preliminary opinion acknowledging novelty over D1. This request is admited.
• “As the claims according to the present main request correspond to those of the former main request and, hence, to the set of claims as originally filed, with amendments made only to overcome the Board's objections under Article 84 EPC raised for the first time in its communication pursuant to Article 15(1) RPBA 2020, the Board is convinced that the above circumstances - which arose from reversing the finding on unity of invention-qualify as exceptional circumstances in the sense of Article 13(2) RPBA 2020 and, accordingly, admits the main request into the appeal proceedings.”

T 2285/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t172285eu1.html

Reasons for the Decision

1. The appeal is admissible

[..]

4. Request to refund the seven additional search fees

4.1 Claim 1 as originally filed has the following wording (feature labeling added by the Board):

[...]

4.2 The review under Rule 64(2) EPC has to be carried out by the examining division having regard only to the facts presented by the search division in its communication under Rule 64(1) EPC, i. e. the partial European search report including "sheet B" in the present case. Hence, the examining division has to base its review solely on the documents cited in the partial search report and on the specification of the different inventions drawn up by the search division, while taking into account any arguments which the applicant might have submitted in support of his request for a refund, see Case Law of the Boards of Appeal of the EPO, 9th Edition, 2019, II.B.3.3, fifth paragraph.

In the present case, the partial European search report was drawn up for those parts of the patent application which related to the invention first mentioned in the claims and sheet B identified in total eight inventions :

Visser's Annotated EPC 2021 Edition online

 

Visser's Annotated European Patent Convention 2021 Edition is now available online at:

https://www.kluweriplaw.com/book-toc?title=Visser%27s%20Annotated%20European%20Patent%20Convention%202021%20Edition 

T 1094/17 - An example of the modern PSA

 Key points

• In this examination appeal, the PCT application was filed in 2001. 
• The Board finds the claims to lack inventive step.
• “To summarize the above [findings regarding inventive step], the skilled person, starting from D4 disclosing features a) and b) as well as an AlN nitride layer and being faced with the objective technical problem of how to avoid cracking of thick GaN films grown on Si substrates would have considered to apply solutions found for similar problems when growing GaN on SiC instead of on silicon. They would thereby have consulted D5 and would have been incited by the teaching of D5 relating to figure 8 to replace the AlN buffer layer on the Si substrate of D4 by an AlGaN layer arranged directly on the substrate and thereby adjacent to it, the AlGaN layer being continuously compositionally graded over its entire thickness as required by feature c), starting with an initial composition of AlN (i.e. an Al content of 100 %) at the substrate/buffer interface and ending with a final composition of GaN (i.e. an Al content of 0 %) at the buffer/GaN interface, in line with the requirements of feature d). They would thereby have arrived at a graded ALGaN layer grown in the same manner as the one proposed in the present application. The resulting graded AlGaN layer inevitably would have had a net compressive stress to the same extent as [...] required by feature e). Hence, the subject-matter of independent claim 1 of the main request is not inventive under Article 56 EPC 1973 in view of D4 combined with the teaching of D5 relating to figure 8.”
• The selection of D4 as the closest prior art was not contentious.
• The distinguishing features are identified.
• “the technical effect of the distinguishing features is that the GaN films grown on Si do not exhibit cracking, even if they are relatively thick ”
• The objective technical problem is “how to avoid cracking of thick GaN films grown on Si substrates”
• The Board then first checks the solution proposed in the CPA D4 itself and finds that  “the skilled person would, starting from D4, continue to look for (further) solutions of the cracking problem, despite the solution proposed in D4 itself.”
• The next step is showing that the skilled person would have consulted D5 even if D5 is about “growing GaN on SiC instead of on silicon”
• As to D5, it must both teach 'something falling within' the distinguishing features and give a motivation (incentive) to apply that teaching to the CPA to solve the objective technical problem, i.e. teach that the relevant feature of D5 can be used to avoid cracking of thick GaN films.
• As to the motivation to apply the feature: “D5 discloses that the problem of cracking of the GaN layer grown on an SiC substrate can be resolved by using a compositionally graded AlGaN buffer layer (column 18, lines 53 to 56). ”
• Claim 1 at issue specifies as distinguishing feature “the graded layer having a net compressive stress”. The CPA D4 does not have the graded layer, D5 is cited as teaching the graded layer. However, “D5 does not describe compressive stress”. So D5 teaches a graded layer and teaches that such a layer can be used to avoid cracking, but does not teach that the graded layer at issue has ‘net compressive stress’.
• “However, the type of graded AlGaN buffer layer disclosed in D5 - which the skilled person would have selected to replace the AlN buffer disclosed in D4 as set out above - is grown in a continuous manner starting from AlN” .... “The appellant [applicant] submits that uninterrupted growth of this type of graded AlGaN buffer layer on an Si substrate causes compressive stress. If that is the case, such compressive stress will inevitably also be present when the AlN buffer layer of D4 is replaced by an AlGaN buffer layer grown continuously as described in Example V of D5. It must be concluded that a graded layer grown in that manner has a compressive stress to the same extent as required by feature e).”
• So applying the graded layer of D5 to the structure of D4 inherently gives a structure exhibiting a net compressive stress as specified in feature e of claim 1.
• Full marks for the Board if it was a Paper C of the EQE, in my view, though 5 years (appeal pendency 2017-2021 inclusive) is more time than available on the EQE let alone 20 years (since the filing date).
• The present decision may illustrate that the 13-step problem-solution approach as I outlined in epi Information is indeed applied in practice.

T 1094/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t171094eu1.html

Reasons for the Decision

1. The appeal is admissible.

2. Main request

2.1 D4 as closest prior art

The appellant considers D4 to be the closest prior art (grounds of appeal, page 3, first paragraph under the heading "Inventive step of claim 1 based on D4 combined with D5"). The contested decision also discusses this approach (section II A 2 and the corresponding subsections).

D4 is directed at semiconductors structures including an Si substrate and a nitride layer and addresses the same problem as the application, i.e. the cracking of GaN films grown on Si substrates (see abstract).

The Board thus concurs with the appellant concerning the selection of D4 as the closest prior art.

2.2 Distinguishing features

Summertime reading - The modern problem-solution approach

• My article "The modern problem-solution approach" was published in epi Information 2/2021. 
• It's the article I basically wanted to write since qualifying as a European patent attorney in 2015. I hope readers find it a useful addition to the literature. I give a step-by-step description of the PSA as it is frequently applied in daily practice (with 13 small steps instead of the 3 large steps mentioned in the Guidelines). Somewhat surprisingly this practical form of the PSA can be found nowhere in the legal handbooks (e.g. Visser, Singer/Stauder, Benkard EPU), the Guidelines and the Case Law book tough step-by-step instructions for the PSA can be found in the EQE course books. 
• I personally find the Guidelines chapter about inventive step quite confusing, but that is something for another article or blogpost.
• The advantage of publishing in epi Information is that it is open access on the internet while at the same time having a carefully maintained archive and stable website ensuring long term availability.

T 0935/14 - Broad but clear vs. broad and vague

 Key point

• In this examination appeal, the question is Article 84 of broad claims.
• “10.2 The Board agrees with the appellant [applicant] that broad features may be considered clear, but only under the proviso that the borders of the - broad - scope of protection can be clearly inferred by the skilled person. This makes the distinction between broad but clear and broad and vague. If a feature formulation is such that some further technical features appear to be implied, particularly in view of the features' technical function, but it is not clear what those precisely are, then the claimed feature is vague and not clear.”
• The Board finds the claims to be broad and vague.

T 0935/14 -

https://www.epo.org/law-practice/case-law-appeals/recent/t140935eu1.html

10.2 The Board agrees with the appellant [applicant] that broad features may be considered clear, but only under the proviso that the borders of the - broad - scope of protection can be clearly inferred by the skilled person. This makes the distinction between broad but clear and broad and vague. If a feature formulation is such that some further technical features appear to be implied, particularly in view of the features' technical function, but it is not clear what those precisely are, then the claimed feature is vague and not clear.

11. In the present case, the claim fails on more than one account in view of the above considerations.

[...]

11.2 A minimal claim construction, i.e. with no further implied features, would also be technically inconsistent: for instance, in that a hosted account is created to be used for messaging by the terminal, but is actually not used (point 7 above). This raises the question as to which other features may be implied, either as message formatting, or upon the server side, or both, so that the account is used.

11.3 The (intended) answer may lie in the account creation steps. But, as noted above, the creation steps are vaguely defined. For instance, under a literal reading, an account creation wherein the server merely checks whether the identification data relating to the terminal device is properly formatted falls under the claim scope. But then, the question arises how this account can be used, as required by the claim? For the claim to make technical sense, some further technical features need to be read into the claim. It is not clear which those are.

T 0538/20 - Filing problems in house last day

Key points

• The appellant tried to submit a Statement of grounds on the last day of the period by fax.
•  “ At 18.48 hrs on the day of the deadline its in-house representative had started to submit the letter setting out the grounds of appeal via fax using the computer fax equipment installed at the appellant's office. Since the representative had not yet received a confirmation of receipt or a notice that sending had failed, he sent the letter again at 20.27 hrs in the same way. After sending the second fax, the representative left the office. The next day he found two "delivery delayed" reports received at 22.58 hrs (for the first fax) and 00.27 hrs (for the second fax). The representative then informed the appellant's IT expert, who found that the computer fax equipment used at the representative's office was limited to a maximum file size of 10 MB and that the letter to be sent on 2 June 2020 had a size of 14 MB, attachments included.”
• “the [fax] capacity had been inadvertently reduced from 50 to 10 MB when the appellant's telephone system was updated by an external technician between 22 and 25 April 2020; the appellant had not noticed this. Once the IT expert had reset the limit to 50 MB, the letter was sent to the EPO without issue at 11.02 hrs on 3 June 2020. The appellant was of the opinion that it missed the time limit because of a unique and unintended misconfiguration of its computer fax equipment. ”
• The Board: “Despite there being other ways to send documents to the EPO, for example online filing, the appellant relied solely on the functioning of its computer fax system. Since these technical systems can be prone to faults, this alone makes the board question whether this satisfies the requirements of due care. This applies all the more in a time when technical support is not readily available.”
• As a comment, I'm not sure if the Board here says that due care generally requires that an in house professional representative acting as employee under Article 133(3) EPC (as in the present case) has an EPO smart card and EPO Online Filing installed at his office computer when filing a submission on the last day of a period. I also note that Online Filing can not be used without smart card (same for CMS) and that a smart card can not be obtained within a day. Furthermore, the EPO President has decided to not make WebForm filing unavailable in appeals for reasons which are unclear at least to me even more since the EPO itself wishes to phase out fax due to unreliability.  
• As a puzzle, what could the in house attorney have done to meet the deadline on the evening of the last day? There are certainly solutions but calling a patent attorney working at a firm is a helpful first step. 

T 0538/20 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t200538eu1.html

Summary of Facts and Submissions

I. The appeal is against the opposition division's decision posted on 2 January 2020 rejecting the appellant's opposition against the European patent No. 2 542 286 entitled "VENTILATION DEVICE".

II. The appeal was filed on 28 February 2020, followed by the statement setting out the grounds of appeal dated 2 June 2020 and received on 3 June 2020.

T 2607/16 - Only three of the thirty five documents filed

 Key points 

• “Furthermore, as submitted by the proprietor, it is indisputable that the filing behaviour of opponent 2 negatively affected the fairness of the proceedings before the opposition division. Only three of the thirty five documents filed by opponent 2 with its notice of opposition were substantiated therein with regard to their relevance to the grounds on which the opposition was based.”
• The Board therefore does not set aside the decision of the OD to hold D18, filed with the Notice of opposition, to be inadmissible.
• “It is undisputed that the notice of opposition was completely silent with regard to the relevance of D18 (then numbered D7) to the grounds on which the opposition was based. Thus, although it was formally cited within the time limit of Article 99(1) EPC, the opponent did not fulfill its duty in accordance with Rule 76(2)(c) EPC to present its case concerning D18 in the notice of opposition. As a consequence, the board considers D18 duly filed only on the date on which it was substantiated by the opponent, namely with the letter of 27 July 2016. D18 was thus late filed. The opposition division therefore had the discretionary power pursuant to Article 114(2) EPC to decide on the admittance of D18 into the proceedings.”

T 2607/16 

https://www.epo.org/law-practice/case-law-appeals/recent/t162607eu1.html

4. Admittance - documents relevant to the grounds for opposition under Article 100(a) and 56 EPC

4.1 D18

4.1.1 D18 is a patent document filed by opponent 2 with the notice of opposition. Its relevance to the grounds on which the opposition was based was however not addressed therein. The opposition division decided not to admit D18 into the proceedings on the grounds that it was not prima facie more relevant than other documents already admitted into the proceedings (contested decision, page 20, penultimate paragraph). Opponent 2 requested that the opposition division's decision not to admit D18 be set aside and the document be admitted into the proceedings.

4.1.2 In assessing whether to overturn the decision of the opposition division not to admit D18, the board must determine whether the opposition division exercised its discretion correctly. It is not the board's task to re-examine the case and to decide whether it would have exercised discretion in the same way. The board overrules the decision of the first instance department only if it either failed to exercise its discretion in accordance with the right principles or exercised its discretion in an unreasonable way (G7/93, OJ 1994, 775, reasons 2.6).

G 1/21 - Substantive conclusion (order)

The order issued by the Enlarged Board of Appeal reads as follows:

During a general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the boards of appeal in the form of a videoconference is compatible with the EPC even 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.

https://www.epo.org/law-practice/case-law-appeals/communications/2021/20210716.html

“The Enlarged Board of Appeal limited the scope of its answer ... by confining its order to oral proceedings that are held during a period of general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises and moreover are conducted specifically before the Boards of Appeal.

Accordingly, in its order the Enlarged Board did not address the question whether oral proceedings by videoconference may be held without the consent of the parties in the absence of a period of general emergency. 

Nor did the order address the question whether oral proceedings by videoconference may be held without the consent of the parties in examination or opposition proceedings before the EPO's departments of first instance.”

T 0391/18 - When referring to earlier submissions suffices

 Key points

• “The [patentee] respondent had filed auxiliary request 24 in the opposition proceedings with the letter dated 11 November 2016. It re-filed the request with the reply to the statement of grounds of appeal and referred to the submissions made in that letter. In the [opponent's] view, the reference to the submissions in the opposition proceedings did not fulfil the requirements of Article 12(2) RPBA 2007. Therefore, the request had to be held inadmissible under Article 12(4) RPBA 2007.”
• “The letter [of patentee of 11 November 2016 before the OD] explained the impact of this amendment on the issue of inventive step. [It] was apparent that the amendment in claim 1 [also addressed the objection of insufficient disclosure].”
• “In the appealed decision, the opposition division concluded that the patent could be maintained on the basis of the main request. Thus, the submissions regarding inventive step in relation to auxiliary request 24 in the opposition proceedings remained relevant at the outset of the appeal proceedings and potentially addressed the lack of inventive step objections raised by the appellant in the statement of grounds of appeal. It was also apparent that the amendment introduced in claim 1 of auxiliary request 24 made the claimed subject-matter narrower and closer to the post-filing evidence which had been filed in the context of the issue of sufficiency of disclosure. Therefore, the board decided to admit auxiliary request 24 into the proceedings (Article 12 (2) and (4) RPBA 2007).”
  
  
• Claim 1 is directed to “A combination comprising  [the compound TMC278] and [a nucleotide reverse transcriptase inhibitor] for use in the treatment of HIV infection wherein the combination is administered once daily”.
• The Board, regarding the plausibility of second medical use claims: “In view of this common general knowledge, it would have been plausible [at the filing date] that the combination of [the compound] TMC278 with one or more [ nucleoside reverse transcriptase inhibitor compounds] [which are only functionally defined as] known to be therapeutically effective HIV inhibitors when administered once daily could be effective for treating HIV infection by once-daily administration”
• “However, this initial plausibility cannot be equated with meeting the requirement of Article 83 EPC. It is basic knowledge in the field of pharmaceutical combinations that in the absence of experimental data (or previous related knowledge), the interaction between individual active ingredients at physiological levels is unpredictable; the compatibility of the ingredients and the suitability of their combinations for the envisaged treatment at given doses needs to be assessed in vivo. ”
• “The existence of an initial plausibility nevertheless allows the board to consider post-published evidence which fills the probative gap that existed at the filing date. ”
• “D26 proves that the skilled person could have carried out the treatment of claim 1 to the extent that it concerned the combination of E-TMC278 with emtricitabine and tenofovir disoproxil fumarate. However, this appears insufficient to make credible that every possible combination of TMC278 with NRTIs that are therapeutically effective by once-daily administration would be suitable for treating HIV in a once-daily dosage regime. To find suitable combinations and their corresponding doses among all the possibilities covered by claim 1, the skilled person would have needed to carry out an undue amount of research. ”
• “Therefore, there exist serious doubts substantiated by verifiable facts that the skilled person could have carried out the treatment of claim 1 across its whole breadth without undue burden. As these doubts were not removed by the respondent, the main request does not meet the requirement of Article 83 EPC.”
• As a comment, there are numerous patents granted reciting one particular pharmaceutical compound and generically defined further components - with a number of CJEU cases about those kinds of claims in connection with SPC's. 
• In addition, a patent for a first medical use also covers all combination treatments and a patent for a new pharmaceutical compound also covers all combination treatments However, in that case perhaps the claims are not directed to combination treatment specifically. 

T 0391/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t180391eu1.html

Reasons for the Decision

1. The appeal is admissible. It meets the requirements of Articles 106 to 108 and Rule 99(2) EPC.

2. Main request - sufficiency of disclosure

2.1 Claim 1 of the main request is directed to a combination of active ingredients for treating HIV infection in a regime of once-daily administration. The claim contains the following two requirements: (i) the combination of active ingredients must be suitable for treating HIV infection when administered once daily and (ii) each of the individual active ingredients must be therapeutically effective HIV inhibitors at a dose that can be administered once daily.

T 2264/18 - Withdrawing application after oral proceedings

 Key points

• In this examination appeal, the Board decided to reject the appeal during the oral proceedings. A few days later but before the decision is issued in writing, the applicant withdraws the application.
• “Given that by virtue of the board's decision [announced at the oral proceedings] the refusal became final and no appeal lies from decisions of the boards, the appellant's submission made after the announcement of the board's decision is without any legal effect.”
• “a statement of withdrawal of the application made by the (sole) appellant after the final decision of the board has been announced at oral proceedings does not relieve the board of its duty to issue and notify to the appellant the decision in writing setting out the reasons for the decision ”
• “Since the withdrawal is without any legal effect and the written decision has to be issued, the appellant is not entitled to the reimbursement of the appeal fee at 25% under Rule 103(4)(b) EPC.”

T 2264/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t182264eu1.html

Reasons for the Decision

Procedural matters

1. The appellant stated by a letter dated 4 May 2021 that the application was withdrawn "unconditionally". However, since the decision had been announced at the oral proceedings held on 17 March 2021 and thereby became effective on that day, the appeal proceedings are terminated (T 843/91 of 17 March 1993, OJ EPO, 1994, 818, point 10 of the reasons). Given that by virtue of the board's decision the refusal became final and no appeal lies from decisions of the boards, the appellant's submission made after the announcement of the board's decision is without any legal effect.

Furthermore, a statement of withdrawal of the application made by the (sole) appellant after the final decision of the board has been announced at oral proceedings does not relieve the board of its duty to issue and notify to the appellant the decision in writing setting out the reasons for the decision (T 1033/04, point 3 of the reasons; T 1518/11, point 2 of the reasons).

Since the withdrawal is without any legal effect and the written decision has to be issued, the appellant is not entitled to the reimbursement of the appeal fee at 25% under Rule 103(4)(b) EPC.

T 1705/17 - No Art.69 for novelty

 Key points

• The Board has to decide on novelty of claim 1, which in turn hinges on the interpretation of a feature of claim 1. The patentee argues that the description of the opposed patent should be taken into account 7as foreseen in Article 69 EPC”
• The Board: “Article 69 EPC is concerned with the extent of protection conferred by a European patent, with which the Board is not concerned when analysing novelty of the claimed subject-matter. In relation to Article 54 EPC it is evidently not the aim of Article 69 EPC to provide, in the event of a discrepancy between the claim wording and the description and/or the figures, a legal basis for a re-interpretation of the clear technical meaning of a claim. In case of such a discrepancy between the claims and the description and/or the figures, the claim wording must be interpreted as it would be understood by a person skilled in the art, i.e. the description and/or figures cannot be used to interpret the claim wording in a different way. Thus, the Board does not accept the respondent's argument that Article 69 EPC should be used to interpret the features of the claim.” 
• “A claim should be interpreted in a technically sensible manner and be given the broadest, technically reasonable interpretation and should be construed by a mind willing to understand, not a mind desirous of misunderstanding. Thus, the skilled person should only rule out interpretations which are illogical or which do not make technical sense”
• This holding is a counterpart to the remark in the Guidelines, G-VI,2 that “when considering novelty, it is not correct to interpret the teaching of a [prior art] document as embracing well-known equivalents which are not disclosed in the documents; this is a matter of obviousness” (cf. T517/90)

T 1705/17 -

https://www.epo.org/law-practice/case-law-appeals/recent/t171705eu1.html

1. Main request - novelty

1.1 It is not disputed that D1 discloses all the features of claim 1 with the exception of the feature

- [there is provided on a single or separate adjacent press jaws] penetrating segments, PSSG, (11) configured to penetrate the absorbing material with a plurality of side grooves that are arranged in the longitudinal direction.

1.2 According to the respondent  [patentee] claim 1 defined that each of the press jaws comprised more than one penetrating segments creating side grooves, which plurality was arranged along the longitudinal direction. The skilled person reading the claim would understand this, not least since all the embodiments of the patent disclosed a press jaw with more than one side groove (see Figures 20A to 28C of the patent as well as paragraph [0028], which describe always more than one PSSG per press jaw). According to the respondent, the description and the drawings should be used in the interpretation of the claims as foreseen in Article 69 EPC.

T 2680/18 - The Main Request is convergent

 Key points

• In this examination appeal, the Examining Division did not admit the main request and auxiliary requests into the proceedings under Rule 137(3). These requests were filed after the summons by the ED. The reasons of the ED were that the requests were not convergent and that the requests contained unnecessary amendments.
• The Board: “In principle, the convergence of a plurality of requests may be taken into account when deciding on the admissibility of requests based on Rule 137(3) EPC. For example, if claim 1 of a first auxiliary request adds a limitation to claim 1 of a main request and claim 1 of a second auxiliary request adds a different one, there might be divergence between the first and second auxiliary requests. However, in this hypothetical case the main request is not divergent from any of the auxiliary requests.” Accordingly, “No reasons are given [in the refusal decision] why the main request [in the present case] might be divergent, and the board is not aware of any.”
• As to the second ground, the amendments being unnecessary: “Furthermore, the [Examining Division's] communication attached to the summons to oral proceedings dated 10 July 2017 raised, for the first time, an objection under Article 83 EPC regarding, inter alia, the plurality of user interface elements (section 6.3 on page 4). Replacing "plurality of user interface elements" with the more specific "two user interface elements" may be seen as a bona fide attempt to address this objection.”
•  The amended feature also had basis in the application as filed.
• “As this non admittance was the sole reason for refusing the main request, the board sets aside the decision under appeal.”
• The ED had issued a first communication raising only a clarity objection (and citing three prior art documents). In the second communication, only clarity objections were raised. In the summons, objections under Art. 82, 83, 84 and Rule 42(1)(e) were raised. 
• As a comment, the ostensible discretion under Rule 137(3) EPC is in fact severely restricted by Article 113(1) EPC. If the Examining Division raises new objections after (basically) the search opinion or written opinion of the EPO as ISA, the applicant must be given the opportunity to 'present their comments' which includes a right to amend the claims as appropriate. For instance, if the Examining Division raises a new objection in the summons - as they are free to do - the applicant is entitled to submit appropriately amended claims in by the Rule 116 date, also as auxiliary request in addition to arguments rebutting the objection. If the Examining Division raises multiple distinct objections, the principle of 'convergence' needs to be applied very carefully so as to not violate Article 113(1) EPC and the right to rebut the objections with arguments in oral proceedings under Article 116 EPC

T 2680/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t182680eu1.html

Reasons for the Decision

1. The application at issue pertains to an apparatus for enabling different tactile feedback depending on two graphical user interface elements being in contact with or overlapping each other.

2. Main request - Admissibility

2.1 The current main request corresponds to the main request on which the decision under appeal was issued, save for a minor correction in dependent claim 7.

2.2 The examining division did not admit this request into the proceedings pursuant to Rule 137(3) EPC. Since all auxiliary request were similarly not admitted, the application was refused.

2.3 Rule 137(3) EPC gives the examining division discretion not to admit amendments to the application documents. If the EPC gives an examining division discretion in certain cases, it is not for the board of appeal to review all the facts and circumstances of the case as if it were in place of the division and decide whether it would have exercised the discretion in the same way unless the division has not exercised its discretion in accordance with the right principles or has done so but in an unreasonable way (see G 7/93, point 2.6 of the Reasons).

2.4 In the case at hand, the examining division took into account the right principles but did so in an unreasonable way for the following reasons.

T 0598/19 - Whose request for oral proceedings?

 Key points

• The Board considers the 25% reimbursement of the appeal fee in case of withdrawal of "any" request for oral proceedings.
• “In the case in hand, the appellant had already withdrawn its request for oral proceedings before being notified of the [Board's preliminary opinion]. The respondent withdrew its request within one month of the notification of said communication. Therefore the oral proceedings could be cancelled and the decision issued in writing.”
• “The board agrees with the rationale of [T 0488/18] that the wording "any" (or "ein etwaiger" in German or "une" in French) in Rule 103(4)(c) EPC does not imply that the request for oral proceedings has to be the appellant's [own] request for oral proceedings.”
• “Furthermore as a result of the appellant's (opponent's) withdrawal of its request for oral proceedings, it is obvious that it had itself already become active and would not, only, benefit of the withdrawal of the request for oral proceedings of the respondent (patent proprietor) which occurred after the notification of the Board's communication. In this respect, this case differs from the facts of T 0795/19 and the appeal fee under Rule 103 (4)c) EPC is to be refunded.”
• As a comment, I don't understand the Board's reasoning. If T0488/18 is right, it does not matter what the appellant did and the respondent's withdrawal of the respondent's request for oral proceedings is enough. 
• It is not clear to me if the Board considers a withdrawal of a request for oral proceedings (by the appellant, for that matter) prior to notification of the preliminary opinion is (as such) sufficient under Rule 103(4)(c). 
• The present decision appears to show how complex the application of Rule 103(4)(c) EPC is. 

T 0598/19

https://www.epo.org/law-practice/case-law-appeals/recent/t190598eu1.html

Auxiliary requests 4 to 13

4. Since auxiliary request 3 (highest ranked request) is allowable, the auxiliary requests 4 to 13 need not be discussed.

5. Rule 103(4)(c) EPC

According to Rule 103 (4)(c) EPC the appeal fee shall be reimbursed at 25% if any request for oral proceedings is withdrawn within one month of notification of the communication issued by the Board of Appeal in preparation for the oral proceedings, and no oral proceedings take place.

In the case in hand, the appellant had already withdrawn its request for oral proceedings before being notified of the communication pursuant to Article 15(1) RPBA 2020 issued by the board in preparation for the oral proceedings. The respondent withdrew its request within one month of the notification of said communication. Therefore the oral proceedings could be cancelled and the decision issued in writing.

The situation is very similar to that in T 488/18 (Reasons 8) except that in that case the appellant had not filed a request for oral proceedings at all. The board agrees with the rationale of that decision that the wording "any" (or "ein etwaiger" in German or "une" in French) in Rule 103(4)(c) EPC does not imply that the request for oral proceedings has to be the appellant's request for oral proceedings.

T 0408/21 - Allowable appeal against grant

 Key points

• The Board considers the appeal of the applicant against the grant to be admissible and allowable. 
• In the Intention to grant, the drawings were no longer included, without this being marked in any way. There had been no amendment of the drawings. The applicant did not notice and paid the fee and filed the translated claims. 
• “Normally the documents indicated in a communication according to Rule 71(3) EPC correspond to the applicant's request and to the examining division's intention; however, in a case where there appears to be severe doubts as to whether the documents indicated in Rule 71(3) EPC were actually those intended to be granted by the examining division, the Board considers the [herein after described] clarification of the "true will" of the examining division an appropriate means.”\
• “When trying to clarify the intention behind an action or request, this is frequently done in the Case Law of the Boards of Appeal by identifying the "true will" of the actors in a case. This applies to the will of the applicant/appellant [] as well as of the examining division (e.g. T 843/03, point 1 of the Reasons; T 762/05, point 1 of the Reasons; T 1869/12, headnote). Even the Enlarged Board's decision, G 1/12, elaborates in detail on the notion of the "true intention" behind an action performed”
• “the Board concludes that the examining division did not indicate in the communication according to Rule 71(3) EPC the text it intended to grant for the following reasons:”
• “The examining division therefore did not communicate the text it intended to grant by using Form 2004C. Following T 2081/16 (point 1.4.5 of the Reasons) and T 1003/19 (point 2.4.5 of the Reasons), Rule 71(5) EPC correspondingly does not apply in this case, as in the step preceding the deemed approval the applicant has to be informed of the text in which the examining division intends to grant the patent according to Rule 71(3) EPC. Although the (then) applicant received a Rule 71(3) EPC communication, the documents indicated were not those which the examining division intended to grant.”
• “The Board is aware of decision T 265/20, in which the competent Board did not follow the approach of the above-cited decisions T 1003/19 and T 2081/16 without considering it necessary to refer a question to the Enlarged Board of Appeal. This case is distinguished from said decision not least in the fact that, as outlined above, the Board could identify convincing reasons why the examining division's true intention was not reflected by the text of the Rule 71(3) EPC communication, whereas the Board in case T 265/20 was not in a position to draw such a conclusion for "the case at hand" ”
• As a comment, I don't see a relevant difference in the facts. The present Board does not identify the actual error of the Formalities Officer.
• “This Board considers that the detailed reasons given in T 1003/19 and T 2081/16 are fully convincing and, in cases such as this, lead to a result that prevents the patent applicant from being seriously prejudiced by the absence of a possibility to request corrections under Rule 140 EPC (see G 1/10, points 8 to 12 of the Reasons). Therefore, the Board sees no need for and refrains from its own referral to the Enlarged Board.”

T 0408/21 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t210408eu1.html

Summary of Facts and Submissions

I. The applicant's (appellant's) appeal lies from the examining division's decision dated 14 January 2021 to grant a patent on the basis of application documents as indicated in a communication under Rule 71(3) EPC dated 24 August 2020 following the examination of European patent application No. 13 855 497.7.

II. The original application contained

- description pages 1 to 14,

- claims 1 to 19 and

- drawing sheets 1/6 to 6/6 with figures 1, 2a, 2b, 3, 4 and 5.

III. In the extended European search report all parts indicated above were properly listed. In the course of examination proceedings the examining division issued communications pursuant to Article 94(3) EPC on 2 November 2017, 11 July 2018 and 12 August 2019. Throughout the proceedings before the examining division, amendment or deletion of the drawing sheets was never suggested by the examining division nor requested by the appellant.

IV. On 24 August 2020 a communication under Rule 71(3) EPC was sent to the appellant informing them of the examining division's intention to grant a European patent on the basis of its application, listing the following parts: