T 2377/19 - Comparable to a clearly inadmissible appeal

 Key points

• In this opposition appeal, a Notice of appeal was filed including a request for oral proceedings, but no Statement of grounds.
• Similarly as in T 1573/20, the Board finds that " There was no contentious matter on which the appellant had to be heard according to Article 113(1) EPC. Oral proceedings would thus have had no legitimate aim. The situation is therefore comparable to the "clearly inadmissible appeals" considered in decisions G 1/97 and G 2/19. (cf. T 1573/20, point 5 of the reasons). Thus no oral proceedings had to be held." 
• However, as an addition to my blog post about T 1573/20, I would like to note that the Board only says that the situation is " comparable to the "clearly inadmissible appeals" considered in decisions G 1/97 and G 2/19". The Board does not say if the appeal is " clearly inadmissible". So, possibly, oral proceedings can also be dispensed with, even if requested, if the appeal is comparable to a clearly inadmissible appeal.
• It may be asked until when a divisional application can be filed, if the appeal is against a refusal decision (as in T 1573/20), in fact a divisional application was filed in the underlying case in that appeal, pending as EP3685667. The divisional application was filed on 12.03.2020. In that case, the Notice of appeal was filed on 07.01.2020, the decision to refuse was issued 07.11.2019. The reason is that the Board said in G 2/19 that clearly inadmissible appeals, at least of the type at issue in the appeal leading to the referral of G 2/19, have no suspensive effect. The possibility to file divisional applications during the appeal period is not depending on the suspension effect of appeals (G1/09), I am not sure if G 2/19 modifies the holding of J23/13 r.8 that the divisional application can be filed until the expiry of the period for filing the Statement of grounds. The reasoning in J23/13 r 8.3 is not explicitly restricted to appeals against refusals but probable must be understood in that way in view of G2/19 dealing with appeals against grant decisions.
• Note that e.g. recent decision T0574/21 applies the reasoning that the “the request for oral proceedings is deemed withdrawn or superseded by the subsequent failure to react to the Board's communication [regarding the missing Statement of grounds]” in line with T1042/07.

T 2377/19 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t192377eu1.html

Reasons for the Decision

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

2. Request for oral proceedings

2.1 The appellant requested oral proceedings should their request not be granted, i.e. in the case that the appeal would be dismissed. In the absence of any submission that could be regarded as a statement of grounds of appeal the issue of dismissal of the appeal was not a subject of the appeal proceedings. There was no request for oral proceedings in the case of a decision concerning the admissibility of the appeal.

2.2 Despite the absolute nature of the right to oral proceedings under Article 116 EPC, the board concluded that oral proceedings were not required in the present circumstances. The board notes that the appellant did not file any observations in reply to the communication of 17 January 2020. In particular, the appellant did not contest the finding there that no statement of grounds of appeal had been received. Therefore, holding oral proceedings would have served no other purpose than confirming the (undisputed) preliminary finding that no statement of grounds of appeal had been filed, and announcing the decision afterwards. There was no contentious matter on which the appellant had to be heard according to Article 113(1) EPC. Oral proceedings would thus have had no legitimate aim. The situation is therefore comparable to the "clearly inadmissible appeals" considered in decisions G 1/97 and G 2/19. (cf. T 1573/20, point 5 of the reasons). Thus no oral proceedings had to be held.

3. Therefore, the appeal has to be rejected as inadmissible (Rule 101(1) EPC).

Order

For these reasons it is decided that:

The appeal is rejected as inadmissible.

T 1141/17 - An example of the Comvik approach

 Key points

• Under the Comvik approach to inventive step, the non-technical features of the claim are basically put in the objective technical problem (“in particular where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met”; T 641/00 hn.2, G1/19 r.30(g).
• However, it's not so easy to find an easy and illustrative example of the Comvik approach in the case law of the Boards. There are numerous decisions applying the Comvik approach but often the non-technical innovation is complex, or the step of actually formulating the objective technical problem in line with the Comvik approach is summarily disposed of.
• In the present case, “The invention concerns the automatic selection of a customised telemarketing script. When a potential customer calls a number in an advertisement, the call is often received by a sales representative firm that represents many businesses. Thus, the sales representative needs to find the marketing script associated with the product or service that the customer is calling about. Furthermore, it is advantageous to use a script that is targeted to the prospective customer. For example, a person who is likely to make a high value purchase may receive a different offer than a person who is likely to make a low value purchase, or unlikely to make a purchase at all.” (internal citations omitted).
• The invention uses number recognition to identify the caller's phone number (ANI), looks the number up in a database (shared between different telemarketing firms), and calculates a score (e.g. a "prospective customer value indicator") which in turn is used to select the phone script from a database that the marketer is to follow. In the same way, the specific phone number (DNIS) in the advertisement is also used (for telemarketing firms acting for various selling companies)
• The Board, “Starting from a conventional communication system combining a telephone system and a computer system, such as the one disclosed in D1 [(US6597685], the invention in claim 1 distinguishes itself by the use of the ANI to locate customer information in a database, the calculation of a modeling score based upon the customer information and the DNIS, the selection of a stored script based on the modeling score contemporaneously with a time at which the customer communications device provides the ANI, and the display of the script to the marketer.”
• “In line with the Comvik approach, the Board considers that the problem to be solved by the distinguishing features is how to automate the method of selecting a customised script defined under point 2.3 above.”
• ô2.6 In the Board's view, the technical implementation of the non-technical requirements, including the use of ANI and DNIS to identify the customer (caller) and the contacted business (callee) respectively, and the use of the computer to contemporaneously look up information in a database, calculate the modelling score, and select and display a relevant script, would have been obvious to the skilled person in the art of telecommunications and computer systems. ANI and DNIS were well known and designed to provide the recipient of the telephone call with information about the caller and the dialled number. The skilled person would have provided suitable means for storing and retrieving data, including the use of the ANI as an identifier for storing and retrieving customer information in a database.”

T 1141/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t171141eu1.html

Reasons for the Decision

1. Background

1.1 The invention concerns the automatic selection of a customised telemarketing script (see page 4, lines 12 to 14 of the published application).

1.2 When a potential customer calls a number in an advertisement, the call is often received by a sales representative firm that represents many businesses (page 3, lines 5 to 16). Thus, the sales representative needs to find the marketing script associated with the product or service that the customer is calling about.

T 0706/17 - Opponent must present feature analysis

 Key points

• The Board explains that for the opponent as appellant, is not enough to point out one mistake in the opposition division's reasoning supporting the OD's conclusion that the claims are inventive. Rather a complete feature analysis is required.
• " Allein aus dem angeblich fehlenden technischen Effekt dieses Unterscheidungsmerkmals ergibt sich noch nicht, warum der beanspruchte Gegenstand der Ansprüche 1, 16 oder 17 ausgehend von einem der drei Dokumente D1, D2 oder D4 als nächstliegendem Stand der Technik naheliegend sein könnte. Wie zuvor dargelegt, fehlt unter anderem eine komplette Merkmalsanalyse hinsichtlich dieser Dokumente." 
• In the case at hand, the OD had accepted the one distinguishing feature that was acknowledged by the opponent and found that feature to be non-obviousness. The OD had made no express finding on whether the other features were disclosed by the document cited as CPA.
• Hence, the inventive step attacks filed with the Statement of grounds are not admitted .

T 0706/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t170706du1.html

Erfinderische Tätigkeit auf Grundlage von D1, D2 oder D4

3. Die Einwände der Beschwerdeführerin zur erfinderischen Tätigkeit auf Grundlage von D1, D2 oder D4 in der Beschwerdebegründung sind unsubstantiiert. Sie werden deshalb nicht im Beschwerdeverfahren berücksichtigt (Artikel 12 (4) VOBK 2007).

3.1 Nach Artikel 12 (3) VOBK 2020, welcher nach Artikel 25 (1) VOBK 2020 im vorliegenden Verfahren anwendbar ist, muss die Beschwerdebegründung das vollständige Beschwerdevorbringen enthalten. Sie muss deutlich und knapp angeben, aus welchen Gründen beantragt wird, die angefochtene Entscheidung aufzuheben, abzuändern oder zu bestätigen; sie soll ausdrücklich alle geltend gemachten Anträge, Tatsachen, Einwände, Argumente und Beweismittel im Einzelnen anführen.

Eine Sanktion, für den Fall, dass entsprechende Anforderungen nicht erfüllt sind, ergibt sich aus Artikel 12 (4) VOBK 2007, der im vorliegenden Verfahren gemäß Artikel 25 (2) VOBK 2020 anwendbar ist. Dieser bezieht sich seinem Wortlaut nach zwar auf Artikel 12 (2) VOBK 2007, der jedoch ähnliche Anforderungen an eine vollständige Beschwerdebegründung wie Artikel 12 (3) VOBK 2020 definiert, so dass eine entsprechende Anwendung von Artikel 12 (4) VOBK 2007 geboten ist.

T 2534/17 - Bitcoins at the Boards

 Key points

• “The invention relates to a payment module, such as a smart card, storing pre-loaded electronic money which is used for purchasing goods or services []. Known cards subtract a payment amount from the amount of electronic money stored on the card. If the stored amount is below the required amount, the payment fails. Even smart cards, storing electronic money of different currency types, such as Euro, Dollar, or Yen, cannot compensate a shortage of one of the currencies with the other currencies stored on the card []. The invention seeks to solve this problem []. The solution involves using a reference currency ("utility electronic value" in the claims). If payment in one currency ("electronic value") is required, e.g. Euro, and the Euro balance on the card is insufficient, the deficit is taken from the reference currency. If, however, the balance of the reference currency is also insufficient, the reference currency is replenished from one or more of the remaining currencies[]. This idea is implemented by a plurality of applications (or "apps") on the card; one for each of the electronic values, and one for the utility electronic value.”
• This may all sound rather complex for normal currencies.
• However, the Board explains “As the [examining] division observed, administrative or commercial restraints might hinder the direct exchange between certain types of electronic money. For instance, loyalty points from different merchants or pairs of rare currencies are not always directly exchangeable. The conversion is then realised via a commonly used reference currency, such as US Dollar. Likewise, most cryptocurrencies are not directly exchangeable for fiat currencies but require an intermediate conversion step, e.g. via Bitcoin. ”
• As a comment, the application (EP2704073A1 ) does not seem to mention cryptocurrencies.
• The Board finds the claims to lack inventive step under the Comvik approach.

T 2534/17 -  

https://www.epo.org/law-practice/case-law-appeals/recent/t172534eu1.html

Reasons for the Decision

1. The invention

1.1 The invention relates to a payment module, such as a smart card, storing pre-loaded electronic money which is used for purchasing goods or services (paragraph [0002] of the published application).

1.2 Known cards subtract a payment amount from the amount of electronic money stored on the card. If the stored amount is below the required amount, the payment fails. Even smart cards, storing electronic money of different currency types, such as Euro, Dollar, or Yen, cannot compensate a shortage of one of the currencies with the other currencies stored on the card ([0004]).

The invention seeks to solve this problem by using the total amount of electronic money of all available currencies on the card ([0005]).

1.3 The solution involves using a reference currency ("utility electronic value" in the claims). If payment in one currency ("electronic value") is required, e.g. Euro, and the Euro balance on the card is insufficient, the deficit is taken from the reference currency. If, however, the balance of the reference currency is also insufficient, the reference currency is replenished from one or more of the remaining currencies ("electronic values", Figure 9B and [0086] to [0096]).

1.4 This idea is implemented by a plurality of applications (or "apps") on the card; one for each of the electronic values, and one for the utility electronic value.

Figure 4 shows electronic value apps A-1 to A-N, and a utility electronic value app UA (feature 8). Each electronic value app A-i includes storage areas 40-i, 42-i, 44-i for storing the balance of currency i, an encryption key for UA, and programs for communicating with UA and for updating the balance of currency i ([0040] to [0043] - features 1 and 9). The utility electronic value app UA includes storage areas 40U, 42U, 44U for storing the balance of the utility electronic value, encryption keys for each of A-1 to A-N, and programs for communicating with A-1 to A-N and for updating the balance of the utility electronic value ([0044] to [0047] - feature 11).

T 1790/17 - Not an invention under Article 52(2)

Key points

• The Board adds a headnote about the purpose of oral proceedings in ex parte cases, but I focus on the refusal under Art.52(2).
•  “ The Board agrees with the examining division's conclusion that claim 1 is so abstract that it encompasses entirely non-technical subject-matter excluded under Article 52(2) and (3) EPC.”
• “The claim essentially defines a method for collecting consumer feedback on the use of a product. This feedback is used to redesign the product such that it is better adapted to meet consumer needs.”
• “For that reason the Board does not agree with the appellant that step v) is technical. The determined parameters encompass non-technical data and, thus, cannot imply a technical effect in the sense of points 88 and 94 of G 1/19 as argued by the appellant.”
• “Accordingly, claim 1 is not an invention under Article 52(2) EPC.”
• As a comment, the Board does not expressly identify which one of the items listed under Article 52(2) applies or whether the Board relies on the 'in particular' phrase in the opening clause of Article 52(2) EPC (in other words, not so much on the non-exhaustive list of Art.52(2) but on the requirement of 'an invention' in Article 52(1). 

Headnote

The purpose of the oral proceedings for the appellant is to better explain his case and for the Board to understand and clarify points which, perhaps, up to that point were not sufficiently clear. This is particularly relevant in ex parte cases where besides the applicant/appellant no other party is involved. If amendments resulting from such discussions were not possible, oral proceedings would be pointless. The new [substantially amended] auxiliary request was filed as a direct reaction following the exchange of arguments in the oral proceedings and addressing the objections and concerns the Board had. Furthermore, this request overcame the grounds on which the appealed decision was based. The Board considers the filing of such a request is justified by exceptional circumstances and therefore admits it into the proceedings. (See point 7 of the reasons)

T 1790/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t171790eu1.html

VIII. Claim 1 of the main request reads:

"A method for redesigning one or more product or process parameters of a first manufactured article, in order to provide different product or process parameters of a second, transformed, manufactured article, wherein the method comprises the steps of:

i) associating a unique identifier with individual first manufactured articles, or with groups of first manufactured articles;

ii) capturing and recording product data and/or process data relating to the first manufactured articles;

iii) soliciting and recording consumer feedback relating to in use performance of the first manufactured articles;

iv) correlating consumer feedback with product data and/or process data of a specific, individual, first manufactured article by means of the unique identifier;

v) determining different product or process parameters for a second manufactured article; and

vi) applying one or more different product or process parameters to the first manufactured articles to transform them into second manufactured articles, the second manufactured articles being better adapted to meet consumer needs than the first manufactured article."

Reasons for the Decision

The invention

1. The invention relates to a method for redesigning product or process parameters of a manufactured article (e.g. diapers) based on consumer feedback relating to the article's performance in use (see paragraphs [0005] to [0007] of the published application).

2. Claim 1 of the auxiliary request further specifies that a controller determines the redesigned process parameters and, based thereon, adjusts manufacturing parameters of a converting apparatus (assembly line) in order to produce the second articles ([0015]).

T 0014/17 - The CPA for product claims

 Key points

• How to select the closest prior art, in particular for product claims?
• “A central consideration in selecting the closest prior art is that it must be directed to the same purpose or effect as the invention. If this purpose is not explicitly set out or cannot be inferred from the claims, the question to be answered is what, in the light of the application or patent as a whole, is to be achieved by the claimed invention.”
• Claim 2 is directed to “A water soluble package comprising a polymeric film, the polymeric film comprising a polymeric backbone derived from a polymer which is ...”
• The opponent argued that for the selection of the CPA, it was important that “Claim 2 did not require the package to contain a composition, such as a rinsing composition. Nor did it specify that the package had to be used in a specific manner, for example exposing it to anionic/non-ionic surfactants. D1, disclosing a package having a composition more similar to the claimed one [than D2], and more likely to have similar dissolution properties, should have been selected as the closest prior art.”
• The Board: “As decided by the opposition division, D2 is the closest prior art. It is the only document addressing, in the same way as the patent in suit, the problem of providing a package which delays the release of its content during a wash cycle and in particular which releases a fabric softener during the rinse phase of a washing process”

T 0014/17
https://www.epo.org/law-practice/case-law-appeals/recent/t170014eu1.html

3. Inventive step

3.1 As decided by the opposition division, D2 is the closest prior art. It is the only document addressing, in the same way as the patent in suit, the problem of providing a package which delays the release of its content during a wash cycle and in particular which releases a fabric softener during the rinse phase of a washing process: see page 2, lines 19 to 24 and 47 to 51, and page 3, lines 3 to 8.

3.2 The respondent [opponent] argued that the choice of D2 as the closest prior art was wrong, because the selection took into account "the problem allegedly solved by the opposed patent as a whole" rather than the product of claim 2 as such. Claim 2 did not require the package to contain a composition, such as a rinsing composition. Nor did it specify that the package had to be used in a specific manner, for example exposing it to anionic/non-ionic surfactants. D1, disclosing a package having a composition more similar to the claimed one, and more likely to have similar dissolution properties, should have been selected as the closest prior art.

3.3 This argument is not convincing. A central consideration in selecting the closest prior art is that it must be directed to the same purpose or effect as the invention. If this purpose is not explicitly set out or cannot be inferred from the claims, the question to be answered is what, in the light of the application or patent as a whole, is to be achieved by the claimed invention.

3.4 Reading the patent in suit, it is immediately apparent that the purpose of the invention is to provide a package suitable to deliver a fabric softener during a washing process: see paragraphs [0002] to [0004] and [0035] to [0036]. Furthermore, the fabric softener is to be delivered only during the rinse cycle of the washing process: see paragraphs [0038] to [0041] and [0048]. This concept is reiterated consistently in other parts of the patent. It is also reflected in the idea of using a film dissolving more easily in water, which is used for rinsing, than in solutions of anionic/non-ionic surfactants, which are used for washing. The fact that the claimed package could dissolve in water before the addition of a surfactant is irrelevant. This is because the washing process can be carried out in a manner that prevents this from happening, e.g. in a washing machine programmed so that the package is added during the washing cycle, when detergent is present.

3.5 D1 does not aim at this purpose. It discloses a dispenser comprising a pouch containing a powder detergent: see column 1, lines 11 to 19, and claim 1. The dispenser is intended to release the detergent during the washing cycle rather than to delay its release until a rinse cycle. Thus, D1 is not the closest prior art. Similar considerations apply to D3. Insofar as the films of D3 are used in washing methods, they are intended to deliver detergents: see page 3, lines 1 to 3.

T 1174/18 - Equitable and causal link under Rule 103

 Key points

• Rule 103 again, but this time good old Rule 103(1)(a): substantial procedural violation.
• The alleged substantial procedural violation is that the OD did not admit certain auxiliary requests. However, the patentee as appellant also maintained the claims as granted as main request, before the OD and before the Board, and defended novelty of the claims as granted in appeal.
• The Board does not grant the reimbursement of the appeal fee, because of the requirement that the reimbursement must be 'equitable' under Rule 103(1)(a): “Regardless of whether the behaviour of the opposition division may have constituted a procedural violation, the board notes that it did not affect the proceedings before the opposition division as a whole but only the auxiliary requests. To have the opposition division's decision on the main request reviewed, the patent proprietor had to file an appeal anyway.”.
• “For the reimbursement of the appeal fee to be equitable, there has to be not only a substantial procedural violation but also a causal link between this procedural violation and the necessity to file the appeal (see "Case Law", V.A.9.7.1, for instance, decision T 792/12, Reasons, point 10.3.1).  .... In this case, there is no such causal link. The patent proprietor's appeal is primarily directed at setting aside the first-instance decision refusing their main request that the opposition be rejected. Since this issue is not affected by the alleged procedural violation, a reimbursement of the appeal fee would not be equitable. The board observes that it is indeed true that [-] under these circumstances and in view of the requirement of a causal link set out above [-] the question of whether the reimbursement of the appeal fee is equitable may depend on the extent of the appellant's appeal.”

T 1174/18

https://www.epo.org/law-practice/case-law-appeals/recent/t181174eu1.html

Consequently, auxiliary request 7 meets the requirements of Article 123(2) EPC.

9. Remittal to the opposition division

The remittal of the case to the opposition division is within the discretion of the board according to Article 111(1) EPC.

The subject-matter of claims 1 and 8 of auxiliary request 7 has not been examined by the opposition division as to its patentability. The amendments that led to these claims are such that the interpretation of the claims is bound to change. In particular, it is questionable whether the claims cover an ID document in which the security material covers the entire image area. This may raise new questions, such as whether document D3 is still the most relevant piece of prior art for the examination of novelty and/or inventive step. Moreover, none of the parties had submitted substantiated arguments in favour of or against the patentability of the claimed subject-matter of auxiliary request 7 prior to the oral proceedings before the board. Therefore, in accordance with Article 11 RPBA 2020, special reasons present themselves for remitting the case to the opposition division for further prosecution.

T 0179/18 - Bonus effect and secondary indicators

Key points

• The Board finds claim 1 to be obvious over D8 in combination with D5. The Board then turns to the further arguments of patentee/ appellant.
• “ The appellant also submitted that the following secondary indicia show the presence of an inventive step: (a) the existence of a technical prejudice in the field of concrete floors against the claimed invention; (b) the wide commercial success of the invention showing a long-felt need; (c) the efforts of market competitors to imitate the invention and (d) the existence of a surprising technical effect achieved by the invention.”
• “ The Board is not persuaded that any of the secondary indicia claimed by the appellant confers inventiveness on the subject matter of claim 1. Secondary indicia such as the satisfaction of a long-felt need, the overcoming of a prejudice in the professional world, or economic success, are auxiliary considerations in assessing inventive step. However, in this case, application of the problem-solution approach has led to the clear result that the subject-matter of claim 1 does not involve an inventive step.
• “5.4.3 Nevertheless, for the sake of completeness, the Board would comment as follows: ... The appellant also cited unexpected effects [surprising technical effect] achieved with the invention as evidenced by Annexes 15, 16 and 23. They argued that in addition to the solution to the above discussed objective technical problem the combination of features of claim 1 produced the surprising technical effects of significantly improving the transfer of load from one slab to another during a vehicle's crossing over the joint and of reducing the vibrations. According to established case law [CLBA I.D.10.8] an additional effect achieved inevitably by the skilled person as the result of an obvious measure without any effort on his part simply represents a bonus effect. The improved load transfer and the reduction of vibrations are bonus effects inherently resulting from the obvious configuration of the vertical stems with an undulated top edge. Therefore these effects do not confer inventiveness on the obvious solution.”
• As a comment, it is curious to see the term 'technical effect'  under the secondary indicia. However, GL G-VII, 10.2 indeed mentions in the chapter "Secondary indicators"  that "An unexpected technical effect may be regarded as an indication of inventive step." 
• As a further comment, it is not clear to me why not all technical effects were included in the formulation of the objective technical problem, unless perhaps the advantages of improved load transfer and reduced vibrations can not be derived from the application as filed.

T 0179/18
https://www.epo.org/law-practice/case-law-appeals/recent/t180179eu1.html

5.4 Secondary indicia claimed by the appellant

5.4.1 The appellant also submitted that the following secondary indicia show the presence of an inventive step:

(a) the existence of a technical prejudice in the field of concrete floors against the claimed invention;

(b) the wide commercial success of the invention showing a long-felt need;

(c) the efforts of market competitors to imitate the invention and

(d) the existence of a surprising technical effect achieved by the invention.

5.4.2 The Board is not persuaded that any of the secondary indicia claimed by the appellant confers inventiveness on the subject matter of claim 1. Secondary indicia such as the satisfaction of a long-felt need, the overcoming of a prejudice in the professional world, or economic success, are auxiliary considerations in assessing inventive step. However, in this case, application of the problem-solution approach has led to the clear result that the subject-matter of claim 1 does not involve an inventive step.

5.4.3 Nevertheless, for the sake of completeness, the Board would comment as follows:

(a) The existence of a technical prejudice (indicium a) indicative for a long-felt need has not been sufficiently proven. The filing date of the patent is only three years after the filing date of the closest prior art document D8, which is not considered a long period indicative of a technical prejudice (see T 0779/02, catchword 2, referred to by the appellant). Annexes 1 to 7, 17 and 19 merely document that it was standard practice to form continuous straight joints where concrete slabs meet each other. It may be true that the provision of rectangular slabs with corresponding straight joints for forming large area floors is obvious for reasons of reduced costs and required technical effort (see e.g. Annex 4, chapter 5.2.2). However, none of the cited references provides a teaching that straight joints were considered the only feasible possibility. The references to cut/sawed joints made by the appellant are not relevant, since in the present case the gap is provided by the profile elements.

Furthermore solutions other than straight joints are commonly known in the prior art. The application of intermeshing profile elements which create an undulated gap as a measure to protect the joint edges from loads resulting from passing vehicles is, in addition to the early teaching of D5, known from various other documents and applied in the art on industrial floors, see for example:

- D2, column 1, lines 44 to 52;

- D6, column 1, lines 42 to 49;

- D9, page 1 and page 5, second paragraph;

- D12, page 2 lines 22 to 26.

(b) Commercial success (indicium b) alone is in principle not to be regarded as indicative of inventive step. The following requirements must first be met: a long-felt need must have been fulfilled and the commercial success must result from the technical features of the invention and not from other influences (e.g. selling techniques or advertising). In the present case, in view of the lack of a long-felt need (see above) the submissions made by the appellant are not sufficient to establish that the wide commercial success is only due to the technical features of the floor as claimed.

(c) With respect to indicium (c), the appellant has merely shown that some similarity exists between the claimed invention and competitors' products. However, this does not rule out that these products may have been developed to satisfy new market demands. Moreover, in view of the prior art it is not convincing that this development was only made possible due to the invention disclosed in the patent.

(d) The appellant also cited unexpected effects (indicium d) achieved with the invention as evidenced by Annexes 15, 16 and 23. They argued that in addition to the solution to the above discussed objective technical problem the combination of features of claim 1 produced the surprising technical effects of significantly improving the transfer of load from one slab to another during a vehicle's crossing over the joint and of reducing the vibrations.

According to established case law (cf. Case Law of the Boards of Appeal, 9th edition, 2019, I.D.10.8) an additional effect achieved inevitably by the skilled person as the result of an obvious measure without any effort on his part simply represents a bonus effect.

The improved load transfer and the reduction of vibrations are bonus effects inherently resulting from the obvious configuration of the vertical stems with an undulated top edge. Therefore these effects do not confer inventiveness on the obvious solution.

J 1/20 - Removal of cause of non-compliance

 Key points

• The Legal Board expressly abandons the established line of case law, according to which the date of removal of the cause of non-compliance under Rule 136 EPC is determined with reference to “the date on which the person responsible for the application is made aware or ought to have become aware of the fact that a time limit has not been observed.”
• “In the appealed decision the Receiving Section followed the approach developed in a substantial body of case law of the Boards of Appeal, according to which, for determining admissibility of a request for re-establishment, the relevant date is that on which the responsible person ought to have noticed the error, had all due care been taken”
• “The line of jurisprudence requiring that "removal" under Rule 136 EPC is assessed on account of the due care applied by the responsible person, essentially relies on the consideration that due care is a permanent obligation, which must be exercised not only at the moment when the time limit has not been observed, but also subsequently”
• “The Board doubts that this approach correctly reflects the requirements for re-establishment of rights laid down in Article 122 and Rule 136 EPC. Whereas due care may be regarded as a permanent obligation of a party to the proceedings in general, no legal basis is apparent for applying the due-care requirement in assessing the admissibility of a request for re-establishment.”
• “the established approach is not based on the wording of the EPC. The admissibility criteria in accordance with Rule 136 EPC (see point 1. above) are of a purely formal nature and are clearly distinct from the substantive requirements established by Article 122(1) EPC for allowability”
• “Second, as a consequence of this approach, due care is assessed in the context of the circumstances related to the removal of the cause of non-compliance [], rather than of those concerning the missed time limit ” [Note, this sentence appears to refer to the admissibility of the RE request]
• “However, Article 122 EPC refers to due care only in respect of missing a time limit. The removal of the cause of non-compliance is distinct from missing a time limit vis-à-vis the EPO. ”
• “Based on this analysis the Legal Board considers that the established approach does not lead to a correct determination of the date of removal. Instead the Legal Board deems that, for the purposes of establishing the admissibility of a request for re-establishment of rights under Rule 136 EPC, the legal due-care criterion must not be relied on when determining "removal".
• “In the Board's view, removal of the cause of non-compliance with the period is a purely factual criterion. Removal occurs on the date on which the person responsible for the application/patent (normally the authorised representative) becomes aware of an error. If a loss-of-rights communication is served there is (i) a presumption that removal occurs on the date of receipt of such communication and (ii) an obligation for the recipient not to ignore it, and to take action. This presumption is, however, rebuttable, in the sense that it is valid unless, due to exceptional circumstances, the cause for non-compliance persisted. Taking into account this exception and although it substitutes real facts, such a presumption is not unfair to the parties”
• As a comment, the presumption suggests that the burden of proof is initially on the EPO to show that the RE request is late-filed, not on the requester to show that it is timely. Only if the presumption applies, the burden of proof is shifted to the requester. The obligation that the Board appears to be referring to is not entirely clear to me, perhaps it is simply the two-month period of Rule 136 but then logically there is no obligation if the exception applies that " the cause for non-compliance persisted".

Headnote


1. The established approach of applying the due-care criterion to the question of removal of the cause of non-compliance under Rule 136 EPC leads to an additional admissibility requirement, by expanding the scope of the substantive due-care criterion, which has no basis in the EPC.

2. Removal of the cause of non-compliance is a question of fact which occurs on the date on which the person responsible for the application or patent actually became aware of an error (actual knowledge), rather than when this person ought to have noticed the error (presumption of knowledge).

3. Pursuant to Article 122(1) EPC, if failure to observe a time limit is due to an error of fact, the due-care criterion is to be assessed only in the context of the merits of a request for re-establishment of rights.

4. The same applies if failure to observe a time limit is based on an error of law. Thus, the due-care criterion is to be assessed only in the context of the merits of the request and removal of the cause of non-compliance occurs when the responsible person actually became aware of the error of law.

J 1/20 - J 0001/20

https://www.epo.org/law-practice/case-law-appeals/recent/j200001eu1.html

T 0966/18 - Suitable, plausible, credible

 Key points

• A pharma case about plausibility, earlier reported by IPKat
• “At the heart of the present case lies the question whether or not the skilled person, having regard to the disclosure of the patent and the common general knowledge at the relevant date of the application, would have considered that the compounds referred to in the claim were suitable to achieve the therapeutical effect (see decision T 609/02, point 9). Or, in other words, whether it was plausible (or, in yet other words, whether it was credible) that the therapeutic effect could be achieved by the claimed composition.” emphasis added
• “ In conclusion, the data in the patent support the hypothesis developed in the patent that active and passive immunisation targeting alpha-synuclein can reduce synuclein inclusion bodies in the brain. Together with the comprehensive body of knowledge in the prior art (see points 13. to 29. above), the medical use of claim 1 is thus plausible.”
• “The board concludes that the use of compositions comprising alpha-synuclein or an immunogenic fragment of it, or an antibody to alpha-synuclein or to an immunogenic fragment of it, for therapy of Lewy body diseases is also supported by later published evidence in which such therapies were and still are developed.”

T 0966/18
https://www.epo.org/law-practice/case-law-appeals/recent/t180966eu1.html

decision text omitted

Admissibility of evidence

Today a brief analysis of the right to present evidence in court proceedings under Article 6 ECHR, from a recent article by Léon Dijkman.

“34. When it comes to evidence, the ECtHR has held that Art. 6 ECHR does not, as such, explicitly guarantee the right to have specific evidence admitted by a court.⁹⁵ However, any restriction on a party’s ability to produce evidence must be consistent with the requirements of a fair trial.⁹⁶ Key elements to take into account when assessing the consistency of such restrictions with the requirements of a fair trial is the relevance and importance of the refused evidence to the outcome of the proceedings at hand. Evidence that is not relevant to the proceedings or, if admitted, would be unlikely to influence their outcome may normally be refused without violating Art. 6 ECHR.⁹⁷ On the other hand, if the evidence is essential for a party to successfully defend their position, a refusal to allow it might be contrary to Art. 6 ECHR.⁹⁸ Thus, the more important the evidence is for a party’s case, the more stringent will be the requirements for nonetheless refusing it in the proceedings.”

Footnotes

95 See, eg, ECtHR, 12 June 2012, App No 19673/03 Gryaznov v Russia [57].

96 ibid. In Gryaznov, the ECtHR found a violation of art 6 ECHR because the national court refused to admit testimony from the ‘only witness capable of supporting the applicant’s allegations’, which ‘inevitably led to the finding that his claims were unsubstantiated’ (at [60]). Conversely, in ECtHR, 23 October 1996, App No 17748/91 Ankerl v Switzerland [38], no violation was found because the ECtHR did not see how the evidence ‘could have influenced the outcome of the proceedings’.

97 Settem [Ola Johan Settem, Applications of the ‘Fair Hearing’ Norm in ECHR Article 6(1) to Civil Proceedings (Springer 2016)] 341.

98 See, eg, ECtHR, 15 March 2016, App No 39966/09 Gillissen v Netherlands [51, 56] (applicant’s case ‘hinged on the factual allegation that an agreement ... had been reached between him and Mr. G.’ so the refusal by the Central Appeal Tribunal to hear Mr. G. constituted a violation of art 6 ECHR); ECtHR, 10 October 2013, App No 15853/08 Voloshyin v Ukraine [35] (by ignoring points ‘pertinent for the proper consideration of the case’, courts fell short of their obligations under art 6 ECHR); ECtHR, 5 February 2009, App No 22330/05 Olujic v Croatia [81, 85] (refusal for applicant to hear witnesses that ‘were relevant to his case and likely to contribute to the aims of his defence’ considered ‘incompatible with the guarantees of a fair trial enshrined in Article 6’); ECtHR, 1 December 2005, App No 33914/02 Skorobogatova v Russia [53] (no violation of art 6 ECHR where ‘the applicant was able to introduce all necessary arguments in defence of her interests’).

Léon Dijkman,  Does the Injunction Gap Violate Implementers’ Fair Trial Rights Under the ECHR?, GRUR International, 70(3), 2021, 215–227, doi: 10.1093/grurint/ikaa177

T 2702/18 - Prior use and tacit secrecy

 Key points

• The Board concludes, in the translated headnote, that a relationship of confidentiality between suppliers and customers in the vehicle industry is the be assumed as customary, which prohibits as a matter of commercial practice, suppliers from sharing with third parties any trade secrets of customers that they get access to in the framework of cooperation with these customers. However, assuming a more extensive tacit secrecy agreement based on the facts of the case assumes that both parties had a corresponding wish to be legally bound and that they implicitly express that the joint development would not be made public, as long as a common interest in secrecy existed (thereby following T830/90).
• I think a lot can be said about this headnote and the board divulging or promulgating this commercial practice, but that is perhaps something for the future. 
• In the case at hand, the opposition was based on prior use. It seems* (from the decision of the Board) that the invention was made by the supplier and shared with the customer and that the opposed patent was granted from a patent application filed by the customer. The Board concludes that the supplier was not bound by secrecy to the customer and that, therefore, there was a public prior use.
• As a comment, I'm not sure if the Board's reasoning is conclusive. Typically, the inventor itself uses the invention prior to the filing of the patent (application e.g. building prototype, lab experiments) and in principle, an inventor is not bound by secrecy (let's assume the simple case of a self-employed inventor in his/her/their garage; mutatis mutandis for engineers and scientists working for a company). Typically these activities of the inventor itself do not constitute a novelty destroying public prior use (in my view). In the case at hand, the supplier (seemingly*) developed the invention and shared the inventive concept with the customer i.e. disclosed the invention to the prospective customer. As to whether that disclosure constitutes prior art, the question appears to be whether the customer was bound by a (tacit) secrecy agreement. 
• * Note; I'm not opining on entitlement in any way; the marked wording tries to summarize para. 3.1.2 and 3.1.3 of the decision. 
• "Die für ACE [=supplier] geltende Geheimhaltungsverpflichtung aus dem Handelsbrauch betreffend die fremden Betriebsgeheimnisse von Dynapac [=customer] erstreckt sich daher nicht auf beanspruchte Merkmale der vorliegend geltend gemachten Erfindung. Diese waren vielmehr... eigenes Wissen von ACE [ supplier]."
  
  
• Headnote 3 in translation is: "The assumption of an actual presumption that the partners in a joint further development in the field of vehicle construction, in case of doubt, want to undertake binding mutual secrecy up to the publication of the developed product, presupposes as connecting facts at least the determination of the awareness that it is a joint development of both partner acts, and that both sides will be interested in secrecy."

• As to whether the decision involves a review of facts: in translation: “ 3.3.1 Since the board does not question the facts established by the opposition division, but only the legal conclusions drawn from them, the limitation of the assessment of evidence, which is, according to the case-law [*] of the board, equivalent to that of discretionary decisions (as laid down by the Enlarged Board of Appeal in G 7/93, reasons no. 2.6), not decisive in the present case. The principles set out in decision T 1418/17 are therefore not relevant here and the delimitation from decision T 1604/16 does not need to be discussed in more detail. 3.3.2 In summary, in the present case it is not a question of reviewing the evidence assessment by the opposition division and, if necessary, replacing it with another evidence assessment carried out by the board, but rather of drawing the correct legal conclusions from the facts of prior use established by the evidence assessment. The facts ascertained by the opposition division in this respect were also not called into question by the parties involved in the appeal proceedings, so that a review of the assessment of the evidence does not appear to be necessary for this reason either.”
• As a comment, it is not clear to me if the above means that the point if submitted late in the appeal proceedings, could not have been held inadmissible under Article 114(2) EPC.
• [*] The Board does not cite any case law in particular, G7/93 r.2.6 is not about the assessment of evidence.

T 2702/18 

https://www.epo.org/law-practice/case-law-appeals/recent/t182702du1.html

Entscheidungsgründe

Hauptantrag

1. Der Hauptantrag entspricht der Fassung des Streitpatents, die im Einspruchsverfahren als ,,Hilfsantrag 1" bezeichnet wurde und gemäß der angegriffenen Entscheidung der Einspruchsabteilung den Erfordernissen des EPÜ genügte.

Vorbenutzung

2. Die Beschwerdeführerin machte bereits im Einspruchsverfahren die folgende offenkundige Vorbenutzung geltend:

2.1 Die Firma Dynapac GmbH hatte sich seinerzeit an die Firma ACE Stoßdämpfer GmbH gewandt und um ein Angebot für einen hydraulischen Stoßdämpfer gebeten. Ein Vertriebsmitarbeiter von ACE besuchte daraufhin am 20.4.2011 die Produktionsstätten von Dynapac und stellte fest, dass das von Dynapac angefragte Produkt nicht wie vorgesehen an dem von Dynapac hergestellten Straßenfertiger verwendet werden kann.

T 0943/17 - Double patenting

 Key points

“3.2 Double patenting - G4/19 : Claim 1 of the present divisional application differs from claim 1 [of the parent application which was discussed in T 871/14] in that a randomizing program performs the selection instead of only providing the randomized selection as an option in the user interface as claimed in the parent application. The present application therefore does not claim the same subject-matter as the parent application and the criteria for double patenting set out in G 4/19 (cf. headnote) are not fulfilled.”

T 0943/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t170943eu1.html

3.2 Double patenting - G4/19

Claim 1 of the present divisional application differs from claim 1 discussed in T 871/14 in that a randomizing program performs the selection instead of only providing the randomized selection as an option in the user interface as claimed in the parent application. The present application therefore does not claim the same subject-matter as the parent application and the criteria for double patenting set out in G 4/19 (cf. headnote) are not fulfilled.

R 0005/19 - Successful petition for review

Key points

• This is the 9th successful petition for review.
• The impugned appeal decision T 2378/13 is set aside.
• The TBA 3.5.02 had - very remarkably - held (in translation) that the opponent as the appellant had submitted with its statement of grounds (in translation) " a variety of different arguments against the inventive step of [operative claim 1]. However, none of these arguments are based on the generally accepted problem-solution approach for assessing inventive step. Consequently, the appellants' allegations concerning the inventive step in writing are disregarded in this decision. During the oral proceedings, before the board, the [opponent/appellant] made attacks using the problem-solution approach, which the board acknowledged." The board found that claim 1 was inventive in view of the considered inventive step attacks.
• The opponent/appellant filed a petition for review.
• The Enlarged Board finds that the underlined part is a surprise decision of the TBA. 
• “Damit beruht die Entscheidung auf einem Grund, zu welchem sich die Einsprechende vor deren Kenntnisnahme nicht äußern konnte. Der Grund lautet: Ausführungen ohne Verwendung des Aufgabe-Lösungs-Ansatzes können nicht berücksichtigt werden. ... Der neue Grund war nicht vorhersehbar, da die Beschwerdekammer ihn - wie oben ausgeführt - nie genannt hatte. Die Kammer wäre verpflichtet gewesen, der Antragstellerin vor Erlass der Entscheidung Gelegenheit zur Stellungnahme zu dem Grund zu geben.”
The Enlarged Board does not expressly comment on the merits of the TBA's reasoning. The Enlarged Board notes however that its preliminary opinion included the preliminary view that the reason could not have been foreseen, in particular, because it had never been invoked by a Board (" insbesondere weil er noch nie von einer Kammer herangezogen worden sei")



• Although not discussed at all in the present decision, and not explained in T 2378/13 at all, I personally do not exclude that the TBA in T2378/13 was of the view that the opponent was obliged to choose one and only one document as the closest prior art for inventive step and that the Board was of the view that holding the inventive step attacks inadmissible was a proper sanction for the opponent not making such a choice for one and only one CPA document.  But let's see what the TBA does after the remittal. 

• An important remark about the nature of oral proceedings before the Board: “The respondent took the view that the opponent's representative should have expressly repeated written submissions - that is, the one on inventive step in the grounds of appeal - in the oral proceedings so that they could be taken into account in the board's decision. After he had not done that, an implicit waiver of its consideration can be assumed. This can not be followed. The view that written submissions would have to be repeated at the oral hearing in order to be taken into account would contradict the principle of the written procedure already mentioned in the notice of summons of the Enlarged Board of Appeal mentioned above in the relevant part. This principle arises from the procedural rules for appeal proceedings in the EPC, in particular its Article 108 and Rule 99 (3) in conjunction with Rule 35 (1) and Rule 50 (3), as well as the Rules of Procedure of the Boards of Appeal (VOBK), in particular Articles 12 and 13 thereof 13. Oral proceedings in accordance with Article 15 RPBA usually conclude the procedure.”
• Hence, there is generally no obligation to expressly repeat all arguments made in writing.
• As to the issue of possible waiver of arguments by not repeating them during the hearing: “With regard to the defendant's assumption of an implicit (tacit, implied) waiver of written submissions due to the fact that it was not mentioned at the hearing, strict requirements would have to be made in view of the principle of the written form of the proceedings. An implicit waiver would be conceivable, for example, if statements in writing or during the oral hearing contradict previous written statements. In the event of doubt, it would then be incumbent on the Board to ask questions to clarify which submissions should currently be based on the case. However, there are no indications for this.” 
• Hence, not repeating arguments in the oral proceedings is generally no implicit waiver of arguments presented in the written submissions in appeal.
• However, procedurally, any violation of this rule by a Board of Appeal would require a petition for review and there is as far as I know no settled case-law of the EBA that the petition will be successful in such cases.

The successful petitions are now: R 5/19 , R 4/17 , R 3/15, R 2/14 , R 15/11, R 3/10, R 7/09 , R 21/11 , R 16/13.

R 5/19 

https://www.epo.org/law-practice/case-law-appeals/recent/r190005du1.html

Translation

Facts and submissions

[The following statements are taken verbatim from Part A of the notice of summons.]

I. The opponent's (applicant) request for review - submitted by a professional representative - is directed against the decision of the Technical Board of Appeal 3.5.02 in appeal case T 2378/13. In this case, the opponent filed an appeal against the interlocutory decision of the opposition division, with which it maintained European patent No. 2 091 029 in amended form on the basis of the main request at the time. The opponent had requested that the contested decision be set aside and the European patent revoked. With the decision under review, the Board of Appeal overturned the decision of the opposition division. She referred the matter back to the opposition division with the order that maintains the patent as amended on the basis of the claims of the new main request of April 1, 2019 and a description that has yet to be adapted.

The decision was announced at the oral hearing on April 1, 2019, and the written decision with reasons for the decision was posted to the parties on April 24, 2019.

The name of the invention is:

Hazard detection with the inclusion of a temperature measuring device integrated in a microcontroller.

T 1724/16 - Article 133(2) and respondent

 Key points

• PCT application filed in 2000, Notice of opposition in 2013, so again the opposition appeal lasted after the expiry of the patent term, but that is not the focus of the present post.
• The OD rejected the opposition, the opponent appeals, the patentee does not respond. 
• “The proprietor did not reply to the statement of grounds of appeal. In a letter dated 17 August 2020 the proprietor's representative stated the following: "We hereby resign representation of this patent". In a communication dated 16 October 2020, duly notified to the proprietor and to the opponent's representative, the Board pointed out that the representation requirements of Article 133(2) EPC were no longer met in respect of the proprietor in the current appeal proceedings, and that until this deficiency was remedied, the proprietor could not take any valid procedural steps. The proprietor did not reply to this communication or to the Board's communication under Article 15(1) RPBA 2020.”
• The appeal is dismissed, i.e. the Board finds that claim 1 is inventive even without any comments or defence from patentee in appeal.
• This shows that lack of compliance of Article 133(2) EPC for the patentee as respondent does not affect the processing of the appeal as such, in particular, is not a ground for allowing the appeal or even revoking the patent.

T 1724/16 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t161724eu1.html

IX. The proprietor did not reply to the statement of grounds of appeal. In a letter dated 17 August 2020 the proprietor's representative stated the following: "We hereby resign representation of this patent". In a communication dated 16 October 2020, duly notified to the proprietor and to the opponent's representative, the Board pointed out that the representation requirements of Article 133(2) EPC were no longer met in respect of the proprietor in the current appeal proceedings, and that until this deficiency was remedied, the proprietor could not take any valid procedural steps. The proprietor did not reply to this communication or to the Board's communication under Article 15(1) RPBA 2020.

T 2349/17 - Article 133(2) and party as of right

 Key points

• The opponent appeals. Opponent 2 (party to the proceedings as of right), did not make any submissions or filed any requests during the appeal proceedings.
• “[The] Board indicated to the parties that it had been informed by the former representatives of opponent 2 that they were no longer mandated in this matter and pointed to the stipulations of Article 133 (2) and (3) EPC regarding the representation of parties. No reaction from opponent 2 to that communication took place.” No one appeared for Opponent 2 at the oral proceedings.
• The Board finds claim 1 to be not inventive and revokes the patent.
• This case illustrates that there is no particular deficiency if a party as of right is no longer represented in the course of the appeal proceedings thereby no longer meeting the requirements of Article 133(2) EPC.
• Incidentally,  PCT application filed in 2002, Notice of opposition filed in 2009, this is the second appeal after remittal.

T 2349/17 -  

https://www.epo.org/law-practice/case-law-appeals/recent/t172349eu1.html

XI. With letter of 29 April 2021, the Board indicated to the parties that it had been informed by the former representatives of opponent 2 that they were no longer mandated in this matter and pointed to the stipulations of Article 133 (2) and (3) EPC regarding the representation of parties. No reaction from opponent 2 to that communication took place.

XII. Oral proceedings were held in Munich on 6 July 2021 in the presence of the appellant and the respondent. Although duly summoned, no one appeared for the party as of right. At the beginning of the oral proceedings the respondent withdrew its objection that the appeal be deemed not to have been filed.

T 1111/16 - OD did nothing for 8 years; remittal

 Key points

• This is an opposition case for a patent with filing date in 2000 (Euro-PCT application). Granted in 2005. The Board decides to remit the case (in April 2021). So after more than 15 years opposition, the proceedings will continue.
• Oppositions filed in 2006. Reply patentee in 2007. Next action: request for transfer/name change in 2014. Summons in 2015. OD revokes the patent: claims as granted not novel (for one of the independent claims), AR-1 lacks basis under Article 123(2). Patentee appeals. 
• The Boards finds the Auxiliary Request, filed with the appeal, to have basis in the application as filed, to be sufficiently disclosed and novel.
• Then, novelty of the other independent claims is to be examined, as well as inventive step.
• The Board decides to remit the case.
• “Die Kammer stellte zudem fest, dass die Diskussion der Neuheit in Hinblick auf die Ansprüche 16 und 24 einen völlig anderen Gegenstand und andere Dokumente betrifft als die obige Diskussion der Neuheit von Anspruch 1.”
• “Das Beschwerdeverfahren wurde daher unter Geltung der Verfahrensordnung der Beschwerdekammern 2007 begonnen und auf den in der angefochtenen Entscheidung diskutierten Gegenstand fokussiert. Dieses Vorgehen entspricht dem auf Überprüfung gerichteten Zweck des verwaltungsgerichtlichen Einspruchsbeschwerde-verfahrens, der von der neuen Verfahrensordnung noch weiter in den Vordergrund gestellt wird”
• “Auch wenn wie im vorliegenden Fall die Einsprüche gegen das Patent erst mehr als 8 Jahre nach Eingang der Einsprüche von der Einspruchsabteilung bearbeitet wurde und damit das Einspruchsverfahren unüblich lange dauerte, spricht dies nicht zwingend gegen die Zurückverweisung an die Einspruchsabteilung zur weiteren Entscheidung.”

T 1111/16 -

https://www.epo.org/law-practice/case-law-appeals/recent/t161111du1.html

11. Zurückverweisung an die Einspruchsabteilung

Gemäß Artikel 111(1) EPÜ kann die Beschwerdekammer entweder im Rahmen der Zuständigkeit des Organs tätig werden, das die angefochtene Entscheidung erlassen hat, oder die Angelegenheit zur weiteren Entscheidung an dieses Organ zurückverweisen.

In der Mitteilung nach Artikel 15(1) VOBK 2007 vom 9. Juli 2019 wies die Kammer verfahrensleitend darauf hin, dass die Beurteilung der Neuheit der unabhängigen Ansprüche 16 (Verfahren) und 24 (Vorrichtung) sowie der erfinderischen Tätigkeit nicht Gegenstand der angefochtenen Entscheidung und im Rahmen des Einspruchsverfahrens nicht abschließend erfolgt ist.

Die Kammer stellte zudem fest, dass die Diskussion der Neuheit in Hinblick auf die Ansprüche 16 und 24 einen völlig anderen Gegenstand und andere Dokumente betrifft als die obige Diskussion der Neuheit von Anspruch 1. Insbesondere sind andere Merkmale streitig, wie beispielsweise die Ausbildung eines longitudinalen Magnetfelds anstelle der in Hinblick auf den Schichtaufbau wichtigen Punkte der chemischen Zusammensetzung der Schichten und ihrer inhärenten Eigenschaften.

Da das Beschwerdeverfahren in erster Linie der Überprüfung der erstinstanzlichen Entscheidung dient, ist es gängige Praxis der Kammern, die Angelegenheit zurückzuverweisen, wenn wesentliche Fragen zur Patentierbarkeit des beanspruchten Gegenstands von der erstinstanzlichen Abteilung noch nicht geprüft und entschieden worden sind (Rechtsprechung der Beschwerdekammern, a.a.O., Kapitel V.A.7.4).

Das Beschwerdeverfahren wurde daher unter Geltung der Verfahrensordnung der Beschwerdekammern 2007 begonnen und auf den in der angefochtenen Entscheidung diskutierten Gegenstand fokussiert. Dieses Vorgehen entspricht dem auf Überprüfung gerichteten Zweck des verwaltungsgerichtlichen Einspruchsbeschwerde-verfahrens, der von der neuen Verfahrensordnung noch weiter in den Vordergrund gestellt wird (vgl. Artikel 12(2) VOBK 2020).

Diese gängige Praxis wird durch die neue Verfahrensordnung nicht ausgeschlossen. Gemäß Artikel 11 VOBK 2020 sind zwar besondere Gründe für eine Zurückverweisung erforderlich. Diese Gründe sind gemäß dem Wortlaut des Artikels 11 VOBK 2020 aber nicht darauf beschränkt, dass ein Verfahrensfehler seitens der Einspruchsabteilung vorliegt. Insbesondere kann auch berücksichtigt werden, ob die Kammer alle relevanten Fragen mit angemessenem Aufwand entscheiden kann (vgl. Tabelle zu den Änderungen der VOBK mit Erläuterungen, Artikel 11, vom 3. Juli 2019), was vorliegend nicht der Fall ist.

Auch wenn wie im vorliegenden Fall die Einsprüche gegen das Patent erst mehr als 8 Jahre nach Eingang der Einsprüche von der Einspruchsabteilung bearbeitet wurde und damit das Einspruchsverfahren unüblich lange dauerte, spricht dies nicht zwingend gegen die Zurückverweisung an die Einspruchsabteilung zur weiteren Entscheidung.

Die Kammer vermag auch der Auffassung der Beschwerdegegnerin 1 nicht zu folgen, dass es sonst in der Hand der Beschwerdeführerin liege, das Verfahren beliebig zu verlängern. Dies ist weder unter der Geltung der alten noch der neuen Verfahrensordnung der Fall. Es handelt sich vielmehr um eine Ermessensentscheidung der Kammer unter Abwägung der hier diskutierten Argumente.

In Anbetracht der vorliegenden besonderen Gründe nach Artikel 11 VOBK 2020 ist eine Zurückverweisung der Angelegenheit an die Einspruchsabteilung in diesem Fall daher gerechtfertigt.

T 1836/18 - Inventive step of device claim

Key points

• Claim 1 is directed to a device (1) for on-site preparation and application of a bleach and/or disinfectant.
• The Board, regarding inventive step: “The board considers that the problem formulated by the patentee unduly relies on a specific use of a method for controlling the device. Apart from the fact that some of the required use and method features are not defined in claim 1, the problem solved by a device claim should not be based on method and/or use features but on features defining the device as such. The board can therefore not agree that the device of claim 1 solves the problem formulated by the patentee.”

T 1836/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t181836eu1.html 

Decision text omitted.

G 1/19 - Inventive step of computer simulations

Key points

• In this decision 10.03.2021, the Enlarged Board confirmed that the Comvik-approach to the assessment of inventive step is also to be applied to claims directed to computer-implemented simulation methods.
• The Enlarged Board added that “for that assessment it is not a sufficient condition that the simulation is based, in whole or in part, on technical principles underlying the simulated system or process” (headnote 2). This headnote may be somewhat cryptic. 
• The case was remitted back* to the Technical Board of Appeal for a decision on inventive step of the claims at issue. The TBA has issued a preliminary opinion wherein the TBA concludes that the Enlarged Board's answer does not fully decide the case. Hence, the TBA still has to decide on inventive step. The TBA refers in particular to para. 128 of G 1/19 as giving guidance. 
• Therein the Enlarged Board said that in its view, “calculated numerical data reflecting the physical behaviour of a system modelled in a computer usually cannot establish the technical character of an invention in accordance with the COMVIK approach, even if the calculated behaviour adequately reflects the behaviour of a real system underlying the simulation. Only in exceptional cases may such calculated effects be considered implied technical effects (for example, if the potential use of such data is limited to technical purposes...)”
• * = strictly speaking, the appeal case is pending with the TBA during the time that the referral of questions is pending with the EBA, so the EBA's order does not include a remittal.
• I also highlight that the Enlarged Board in r.110 held that “Following the COMVIK approach, models underlying a simulation form constraints (technical or not) which are not technical for the purposes of the simulation itself. However, they may contribute to technicality if they are, for example, a reason for adapting the computer or the way in which the computer operates, or if they contribute to technical effects relating to the results of the simulation.”
  
  
• In AR-4, the simulation method is claimed as part of a design method. The TBA notes that the description makes clear that the step of revising the designed model in dependence upon the simulated movement of pedestrians through the modelled building structure, can be done by a human designer. Therefore, the design step feature is not technical and does not contribute to inventive step, in view of para. 143 and 144 of G 1/19, according to the preliminary opinion. For this it is also relevant that data representing a model of a building structure appears to have no implied technical use that can be the basis for an implied technical effect, referring to point 98 of G 1/19, because such data can be used for a variety of (technical and) non-technical purposes, for example in a video game. The claim also does not specify how the simulation results are used to modify the design model. 
  
  
• The whole decision G1/19 deserves careful reading and study.

 G 1/19  - G 0001/19

https://www.epo.org/law-practice/case-law-appeals/recent/g190001ex1.html

decision text omitted.

T 2218/16 - Gene therapy and result to be achieved

 Key points

• Claim 1 is a second medical use claim directed to basically an AAV vector comprising a therapeutic gene for use in a method for treating a motor neuron disorder in a subject. The AAV vector is further specified, as well as the mode of administration. The therapeutic gene is defined as “wherein the therapeutic gene is operably linked to a promoter specific or functional in motor neurons”. The claim further specifies a functional feature described below.
• Novelty over D2 is considered. “Document D2 discloses the same scAAV9 vector, therapeutic genes, motor neuron disorders to be treated ...  including the same mode of administration as referred to in claim 1 ... Document D2 further discloses ubiquitous promoters, like CMV ... which as shown in the patent, are functional in motor neurons too.”
• “It was contested between the parties whether or not document D2 discloses motor neurons transfected by the scAAV9 vector.”
• "The claim inter alia specifies that the administration of these vectors cause "infection of spinal cord motor neurons and expression of the gene in spinal cord motor neurons". Accordingly, the claimed use of the scAAV9 vectors is defined by a functional feature that indicates the desired result to be achieved, namely the transfection of spinal cord motor neurons as a necessary prerequisite to achieve a therapeutic effect. According to the case law, functional features are technical features of the claim (see Case Law, II.A.3.4., II.C.7.2.). As set out above, document D2 does not disclose the transfection of motor neurons. Thus, the "result-to-be-achieved" feature in claim 1 relates to a new technical effect."
• “ document D2 is silent on directly transfecting motor neurons, and relates to the transfection of other target cells that, after secretion of a therapeutic product, have an indirect effect on cells involved in the development of particular diseases, inter alia, SMA. The respondents did not dispute that a scAAV9-based therapy that did not directly transfect motor neurons was not suitable for treating SMA. In these circumstances document D2 provides a non-enabling disclosure for the treatment of SMA. Since for the reasons outlined above, the new mechanism of action creates a new clinical situation, the board concludes that the situation in the present case differs from that underlying the decisions T 433/14 and T 406/06.”
• The claims are found to be novel, inventive, and allowable.

T 2218/16 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t162218eu1.html

Claim 1 of the main request reads:

"1. An AAV vector comprising a therapeutic gene for use in a method for treating a motor neuron disorder in a subject, wherein said AAV vector is administered by by intraperitoneal (i.p.), intramuscular (i.m.) or intravenous (i.v.) injection, preferably intravenous injection, to said subject, said administration causing infection of spinal cord motor neurons and expression of the gene in spinal cord motor neurons, wherein said AAV vector is:

- a double-stranded self-complementary AAV9 vector, or

- a pseudotyped AAV vector comprising a double-stranded self-complementary AAV genome derived from an AAV serotype different from the AAV9 serotype and a capsid derived from an AAV9 capsid; and

wherein the therapeutic gene is operably linked to a promoter specific or functional in motor neurons".

Reasons for the Decision

Novelty

40. In a first line of argument, the appellant submitted that the subject-matter of claim 1 lacked novelty over documents D1 and D2. Since, as the appellant further submitted, the disclosure of both documents is "very similar, if not identical", in the following reference will be made to relevant passages in document D2 only.

40.1 Document D2 discloses the same scAAV9 vector, therapeutic genes, motor neuron disorders to be treated (e.g. SMA, amyotrophic lateral sclerosis (ALS), or Kennedy's disease), including the same mode of administration as referred to in claim 1 (see for example page 1, first paragraph; page 6, lines 1 to 3, 17 to 19; page 12, lines 3 to 10 and 15 to 23). Document D2 further discloses ubiquitous promoters, like CMV (see page 9, lines 17, 27 and 28), which as shown in the patent, are functional in motor neurons too. The board is therefore not convinced by the respondents' argument, that document D2 discloses a promoter subset that is different from the "functional" promoters cited in claim 1.