T 1570/20 - Removal of cause of non-compliance

Key points
The Board reviewing some basics about admissibility of RE requests:

• The case at hand and the issue at stake: “A request for re-establishment of rights must be filed within two months of the removal of the cause of non-compliance (Rule 136 (1) EPC). It is thus decisive when the cause of non-compliance was removed. If this occurred on 6 August 2015, when the European professional representative was informed about the loss of rights, the request for re-establishment of rights is not admissible. If it occurred on 22 August 2015, when the applicant was informed, the request is admissible.”
• “3. If a professional representative is appointed, the removal of the cause of non-compliance usually occurs on the date on which the professional representative becomes aware of the fact that a time limit has not been observed (see J 27/90, point 2.3 of the Reasons). The notification of the communication on the loss of rights to the professional representative removes the cause of non-compliance unless there are exceptional circumstances. A person other than the professional representative being responsible for the payment of fees does not constitute exceptional circumstances (see T 1588/15, point 9 of the Reasons). The removal of the cause of non-compliance is normally the actual receipt - and not the deemed notification [under Rule 126, i.e. no 10-day rule] - of the communication by the professional representative (T 2251/12, point 10 of the Reasons; T 812/04, point 2.1.1 of the Reasons).”
• “In J 1/20 it is ... also stated that, if a European professional representative is appointed, the party acts through them in all proceedings established by the Convention and notifications are made to them, which implies that removal of the cause of non-compliance occurs in principle when the authorised representative becomes aware of the loss of rights (point 2.2 of the Reasons).”
• “In the Board's view, removal of the cause of non-compliance did not require any additional knowledge by the professional representative about possible reasons for the loss of rights, such as whether the non-payment of fees was intentional or not. Rather, it was sufficient that the professional representative became aware of the fact that a time limit - namely the time limit with regard to which re-establishment of rights was requested later on - had not been complied with, which included awareness of the fact that nobody had taken care of the payment of fees.”
• The request was filed late.
• The Board, obiter it seems: “The appellant is, as any party, free to choose their representatives and advisors. They must, however, also bear the possible negative consequences of their choices and arrangements. ” (referring to a Taiwanese law firm, not to the professional representative).

T 1570/20
https://www.epo.org/law-practice/case-law-appeals/recent/t201570eu1.html

decision text omitted.

T 0914/18 - Correction of error in opposition

 Key points

• The patentee corrects a clerical error in claim 1 as granted in AR-7. The error and the correction are immediately obvious, the error is truly a simply clerical error.
• The Board: “As the correction of the obvious error, made in the set of claims filed on 4 May 2015 which underlies the application documents on which the grant of the European patent is based, concerns auxiliary request 7, Rule 139 EPC rather than Rule 140 EPC applies (see G 1/10, OJ EPO 2013, 194, point 9). ”
• G 1/10, r.9: “9. In the Enlarged Board's judgment a patent applicant (or, subsequently, a patent proprietor) has adequate means at his disposal to ensure his patent as granted is in the exact form he wants it to be without any need to invoke Rule 140 EPC. ...”
• “As the filing of auxiliary request 7 was occasioned by a ground for opposition under Article 100 EPC, the requirements of Rule 80 EPC are fulfilled. However, these requirements are irrelevant in the context of Rule 139 EPC (see G 1/10, point 13). The correction is thus allowable.”
• G 1/10, r.13: “13. The referring decision relates to opposition proceedings. The Enlarged Board considers Rule 140 EPC is not available for correcting patents, including during opposition or limitation proceedings. However, it is always open to a patent proprietor to seek to amend his patent during opposition or limitation proceedings and such an amendment could remove a perceived error. Such an amendment would have to satisfy all the legal requirements for amendments including those of Article 123 EPC. ...”
• It is not clear to me where in G 1/10 the Enlarged Board says that Rule 80 does not apply. 
• However, T0657/11, r.3.4 already explained that  "such mistakes or errors ... in the unamended part of the text in question may only be removed by way of a correction pursuant to Rule 139 EPC, which provision and the specific requirements defined therein apply independently from Rule 80 EPC." 

T 0914/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t180914eu1.html

4.2.3 Concerning the correction of the obvious error in claim 1 of auxiliary request 7 from "immunotritional" to "immunonutritional", the board notes the following. The term "immunotritional" is clearly erroneous. From the wording of claim 1 of auxiliary request 7, as well as claim 1 as granted, it is obvious that the same composition as defined before is to be administered ("and wherein said [...] composition"). It is thus immediately evident from the wording of claim 1 as granted how the correction of the obvious error is to be made, i.e. by the replacement of the term "immunotritional" with "immunonutritional".

As the correction of the obvious error, made in the set of claims filed on 4 May 2015 which underlies the application documents on which the grant of the European patent is based, concerns auxiliary request 7, Rule 139 EPC rather than Rule 140 EPC applies (see G 1/10, OJ EPO 2013, 194, point 9). As the filing of auxiliary request 7 was occasioned by a ground for opposition under Article 100 EPC, the requirements of Rule 80 EPC are fulfilled. However, these requirements are irrelevant in the context of Rule 139 EPC (see G 1/10, point 13). The correction is thus allowable.

T 1609/20 - The covid extension for renewal fees

 Key points

• There is more in this decision than meets the eye.
• “During the appeal proceedings the European Patent Office issued a noting of loss of rights pursuant to Rule 112(1) EPC stating that the renewal fee for the eleventh year and the additional fee have not been paid in due time. The applicant / appellant requested to confirm that the renewal fee for the eleventh year and the additional fee were paid in due time.”
• “According to Rule 112(2) EPC if the party concerned considers that the finding of the European Patent Office is inaccurate, it may, within two months of the communication under Rule 112(1) EPC, apply for a decision on the matter. The European Patent Office shall take such decision only if it does not share the opinion of the party requesting it; otherwise, it shall inform that party. In this case the Board shares its opinion.”
• First of all, the Notice of loss of rights of 18.11.2020 was issued “for the Examining Division” and the appellant expressed surprise to receive a preliminary opinion of the Board on the matter.
• The Board is competent to decide on all matters pertaining to the application during the appeal, the so-called devolutive effect of appeal, and hence also on the renewal fee. However, the EPO's computer systems sending out the Notice of loss of rights are not programmed accordingly. 
• The appellant argued that all periods were extended until 2 June under the covid measures (OJ 2020 A60) and that the 6 month period for paying the renewal fee with surcharge, therefore, expired on 2 December 2020. OJ 2020 A75 was also cited.
• The Board's preliminary opinion was entirely negative: the deferred due date for the renewal fee did not change the start or end of the 6-month period for paying with surcharge, in line with J 4/91, and no legitimate expectations either.
• Because the present decision is empty of substantive reasons, we don't know why the Board changed its mind. I note that the EPO had sent out the Notice of loss of rights in a number of parallel applications of the same applicant, at least (p.1 of this letter) so presumably it was the EPO's position that the period for payment with surcharge was not postponed. But the present Board apparently prefers to not explain what happened and why the EPO's position was wrong. 
• Either J 4/91 is abandoned in the present decision (and an extension under Rule 134(2) does shift the due date / starting date for the 6-month period even if the extension is very long), or the EPO's Covid-related notices are not completely legally sound (see J10/20) and there is some hand waving under Article 125 EPC in the present decision, but the present decision obscures the Board's precise reasoning. 
• Typically high quality judgments are characterized by their clear reasoning, not by obscuring the legal reasoning.

T 1609/20

https://www.epo.org/law-practice/case-law-appeals/recent/t201609eu1.html

Summary of Facts and Submissions

During the appeal proceedings the European Patent Office issued a noting of loss of rights pursuant to Rule 112(1) EPC stating that the renewal fee for the eleventh year and the additional fee have not been paid in due time.

The applicant / appellant requested to confirm that the renewal fee for the eleventh year and the additional fee were paid in due time.

As a auxiliary measure it requested re-establishment in the time-limit to pay these fees and paid the fee for re-establishment. Finally it requested that fee for re-establishment be reimbursed if the renewal fee and the additional fee were considered to be paid in due time.

Reasons for the Decision

According to Rule 112(2) EPC if the party concerned considers that the finding of the European Patent Office is inaccurate, it may, within two months of the communication under Rule 112(1) EPC, apply for a decision on the matter. The European Patent Office shall take such decision only if it does not share the opinion of the party requesting it; otherwise, it shall inform that party. In this case the Board shares its opinion.

Since a decision on re-establishment was not to be taken, the fee for re-establishment has to be reimbursed.

Order

For these reasons it is decided that:

1. The appellant is informed that the renewal fee

for the eleventh year and the additional fee were

paid in due time.

2. The fee for re-establishment is reimbursed.

T 0246/17 - OD should have heard offered witnesses

 Key points

• “IV. The opponent disputed the novelty of the independent claims on the basis of an alleged public prior use. The anticipation asserted was the offering and selling, before the patent's priority date, of an MPD 600 partial discharge measuring system.
• V. In support, the opponent invoked documents O1 to O3, of which O1 is a user manual, O2 a brochure, and O3 a sales invoice. Both O1 and O2, allegedly, disclosed all features of the independent claims, as well as providing evidence of public prior use.
• VI. In addition, the opponent offered three witnesses (Messrs Steinecke, Daniel, and Platz) to verify the functionality of the MPD 600 measuring system.”
• The OD refused to hear the offered witnesses. The OD found the alleged public prior use to be proved on the basis of O1-O3 (manual, invoice) and found “found documents O1 and O2 to form part of the state of the art (point 3.7), but not to disclose all the features of the independent claims of the patent”, this turned out to be critical.
• The Board finds the decision of the OD to refuse the witness hearing to be substantial procedural violation.
• “The witnesses were offered to "confirm the functionality of the MPD 600 measuring system as described above" ... "Described above" referred to the immediately preceding text, on pages 3 to 5 of the notice of opposition, where the opponent elaborated on the characteristics of the MPD measuring instrument of O1 and O2, ... ”
• “The opponent was, therefore, adducing clear, sufficient, and relevant facts which, if verified by the witnesses' evidence, would have supported its allegation of public prior use.”
• “As the disclosures of documents O1 and O2 leave open whether these features were present in the instrument described, but the instrument was actually made and sold and might itself have disclosed them even though O1 and O2 did not, this was a matter which witness testimony could resolve.”
  
  
• “A final conclusion on inventive step also requires consideration of the inventive step attack starting from the alleged public prior use. For this reason too, the witnesses should be heard.”
• “In view of the above, it cannot be ruled out that hearing the witnesses could, alongside evaluating the documentary evidence, have led to a different assessment of novelty and inventive step and, thus, to a different outcome.  The Board views this as a fundamental procedural violation that justifies the setting aside of the decision, in line with previous jurisprudence (see, for example, T 716/06, point 3, T 1363/14, point 2; and T 314/18, points 4 and 6).”
  
  
• The Board remits the case.

T 0246/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t170246eu1.html

Summary of Facts and Submissions

I. This appeal is by the opponent, against the decision of the Opposition Division to reject the opposition to the European Patent EP2545389.

II. The patent was opposed on the grounds of lack of novelty and lack of an inventive step.

III. The following documents were submitted as written evidence with the notice of opposition:

O1|OMICRON mtronix technology, MPD 600 User Manual, OMICRON electronics, 2009 |

O2|OMICRON mtronix technology, MPD 600 Partial Discharge Analysis System, OMICRON, April 2008|

O3|OMICRON electronics GmbH, Rechnung No. IN09-0972, 10 March 2009 |

T 0847/20 - Late-filed-objection is late filed

 Key points

• In an unsurprising move, the Board clarifies that an objection against the admissibility of a submission of another party can be late filed and inadmissible in turn under Article 13(2). This implies that such an objection is also an amendment of the party's appeal case. 
• “It is only during oral proceedings that the respondent requested the non-admittance of auxiliary request 2.”
• “In the absence of valid reasons to raise this objection during oral proceedings, the Board finds it appropriate to exercise its discretion under Article 13(2) RPBA 2020 by not admitting the present objection into the proceedings.”
• As a comment, case law will probably in due course require that admissibility objections are timely, specific, and reasoned, without limiting the power of the Boards to hold submissions inadmissible ex officio. 

T 0847/20 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t200847eu1.html

3. Auxiliary request 2

3.1 Admittance

Auxiliary request 2 was submitted with the statement of grounds of appeal. The admittance of this request into the proceedings was not challenged by the respondent in their reply to the statement of grounds of appeal and it was not an issue that was raised by the Board in their preliminary opinion on the case either. It is only during oral proceedings that the respondent requested the non-admittance of auxiliary request 2.

In particular the respondent submitted that auxiliary request 2 was a new request having no counterpart in the opposition proceedings and that the amendments raised new issues.

The Board notes that the appellant had made clear from the beginning of the appeal proceedings that auxiliary request 2 was formally a new request (see statement of grounds of appeal, page 22, second paragraph) by specifying that it corresponded to auxiliary request 7 in opposition in which additionally the same amendments introduced in claim 1 had been inserted in claims 2 and 7. This situation did not change in the course of the appeal proceedings.

Consequently, the objection against its admittance should have been raised with the rejoinder of respondent and not at the latest possible point in time of the appeal proceedings.

In the absence of valid reasons to raise this objection during oral proceedings, the Board finds it appropriate to exercise its discretion under Article 13(2) RPBA 2020 by not admitting the present objection into the proceedings.

T 1599/18 (II) - Novelty

 Key points

• The Board in the headnote: “there is no need that a prior art document explicitly mentions the claimed features. It is necessary and sufficient that an embodiment falling under the claim scope be directly and unambiguously derivable from the prior art document. ”
• This summary of the rule regarding novelty seems correct to me. See also my article in epi Information 4/2020. 
• The Board, in the reasons of the decision: 
  “The Board agrees that the same yardstick should be used [for added matter, i.e. Art.123(2) and novelty]. However, this yardstick does not require an explicit mention of the relevant features, but only that the features be directly and unambiguously derivable. It is also not necessary that the exact claim wording, considering its breadth and all its possible interpretations, be derivable from a prior art document for the claim to lack novelty. It is necessary and sufficient that an embodiment falling under the claim scope be derivable from the prior art document.”
  
• The Board then applies this rule to the case at hand: “The Board considers this to be the case here, because the skilled person is told to use conventional fingerprint images for identification, which directly leads to the necessity of storing these images in an organized way, i.e. to a database of images, although this is not explicitly mentioned.” The Board then hence to admit that an alternative implementation of the prior art document E2 is possible: “One may of course also (or instead) store feature values extracted from the images in a database.”
• The Board then reasons that: “the fact that an alternative embodiment exists cannot change the fact that the first one is directly and unambiguously derivable. In fact, it is possible that multiple alternatives can be considered directly und unambiguously derivable, even when none is explicitly mentioned.” The Board summarizes this in the headnote: “That an alternative exists does not change this: it is possible that multiple alternatives can be considered directly und [sic] unambiguously derivable, even when none is explicitly mentioned.”
• I'm not sure if this is established case law. If an embodiment is not explicitly mentioned, it must be implicit disclosure for lack of novelty. In principle, multiple alternative embodiments can each be implicitly disclosed. There is however some case law setting a very high bar for implicit disclosure. 
• I also note that the Board be reasoning as it did,  could leave open whether cited patent application E2 was prior art under Art.54(2) or a prior right under Art.54(3), which was a matter of dispute. 

T 1599/18 -

https://www.epo.org/law-practice/case-law-appeals/recent/t181599eu1.html

Auxiliary request 2

11. In view of the analysis above as to the novelty of the main request, the Board agrees with the decision of the Opposition Division that claim 1, in the alternative under a), is anticipated by a combination of claims 30 and 32 of E2. The appellant did not contest this assessment.

12. The Board also agrees with the Opposition Division that alternative b) is disclosed by paragraph 72 in E2 which teaches to extract a conventional fingerprint image for biometric assessment.

12.1 Paragraph 72 of E2 teaches that "a conventional fingerprint image is extracted from the sensor for further processing and biometric assessment".

T 1599/18 (I) - Right to be heard

 Key points

Right to be heard

• Patentee argues that “Auxiliary request 3 was to be admitted to the appeal proceedings "because the non-admittance in the first instance was a substantial violation against the right to be heard" 
• The Board, in the headnote: “ the right to be heard does not entail a right to an amendment, but a right to present comments on why a specific request should be admitted to the proceedings.”
• The Board explains this as follows: “ The right to be heard does not entail the right to an amendment. Amendments are regulated by Article 123(1) EPC, the Implementing Regulations (e.g. Rule 80, Rule 116 EPC, Rule 137(3) EPC), and the RPBA during appeal. In this particular case, the Opposition Division had the discretion to admit, or not, the amendment, under Rule 116(2) EPC. That a new objection is raised, and that the amendment potentially responds to that objection, are factors to be considered in the exercise of this discretion, which the Opposition Division did; it does not give rise to a right to an amendment in response to that new objection emanating from the right to be heard.”
• And finally at r.29 “As noted above, in points 16 et seq., the right to be heard does not entail a right to an amendment, but a right to present comments on why a specific request should be admitted to the proceedings. So the non-admittance of the requests as such cannot be a violation of the right to be heard.” emphasis added.
• As a comment, I strongly doubt that the headnote is correct where it implies that the right to be heard of Article 113(1) only entails the right to present comments on why a specific request should be admitted into the proceedings. If the OD does not admit a request only on the ground they want to finish oral proceedings early (the notorious alleged football match example can be found in Juve Rechtsmarkt 07/14, p.63), this is an abuse of discretion. However, it does not seem helpful on a theoretical level to analyse "abuse of discretion" without considering the party's rights involved. Infringement of a party's right and abuse of discretion seem two sides of the same coin. 
• Obviously, with the proposed reasoning non-admittance of requests by the Board will no longer be a ground for a petition for review under Article 112a(2)(c) if the Board gave you an opportunity to present arguments why the request should be admitted, even if the Board then holds the request inadmissible in an arbitrary, capricious, or unreasonable way. We will have to see what the Enlarged Board makes of Art.112a(2)(c).
• The Board's remarks seem obiter because they first find that  “the Board does not see that the Opposition Division exercised its discretion on the basis of incorrect principles or in an unreasonable way. They exercised the discretion provided under Rule 116(2) EPC, on the basis that, although the amendments filed during the oral proceedings were a response to objections under Article 123(2) EPC for a previous request filed in preparation for the oral proceedings, this new request could and should have been filed earlier. This is because the proprietor should have expected the Article 123(2) EPC objections, given that no literal basis was provided for the amendments in the previously filed request.”
  
  
• As to the admissibility of another request that was held inadmissible by the OD: “It also appears that the timing of the filing was very late (during the oral proceedings) and that the new claims were based not only on the granted claims but contained new matter from the description. ... The Opposition Division exercised its discretion on the basis of these facts, which hold true and are pertinent to the exercise of discretion. The Board finds that the Opposition Division exercised its discretion in accordance with the right principles and in a reasonable way. The Board therefore has no reason to overturn this decision (see G 7/93 2.6”

T 1599/18 -

https://www.epo.org/law-practice/case-law-appeals/recent/t181599eu1.html

15. Hence claim 1 of this request lacks novelty over E2.

Auxiliary request 3

16. As with auxiliary request 1, the Board does not see that the Opposition Division exercised its discretion on the basis of incorrect principles or in an unreasonable way. They exercised the discretion provided under Rule 116(2) EPC, on the basis that, although the amendments filed during the oral proceedings were a response to objections under Article 123(2) EPC for a previous request filed in preparation for the oral proceedings, this new request could and should have been filed earlier. This is because the proprietor should have expected the Article 123(2) EPC objections, given that no literal basis was provided for the amendments in the previously filed request.

17. The appellant argues that the objections under Article 123(2) EPC were only raised during oral proceedings before the Opposition Division, and that the proprietor should have had the opportunity to react by amendment. Auxiliary request 3 was to be admitted to the appeal proceedings "because the non-admittance in the first instance was a substantial violation against the right to be heard" (letter of 21 April 2021, page 8).

T 1450/19 - Inheriting attack from minutes OP OD

Key points

• The opponent submits an inventive step attack based on D30 during the oral proceedings before the OD. This attack is noted in the minutes.
• The opponent as respondent does not repeat the attack in its Appeal Reply Brief or any further written submissions in appeal. The opponent however wishes to present the attack again during the oral proceedings before the  Board.
• The Board indicates that it must admit the attack. 
• “Der Beschwerdegegner hat zwar schriftlich keine Argumente gegen die in der angefochtenen Entscheidung angegebene Begründung eingereicht, nach welcher D30 keinen geeigneten nächstliegenden Stand der Technik für den Verwendungsanspruch 1 gemäß Hauptantrag darstellen könne, siehe Punkt II.8.2.3 der Entscheidung. Während der mündlichen Verhandlung vor der Kammer hat er aber auf seinen Vortrag, wie er sich aus Seite 6, letzter Absatz der Niederschrift der mündlichen Verhandlung vor der Einspruchsabteilung ergibt, verwiesen. Die dort protokollierten vom Beschwerdegegner vorgetragenen Argumente sind, obwohl nicht eigens im Beschwerdeverfahren schriftlich, sondern erst in der mündlichen Verhandlung vorgetragen, nicht als verspätet und damit auch nicht als erst nach Artikel 13 (2) VOBK 2020 zuzulassen anzusehen. Vielmehr sind sie bereits ohne weiteres Gegenstand des Beschwerdeverfahrens, weil die Niederschrift über mündliche Verhandlungen vor dem Organ, das die angefochtene Entscheidung erlassen hat, gemäß Artikel 12 (1) a) VOBK 2020 und damit von Gesetzes wegen dem Beschwerdeverfahren zugrunde liegt. Dies wurde von der Beschwerdeführerin auch nicht in Zweifel gezogen.” 
• For a rather different approach see T1439/16: “as argued by the respondent [patentee], it is the appellant who defines the extent of the appeal and according to Article 12(3) RPBA 2020, which essentially corresponds to Article 12(2) RPBA 2007, the statement of grounds of appeal shall contain a party's complete case. ” emphasis added.
• The Board considers the attack and agrees with the OD that D30 is not the closest prior art and therefore does not prejudice inventive step.

T 1450/19 

https://www.epo.org/law-practice/case-law-appeals/recent/t191450du1.html

1.2 D30 - Eignung als nächstliegender Stand der Technik

1.2.1 Der Beschwerdegegner hat zwar schriftlich keine Argumente gegen die in der angefochtenen Entscheidung angegebene Begründung eingereicht, nach welcher D30 keinen geeigneten nächstliegenden Stand der Technik für den Verwendungsanspruch 1 gemäß Hauptantrag darstellen könne, siehe Punkt II.8.2.3 der Entscheidung.

Während der mündlichen Verhandlung vor der Kammer hat er aber auf seinen Vortrag, wie er sich aus Seite 6, letzter Absatz der Niederschrift der mündlichen Verhandlung vor der Einspruchsabteilung ergibt, verwiesen.

Die dort protokollierten vom Beschwerdegegner vorgetragenen Argumente sind, obwohl nicht eigens im Beschwerdeverfahren schriftlich, sondern erst in der mündlichen Verhandlung vorgetragen, nicht als verspätet und damit auch nicht als erst nach Artikel 13 (2) VOBK 2020 zuzulassen anzusehen. Vielmehr sind sie bereits ohne weiteres Gegenstand des Beschwerdeverfahrens, weil die Niederschrift über mündliche Verhandlungen vor dem Organ, das die angefochtene Entscheidung erlassen hat, gemäß Artikel 12 (1) a) VOBK 2020 und damit von Gesetzes wegen dem Beschwerdeverfahren zugrunde liegt. Dies wurde von der Beschwerdeführerin auch nicht in Zweifel gezogen.

T 0283/14 - Unclarity must be lived with (G3/14, r.55)

 Key points

• This is an older decision from 2018, but this post allows me to recall the holding of G 3/14, r.55 that “A granted claim may turn out not to comply with Article 84 EPC but such non-compliance must be lived with. However, any lack of clarity of the claims may still be highly relevant in opposition proceedings in that it can influence the decisions on issues under Article 100 EPC: [] For example the lack of clarity of a claim may have a profound effect on the outcome of the grounds for opposition according to (i) Article 100(b) / sufficiency [], (ii) Article 100(a) EPC / novelty [], or Article 100(a) EPC / inventive step []. ” (internal citations omitted)

T 0283/14 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t140283eu1.html

“It is correct that the term "low" is relative and does not allow a clear demarcation with the state of the art. However, as pointed out in G3/14, OJ 2015, A102, Reasons 55, this must be lived with. This term does however have a meaning for the skilled person, as shown by the Annexes 2, 4 and 8.”

T 1866/15 - Rule 137(5) case

 Key points

• The Examining Division did not admit a claim request under Rule 137(3) because of non-compliance with Rule 137(5) first sentence.
• The Board follows T 2431/19 that Rule 137(5) pertains to allowability. 
• “For this reason alone, the decision not to admit under Rule 137(3) EPC is incorrect and the auxiliary request is to be taken into account in accordance with Article 12(4) RPBA 2007.”
• “the board does not agree with the decision as regards Rule 137(5) EPC.”
• “The board agrees with the general statement (see also Guidelines H-II, 6.2) that, in order to assess whether or not amended claims fulfil the requirements of Rule 137(5) EPC, first sentence, it needs to be established whether or not an objection of lack of unity would have been raised if the amended claims had been present in the set of claims on file at the time of the search.”
• This is indeed established case law, see my article in epi Information 2018/2. 
• “The board takes the view that there cannot be a lack of unity between two claims where one strictly limits the subject-matter of the other. Accordingly, original claim 1 cannot lack unity with present claim 1, which is a strict limitation of original claim 1.”
• As a comment, I'm not sure what a ‘strict limitation’ is in this context.
• The Board: “ If, for example, claim 1 lacked novelty a posteriori and a "special technical feature" of the original set of claims was contained in claim 2, then the amendment of claim 1 by incorporation of another "special technical feature" with an unrelated effect could lead to the situation that amended claim 1 and original claim 2 lacked unity and that, accordingly, the amendment could not be allowed under Rule 137(5) EPC. ”
• As a comment, I'm not sure what lack of novelty 'a posteriori' means here (I guess it is opposed opposed to lack of novelty 'a priori', but I don't know what that means in this context). 
• But I agree that the amendment can not be allowed in this case.
• “If, however, the original "special technical feature" was contained in original claim 1, then the addition of another, even unrelated, "special technical feature", could not introduce a lack of unity between original and amended claim 1. Accordingly, such an amendment cannot be objected to under Rule 137(5) EPC.”
• Lack of novelty 'a posteriori' suggests to me that claim 1 contains a special technical feature, but then the claim would be novel and inventive over 'the prior art at hand' (Rule 44(1): “The expression "special technical features" shall mean those features which define a contribution which each of the claimed inventions considered as a whole makes over the prior art.”).
• The Board: “if an amendment introduces a feature with an effect entirely unrelated to the effects of the original claims, this might well be a sound basis for the examining division to deny its consent under Rule 137(3) EPC”
• “since amended claim 1 is a strict limitation of original claim 1, there cannot be a lack of unity and thus there is no violation of Rule 137(5) EPC.”
• “Therefore, the board considers the subject-matter of claim 1 of auxiliary request 1 to involve an inventive step over D2.”
• The case is remitted for an additional search. “Since the board considers it probable that the search for present claim 1 did not cover the additional feature taken from the description ([58]), it is not in a position to order the grant of a patent. ”
• The purpose of Rule 137(5)(s.1) is precisely to avoid  (unpaid) additional searches being necessary if the applicant takes a feature from the description that was correctly not searched during the search stage.

(edited 16.10.2021)

T 1866/15 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t151866eu1.html

3. Admittance of auxiliary request 1 under Rule 137(5) and (3) EPC

3.1 The examining division decided not to admit the main request under Rule 137(3) EPC because it did not meet the requirements of Rule 137(5) EPC (first sentence).

3.2 The board considers that Rule 137(5) EPC, first sen­tence, constitutes a substantive requirement on amended claims, and endorses the findings of T 2431/19 on this point. If an amendment does not comply with Rule 137(5) EPC, it is not allowable on that ground alone and the examining division no longer has discretion whether or not to admit it under Rule 137(3) EPC.

3.3 For this reason alone, the decision not to admit under Rule 137(3) EPC is incorrect and the auxiliary request is to be taken into account in accordance with Article 12(4) RPBA 2007.

T 0894/19 - Exception to the could-would approach

Key points

• The Board, on inventive step: “ The configuration of features (c) and (d) therefore represents a mere obvious and consequently non-inventive selection among a number of known and equally likely possibilities (see e.g. T 1045/12, Reasons 4.7.7). In such cases, the "could-would approach" normally does not apply (see e.g. T 12/07, Reasons 4.1.6; T 1968/08, Reasons 5.5). To consider all of the solutions that are equally obvious, it is sufficient that the skilled person could recognise the solutions concerned without inventive efforts: a separate pointer is then not required for this purpose.”
• The question arises: how does the Board know that selection of the claimed configuration was obvious, without using the could-would approach?
• The Board, in the sentences immediately preceding the quote above: “The relevant skilled person tasked with the objective technical problem described in point 3.5 above belongs to the field of "hearing devices". Based on their common general knowledge, this skilled person is aware of several solutions to the objective technical problem posed, such as the clamping or resiliently suspending mentioned in point 3.5 above or the rotatable snapping connection of features (c) and (d). The skilled person also knows the respective advantages and disadvantages of each of these solutions.”
• “3.5 The corresponding objective technical problem can thus be framed as "how to provide for an easy and a reliable connection between the canal element and the speaker element in D1 that allows for an adjustable positioning of the speaker element".”
• As a comment, I'm not sure what the "such cases" are wherein "the "could-would approach" normally does not apply". 
• I'm also not sure if it was impossible to reason that the claimed feature was something that the skilled person would have applied to solve the objective technical feature; I don't think that the could-would approach means that a feature is only obvious if it is the only solution that the skilled person would have applied. 

T 0894/19 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t190894eu1.html

3.6 The relevant skilled person tasked with the objective technical problem described in point 3.5 above belongs to the field of "hearing devices". Based on their common general knowledge, this skilled person is aware of several solutions to the objective technical problem posed, such as the clamping or resiliently suspending mentioned in point 3.5 above or the rotatable snapping connection of features (c) and (d). The skilled person also knows the respective advantages and disadvantages of each of these solutions. The configuration of features (c) and (d) therefore represents a mere obvious and consequently non-inventive selection among a number of known and equally likely possibilities (see e.g. T 1045/12, Reasons 4.7.7). In such cases, the "could-would approach" normally does not apply (see e.g. T 12/07, Reasons 4.1.6; T 1968/08, Reasons 5.5). To consider all of the solutions that are equally obvious, it is sufficient that the skilled person could recognise the solutions concerned without inventive efforts: a separate pointer is then not required for this purpose.

The respondent argued that Figure 15B of D1 comprises many possible connections which the skilled person could have changed to solve the objective technical problem posed and that there would be no reason why the skilled person would have considered specifically the connection of the speaker element to the canal element. The board agrees, however, with the appellant that the skilled person would have primarily focused on the connection between tube 1512 connecting speaker element 1212 to ear mould 1510 to solve the above objective technical problem because this is the most prominent connection in Figure 15B of D1.

3.7 Hence, claim 1 of the main request and of auxiliary request 1 does not involve an inventive step (Article 56 EPC).

T 2066/18 - Withdrawal opposition, main request not admitted

 Key points

• Patentee appeals and submits a main request wherein claims 1 and 5 are combined. Opponent contests the admissibility of the request. The preliminary opinion of the Board is that the request is not admitted. The opponent withdraws the opposition. The Board still does not admit the request, nor any of the other claim requests. The appeal is dismissed, i.e. the decision to revoke the patent become final.
•  The reason for not admitting the request is that patentee had not submitted any substantive comments during the first instance proceedings at all. 
• The OD had then decided that all claims except claims 5-7 were not novel and that claims 1, 2 and 4 were obvious in view of other prior art. I assume that the OD made no adverse finding on claim 5. The patentee combined claims 1 and 5 with the Statement of grounds.
• The  Board: “Unter Berücksichtigung des passiven Verhaltens der Beschwerdeführerin im Verfahren vor der Einspruchsabteilung ist die Kammer der Ansicht, dass die Zulassung des Haupt- und Hilfsantrags 1 nicht im Einklang mit dem rechtlichen Charakter des Beschwerdeverfahrens wäre. Im Falle der Zulassung dieser Anträge würde die Beschwerdeführerin erstmals im Beschwerdeverfahren überhaupt versuchen, das Patent zu verteidigen. Dies hätte zur Folge, dass das Beschwerdeverfahren lediglich eine Fortsetzung des Einspruchsverfahrens wäre, was nicht Sinn und Zweck des Beschwerdeverfahrens ist.”

T 2066/18

https://www.epo.org/law-practice/case-law-appeals/recent/t182066du1.html

decision text omitted

T 1166/19 - OD admits request filed at 21:30

Key points

• The opponent requests that the main request is not admitted, arguing as follows: “The main request was filed as the then-auxiliary request 2 only at 9:30 p.m. [!] on the first day of the oral proceedings before the Opposition Division. The opponents' request to grant time for searching new documents and to prepare for the new submission was refused. The then-new set of claims was presented in the oral proceedings only at the time that D2a was found novelty-destroying by the Opposition Division. The restriction of the Zn content was not foreseeable for the opposing parties.”
• The Board admits the request. “It is not apparent that the Opposition Division wrongly exercised its discretion to admit the then-auxiliary request 2, now main request. The Opposition Division examined the prima facie relevance of the amendments and concluded that they overcame the lack of novelty over D2a.”
• “According to the minutes, the then-auxiliary request 2 was submitted just before interruption of the proceedings on the evening of the first day. After resumption of the proceedings on the morning of the second day, the opponents were heard on the admissibility of auxiliary request 2. This was followed by deliberation, and admittance of the request. The opponents agreed to discuss all issues with regard to auxiliary request 2 immediately, with the exception of the inventive-step attack, for the preparation of which they "may need time later". When later in the second day the parties were asked to comment on inventive step, the opponents did submit their attacks. When, after deliberation, they were informed that the Opposition Division found the subject-matter inventive, and were asked whether they had any other comments or requests, the opponents did not. It is thus noted that the minutes do not report any request to grant time for a further search or any request for more preparation time when inventive step was discussed, nor did the appellants challenge the content of the minutes. It therefore has to be concluded that the time available to the opponents to react to the newly-submitted request was sufficient. Therefore, according to the evidence on file, the Board cannot establish wrongly-exercised discretion by the Opposition Division, and does not see any reason to disregard the present main request.” (references omitted)
• As a comment, there is definitely an important practice point to be learnt from this decision but I leave that for your own firmwide case law lunch or the like. 
• Please bear in mind that claim 1 at issue is directed to a metal alloy and this is quite a particular type of claim.  The Board finds that in the present case, “Therefore a further restriction of the Zn content [as in AR-2] could and should have been expected.”
• “As mentioned above with respect to the admissibility of the then-auxiliary request 2, no request for adjournment of the oral proceedings was made: according to the minutes, the opposing parties were in a position to react to the amended auxiliary request 2 immediately[]. No justification was given as to why they changed their minds in the appeal proceedings. For these reasons, the Board decides not to admit documents D46 to D48 [submitted by opponents] into the proceedings”
• The Board finds the claims at issue to be novel and inventive and dismisses the appeals of opponents.

T 1166/19 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t191166eu1.html

decision text omitted.

T 1320/19 - A summary of Rule 99(2) case law

Key points

“The Boards of Appeal have developed consistent jurisprudence on the conditions under which an appeal may be rejected as inadmissible for lack of adequate substantiation. This includes the following principles:

(a) If the admissibility requirements are fulfilled in respect of at least one request, the appeal as a whole is admissible (Case Law of the Boards of Appeal [CLB], 9th edition 2019, V.A.2.6.3, third paragraph).

(b) It is not an absolute requirement for admissibility that the appellant should attack the contested decision as flawed. Where amended claims are filed, an appeal [by an applicant or patentee] may also be admissible if sufficient reasons are given in the statement of grounds why the amendments are considered apt to remedy the deficiencies identified by the opposition division (CLB, supra, V.A.2.6.5.c)).

(c) Whether the appellant's arguments are convincing or likely to be successful is irrelevant for the purposes of determining the admissibility of the appeal (CLB, supra, V.A.2.6.2, first paragraph, final sentence, and 2.6.6).”

• “ an appeal is not necessarily rendered inadmissible by an appellant-proprietor filing amended claims, and defending the patent solely on the basis of claims as amended in the grounds of appeal”
• “The mere absence of any admissible request from an appellant-proprietor does not constitute per se a sufficient reason that automatically renders the appeal inadmissible, but rather could lead to a dismissal of such appeal.”
• In the case at hand, the appeal of the patentee is found to be admissible. However, the sole claim request is not admitted into the proceedings and the appeal is dismissed.

T 1320/19 

https://www.epo.org/law-practice/case-law-appeals/recent/t191320eu1.html

decision text omitted.

T 2147/16 - Proven further technical effect and Comvik

 Key points

• Another decision highlighting that also for inventive step of a software invention, the (further) technical effect must be 'proven'.
• “such further technical effect must be specifically and sufficiently documented in the disclosure of the invention [i.e. in the application as filed, see r. 5.5.1] and be reflected in the claim wording”

“The mere assumption that an algorithm is optimised for the computer hardware and may have a technical contribution is not sufficient. The implementation of an algorithm in a method for filtering spam messages must have a proved [sic] further technical effect or specific technical considerations; such further technical effect must be specifically and sufficiently documented in the disclosure of the invention and be reflected in the claim wording; the algorithm must serve a technical purpose.”

T 2147/16 -

https://www.epo.org/law-practice/case-law-appeals/recent/t162147eu1.html

Reasons for the Decision

[...]

5.3.6 The Appellant argued that in the proposed algorithm rather than processing all received electronic messages on each individual user computing device, the invention used a client mail server. Design and implementation of innovative algorithms and data structures went beyond a particular mathematical formulation of the task of classifying electronic messages. The invention utilised a cluster rating system to obtain and analyse metadata of the unknown messages and classify these unknown messages using a cluster index tree data structure. The cluster rating was dynamically changing during the course of the filling of all clusters with various metadata of incoming electronic messages. The invention analysed mass messages sent by various sources over time and updated cluster ratings and therefore allowed to classify unknown messages more accurately. The method therefore facilitated an improved performance of a computer and computer network. Therefore, the method achieved the technical effects mentioned in section VIII above.

5.3.7 The Board agrees in so far with the arguments of the Appellant as the combination of comparing digital text content by similarity preserving hashing and dynamic cluster rating may be considered an algorithm optimised for the computer hardware and may have a technical contribution. However, this mere assumption is not sufficient. The Board is of the opinion that

(a) the implementation of an algorithm in a method for filtering spam messages must have a proved further technical effect or specific technical considerations;

(b) such further technical effect must be specifically and sufficiently documented in the disclosure of the invention and be reflected in the claim wording;

(c) the algorithm must serve a technical purpose.

T 2593/16 - The mere possibility that a technical effect is present

 Key points

• This decision feels like plausibility in the software field.
• The Board: “the mere possibility that a technical effect is present for some subset of the claimed matter is not sufficient (T 1294/16, points 25 and 26.2). The claimed selection of specific filter parameters can therefore be disregarded when assessing inventive step (T 0641/00, point 6), which means that no inventive step can be acknowledged over D1.”

T 2593/16 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t162593eu1.html

The Board agrees with the Examining Division that claim 1 lacks inventive step.

6.1 D1 provides for a family of (mathematically formulated) filters that can be adapted to every object size and image resolution by choosing the appropriate filter scale by the parameter sigma, and to the object shape patterns by e.g. the parameter c. The skilled person would employ these filters to provide object descriptors for specific problems (e.g. face recognition in an airport implying an expected face size and image resolution), none of which is however claimed.

6.2 When doing so, the skilled person needs to perform the said adaptation; depending on the object and image characteristics, the selected filters will be different. No set of selected filters will be beneficial, in the sense of providing the desired accuracy and computational efficiency, for all objects and images.

6.3 The application does not link the claimed choice to a specific dataset on which it would be beneficial. Even if it would, the claims do not specify any image or object characteristics, which means that, when considering the said breadth of the claim, for most datasets this choice is not beneficial. Consequently, the claimed parameterization does not predictably bring about a technical effect over a reasonable extent of the claim, which means that the filters cannot be said to contribute towards providing a technical solution to a concrete technical problem; the mere possibility that a technical effect is present for some subset of the claimed matter is not sufficient (T 1294/16, points 25 and 26.2). The claimed selection of specific filter parameters can therefore be disregarded when assessing inventive step (T 0641/00, point 6), which means that no inventive step can be acknowledged over D1.

T 0806/18 - The Search Division should not adopt a purely algorithmic approach

 Key points

• This appeal concerns the refund of the search fee (in addition to clarity). The Board in the headnote: “In determining whether or not to request further search fees from an applicant, the Search Division should not adopt a purely algorithmic approach, but should consider whether it would be reasonable, under the circumstances of the case and in the light of the subject-matter already searched and the prior art found, to demand additional fees for extending the search to the remaining claims”
  
• First to the main issue of clarity: “Claim 1 of the present main request differs considerably from the version which was rejected by the Examining Division on the grounds that it failed to meet the requirements of Article 84 EPC. The Board sees no reason to object to the present version under Article 84 EPC.” Admissibility of the amended request is not discussed.
• As to the search fee: “he Examining Division reviewed the non-unity finding pursuant to Rule 64(2) EPC to determine whether the request for a further search fee was justified, and in the contested decision the request for reimbursement was rejected ”
• The Search Division found non-unity a posteriori, i.e. following the finding that claim 1 lacked novelty over D1. Where an independent claim is found to lack novelty, it is often the case that a formal objection of lack of unity of invention could be envisaged between two or more groups of dependent claims. However, the Search Division (or the Examining Division reviewing a non-unity finding pursuant to Rule 64(2) EPC) should bear in mind that unity of invention under Article 82 EPC is "merely an administrative regulation" (G 1/91, Reasons, point 4.1)”
• The Boards instruct that the Search and Examining Divisions should give due consideration to the following advice from the Guidelines: "Lack of unity is not a ground of revocation in later proceedings. Therefore, although the objection is certainly made and amendment insisted upon in clear cases, it is neither raised nor insisted upon on the basis of a narrow, literal or academic approach. This is particularly so where the possible lack of unity does not necessitate a further search."
• However, in the present case, claim 3 was part of the first invention and the claim 6 at issue “relates to essentially the same subject-matter as claim 3, with claim 3 going into more detail” (however, there is an issue with claim dependencies)
• “ it is clear from the search opinion that the Search Division considered the additional features of claim 3 to be incapable of contributing to inventive step on the basis of documents already present in the partial search report”
• “In the light of this, the Board does not see why a further search,  requiring the payment of an additional search fee, could logically be deemed necessary for the subject-matter of claim 6.”

T 0806/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t180806eu1.html

5. Request for a Refund of the Additional Search Fee

5.1 As a result of a finding of lack of unity of invention (Article 82 EPC), a partial European Search Report pursuant to Rule 64(1) EPC was drawn up. An attached communication (supplemental sheet B) explained that the common concept linking the dependent claims was considered to be the subject-matter of claim 1, which was not new in the light of D1. The subject-matter of claims 2 and 6 did not fulfill the requirement of unity of invention (Article 82 and Rule 44 EPC), and hence two inventions which were not so linked as to form a single general inventive concept could be identified based on the following groupings of claims:

Invention 1: claims 1-5, 7-11

Invention 2: claims 6, 12.

The partial European search report included the following statement: "The present partial European search report has been drawn up for those parts of the European patent application which relate to the invention first mentioned in the claims"; hence, the subject-matter of claims 1-5 and 7-11 was searched. Three documents (D1-D3) were cited as follows: D1 as "X" for claims 1 and 7; D1 and D2 as "Y" for claims 2-5 and 8-11; D3 as "Y" for claims 3, 4, 9 and 10.

T 1066/18 - An effect that is not claimed

 Key points

• The OD found the claims to be insufficiently disclosed because it would be unclear how the advantage, mentioned in the description but not recited in the claims, can be achieved. The Board reverses in view of G2/03. This is all fairly standard case law, except for one sentence in the Board's decision.
• The Board agrees that the skilled person can reduce the claimed subject-matter to practice.
• “Die Einspruchsabteilung und die Beschwerdegegnerin [opponent] sehen das jedoch nicht als hinreichend an, sondern meinen, die Lehre der Erfindung müsse so ausführlich offenbart sein, dass der Fachmann eine Wirkung zuverlässig erzielen könne, die in der Beschreibung als angestrebt offenbart sein, selbst wenn der Anspruch diese Wirkung nicht ausdrücklich fordere.”
• The Board explains that in view of G1/03, r.2.5.2, “Dabei sei entscheidend, ob eine einschlägige Wirkung im Anspruch gefordert werde oder nicht. In jenem Fall folge unzureichende Offenbarung, in diesem ein Mangel an erfinderischer Tätigkeit.”
• The Board briefly discusses the problem-solution approach, in an obiter remark r.4.3.3 in translation: " The problem-and-solution approach used by the EPO to assess inventive step defines it as the objective technical problem to achieve the effect that is determined by comparing the claimed invention with the "closest prior art". An effect that is not claimed is not included in this comparison. In addition, the objective technical problem is regularly different from the (only) disclosed, "subjective" problem." 
• I am not sure if the sentence in italics is established case law (original : Dabei geht eine nicht bean­spruch­te Wirkung nicht in diesen Vergleich ein). If it is many claims directed to a compound as such (e.g., say, the dasatinib molecule) would lack a technical effect.

T 1066/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t181066du1.html

4.3.3 Der am EPA weit überwiegend verwendete Aufgabe-Lösungs-Ansatz zur Bewertung der erfinderischen Tätigkeit be­stimmt es als die objektive technische Aufgabe, die­je­ni­­ge Wirkung zu erzielen, die durch Vergleich der bean­spruchten Erfindung mit dem "nächstliegenden Stand der Technik" bestimmt wird. Dabei geht eine nicht bean­spruch­te Wirkung nicht in diesen Vergleich ein. Zudem ist die objektive technische Aufgabe regel­mäßig von der (nur) offenbarten, "subjektiven" Aufgabe verschie­den.

T 2174/16 - Broader dependent claim

 Key points

• Claim 1 as granted specifies particles of at least 20 nm*, dependent claim 3 as granted specifies at least 15 nm; in opposition the patentee combines claims 1 and 3. The questions is whether this is permitted under Art. 123(3) ?
• The feature at issue is actually the ' span value' of the particles, but this is not relevant for the decision.
• The Board: “Since the lower limit of the span value in claim 1 of the main and first auxiliary requests is lower than that in granted independent claim 1, and its dependent claims, namely 15 nm instead of about 20 nm, the scope of protection which would be conferred by claim 1 of the main and first auxiliary requests is broader than the scope of protection conferred by the claims as granted, such that the requirements of Article 123(3) EPC are not satisfied (also see T1702/12; point 4 of the reasons).”
• “The Board points out that establishing the scope of protection is a question of law. Indeed, scope of protection is an issue which is typically decided by a judge in infringement proceedings. Thus the claims are not only to be read with the understanding of the technically skilled person, but also by the lawyer, and their scope has to be established accordingly. The overall purpose of the provisions of Article 123(3) EPC is primarily a legal purpose, namely legal certainty for third parties that they will not be confronted with broader claims after amendments made in opposition. Therefore the principle of legal certainty which is of upmost importance with regard to scope of protection conferred by the patent as granted must be taken into account and the general principle that a claim drafted as dependent claim contains all the features of the independent claim to which it refers must normally apply, as far as possible with a reasonable claim interpretation.”

 T 2174/16 -

https://www.epo.org/law-practice/case-law-appeals/recent/t162174eu1.html

decision text omitted.

T 1456/20 - The first level of convergence

T 1456/20 - The first level of convergence

 

 Key points

• This is an accelerated appeal, thereby resulting in one of the first decisions of the Board applying Art. 12(4) RPBA 2020 to hold requests filed with the Statement of grounds inadmissible. 
• In this opposition case, both patentee and opponent appealed.
• The claims of the main request are found to be not novel. A number of auxiliary requests are rejected as involving unclear amendments. The other auxiliary requests are held inadmissible as basically late-filed.
• In the following, I summarize the Board's decision. From a brief study of the file wrapper, the case may generally illustrate that Article 12 RPBA 2020 can be applied very strictly. Basically, the Board appears to have considered the main request allowable in the preliminary opinion, but after the opponent persuaded the Board of one of the novelty attacks during the oral proceedings, all auxiliary requests were lost on clarity and admissibility. It's not so easy to say how the patentee should have proceeded in my view.

Article 13(2) and the two-month period for rejoinders

• A few further requests are not admitted under Article 13(2) RPBA 2020, because they are filed after the summons and responsive to objections submitted by the opponent in its reply to the appeal of patentee.  “Die entsprechenden Einwände waren somit schon zuvor Bestandteil des Beschwerdeverfahrens (Artikel 12 (1) a), c) VOBK 2020), weshalb eine zeitnahe Reaktion der Patentinhaberin auch hierauf schon vor der Mitteilung der Kammer veranlasst gewesen wäre.”
• The patentee had sufficient time to submit a rejoinder to the opponent's reply statement, because as the Board notes, summons are issued not earlier than two months after receipt by the Boards of the respondent's reply statement, under Article 15(1) RPBA 2020.
• “Daraus folgt im Umkehrschluss, dass die Parteien damit rechnen müssen, dass die Kammer zwei Monate nach Eingang der Beschwerdeerwiderung zur mündlichen Verhandlung laden könnte.”
• Moreover, the patentee should have been aware that the Board had decided to accelerate the appeal proceedings and therefore would issue summons quickly (Art. 10(6) RPBA 2020).
• The opponent's objection that the (earlier pending) auxiliary requests were not convergent, is not a reason for admitting the auxiliary requests, because the patentee should be aware of the convergence requirement. “Das Konvergenzkriterium ist nämlich eine Ausprägung der Verfahrensökonomie, deren Nichtbeachtung in bestimmten Verfahrensabschnitten nach Artikel 12, 13 VOBK 2020 auch ohne einen entsprechenden Einwand der Einsprechenden zur Nichtzulassung neuer Anträge führen kann.”
• The fact that the AR is based on a combination of already pending (independent?) claims, is not a reason for admitting the AR. “Auch eine Kombination von aus verschiedenen vorangegangenen Hilfsanträgen stammenden Ansprüchen stellt im vorliegenden Fall eine Änderung des Beschwerdevorbringens dar, welche die Einsprechende und die Kammer mit einem neuen Anspruchsgegenstand und damit mit einem neuen Sachverhalt konfrontiert, ”

Reinstating withdrawn requests

• During the oral proceedings, the patentee reinstates an auxiliary request that it had filed with its statement of response (to the opponent's appeal) and subsequently withdrawn with a letter in the appeal proceedings.
• This is an amendment of the patentee's appeal case under Art. 13(2) RPBA 2020
• Patentee's argument that the request was no surprise for opponent does not hold. "Im Gegenteil, da die Patentinhaberin den Hilfsantrag A bereits mehrere Wochen vor der mündlichen Verhandlung zurückgenommen hatte, bestand für die Einsprechende keine Veranlassung mehr, Vorbringen zu diesem Antrag und den darin beanspruchten Gegenständen für die mündliche Verhandlung vorzubereiten. Die Wiedereinführung des Antrags würde die Einsprechende unter diesen Umständen unangemessen benachteiligen."
• The fact that the request is more restricted is not a valid argument either. “Gerade ein stärker beschränkter Gegenstand kann nämlich vom Einsprechenden zusätzliche Recherchen im Hinblick auf die Patentfähigkeit erfordern und unter Umständen eine weitere Prüfung im Hinblick auf die Anforderungen der Artikel 123 (2) EPÜ und Artikel 84 EPÜ erforderlich machen, wenn - wie hier - Merkmale aus der Beschreibung aufgenommen werden”
• The fact that the appeal proceedings were accelerated was not a valid argument either. “Vielmehr müssen Parteien, die - wie hier - wegen besonderer Dringlichkeit die Beschleunigung des Verfahrens begehren, ihr Prozessverhalten im Regelfall auf diese Beschleunigung einstellen, denn anderenfalls könnte die begehrte und angeordnete Beschleunigung durch das Verhalten einer Partei beliebig unterlaufen werden.”

Art. 12(6)(s.2) RPBA 2020

• Request 7, filed with patentee's statement of reply, is not admitted under Art. 12(6)(s.2) RPBA 2020 as the request should have been filed during the first instance proceedings. 
• The OD had found claim 1 directed to a bracket to be not novel. The patentee then filed requests directed to a bracket system before the OD. Submitting new requests directed to the bracket as such, with added features to create novelty, for the first time in appeal contravenes the purpose of appeal proceedings under Art. 12(2) RPBA 2020 and the requests are not admitted.
• The Board in translation: “The reintroduction of an item that was deliberately not presented ("auf dessen Überprüfung in erster Instanz bewusst verzichtet wurde")  in the first instance proceedings contradicts the purpose of the appeal procedure as a review instance as stipulated in Article 12 (2) RPBA 2020. According to Article 12 (6) sentence 2, 1st half-sentence RPBA 2020, such applications are therefore generally not permitted.”
• I'm not sure how the Board knows for sure that the request was deliberately not presented (" bewusst verzichtet ") before the OD; perhaps the representative simply did not think of the amendment during the oral proceedings as a reply to a new attack of the opponent.
• The efforts of patentee to reduce the number of auxiliary requests before the OD, is rejected as ground for admitting the request in appeal: “Gleiches gilt für das Bestreben der Patentinhaberin, die Anzahl der Anträge im Einspruchsverfahren zu begrenzen, indem Anträge entgegen Artikel 12 (2) VOBK 2020 erstmals im nachfolgenden Beschwerdeverfahren gestellt werden.”
•  

7. Hilfsantrag 8bis - Berücksichtigung unter Artikel 13 (2) VOBK 2020

 

• The patentee argues that the request, resubmitted during the oral proceedings, should be admitted based on the argument that the patentee had tried to keep the number of requests low in the written proceedings.
• “Das Zurückhalten eines Antrags bis zur mündlichen Verhandlung - auch wenn dies zum Zwecke der Beschränkung der Anzahl der Anträge erfolgen sollte - steht im Übrigen im Gegensatz zu Artikel 12 (3) VOBK 2020, der bestimmt, dass bereits die Beschwerdebegründung bzw. -erwiderung das vollständige Beschwerdevorbringen enthalten müssen.”
•  

9. Hilfsantrag 10 - Berücksichtigung unter Artikel 13 (2) VOBK 2020

• In this request, filed during the oral proceedings, the only independent claim is directed to the bracket system.
• The request was based on claims 13-25 of an earlier request, so claims were cancelled compared to the earlier auxiliary request.
• " Hilfsantrag 10 umfasst eine Anspruchskombination, die bislang nicht Gegenstand des Verfahrens war. Es handelt sich somit um eine Änderung des Beschwerdevorbringens der Patentinhaberin im Sinne von Artikel 13 (2) VOBK 2020, für deren Berücksichtigung im Beschwerdeverfahren die Patentinhaberin stichhaltige Gründe für das Vorliegen außergewöhnlicher Umstände aufzuzeigen hat." 

 

 

 

T 1456/20 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t201456du1.html

 

decision text omitted.