T 0862/16 - Secondary legislation

 Key points

• This decision was published already in March 2021.
• In an opposition appeal, "the board raised, ex officio, a further objection under Article 76(1) EPC (to be referred as objection (vii)), namely that claim 1 uses the formulation "means for performing an RRC Reconfiguration procedure to resume a data radio bearer other than a signaling radio bearer 1  when an RRC connection is re-established", whereas the parent application as filed uses the formulation "all radio bearers other than a signaling radio bearer 1" (cf. claim 1 and paragraph [0003], line 10 of the parent application as published). Thus, claim 1 now embraces the possibility that not all other radio bearers will be resumed, as opposed to the teaching of the parent application as filed." 
• " The appellant [patentee] objected to the board's raising new issues in the appeal proceedings, arguing that new Article 12(2) RPBA 2020 establishes the character of the appeal proceedings as a judicial review in which the parties have only very limited room for amending their case with respect to the first-instance proceedings. The board therefore should be similarly constrained from introducing new objections of its own motion. This is not persuasive, as will be discussed later when dealing with the request for referral to the Enlarged Board of Appeal (cf. point 8 below)." 
• The Board admits an auxiliary request. " In the present case, the board, exceptionally, raised a new objection ex officio. Consequently, the requirement for there to be "exceptional circumstances" is met." 
• Turning again to the issue of the Board raising a new objection: " The board sees here no provision, or any other provision of the Rules of Procedure, which could and would restrict its power conferred by Articles 111(1) and 114(1) EPC to raise new objections of its own motion. This would, moreover, be "incompatible with the spirit and purpose of the Convention" (cf. Article 23 RPBA 2020). Thus, provisions of the RPBA as "secondary legislation" according to Article 23(4) and Rule 12c EPC could never take precedence over the provisions of the EPC itself (cf. Article 23(3) EPC)." 
• " Although G 10/91, OJ 1993, 420, imposes a limitation on the scope of examination, in inter partes appeal proceedings, that fresh grounds for opposition can only be introduced with the proprietor's consent, by "ground for opposition" is here meant one of the legal bases set out in Article 100 EPC. This is consistent with a "ground" being considered as the legal basis (cf. G 1/95, OJ 1996, 615, point 5.4 of the reasons), and not the factual basis, which concerns the facts, arguments and evidence relied on ([G 1/95] cf. point 3.1 of the reasons). The board is not aware of any case law which would regard two objections having the same legal basis, e.g. Article 76(1) EPC, which concerns the ground for opposition pursuant to Article 100(c) EPC, as being separate grounds for opposition within the meaning of G 10/91." 
• " Moreover, in case of amendments of the claims in the course of inter partes appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (see G 10/91, point 19 of the reasons). The board notes in passing that in ex parte appeal proceedings any new ground, i.e. not examined by the first-instance department, can be invoked by a Board of Appeal under Article 114(1) EPC during the appeal proceedings (cf. G 10/93, OJ 1995, 172, Headnote)." 
•  " That the board may raise new objections, such as even a new inventive-step objection, is furthermore confirmed by the Enlarged Board of Appeal (see e.g. R 16/13, points 5.1 and 5.2 of the reasons). This is also consistent with Article 13(1) RPBA 2020, which mentions "the issues which were admissibly raised by another party in the appeal proceedings or which were raised by the Board". 
• " It goes without saying that, when a new objection is raised, the proprietor's right to be heard must be respected (Article 113(1) EPC), but that is a separate issue (see also explanatory remarks to Article 13(1) RPBA 2020, penultimate paragraph, last sentence: "Where the Board raises an issue of its own motion under Article 114(1) EPC, the party's right to be heard under Article 113(1) EPC must be respected")." 

T 0862/16

decision text omitted.

https://www.epo.org/law-practice/case-law-appeals/recent/t160862eu1.html

J 0005/19 - Allowed retraction of withdrawal application

Key points

• "with a letter dated 3 May [2018], the appellant withdrew the application and requested that the fees be refunded. A divisional application was filed on 8 May 2018 (No. 18171252). Both the withdrawal of the parent application and the filing of the divisional application were mentioned on the same date, namely on 11 May 2018, in the case file of the parent application. The European Patent Register (hereinafter: "the register") reported the filing of the divisional application without indicating the date on which it was filed." 
• "On 29 May 2018 the appellant's representative filed a request to "retract" the withdrawal of the application under Rule 139 EPC. It argued that the application was withdrawn due to a mistake. Its true intention had been to file a divisional application first and to withdraw the application afterwards; however, the order of these steps had been mixed up."
• The Board allows the request.
• "According to the case law of the boards of appeal it is possible to correct the withdrawal of an application under Rule 139 EPC. This is true even if the withdrawal has already been published in the register. However, this correction is only possible if it meets the following cumulative conditions: (a) the withdrawal did not reflect the true intention of the applicant (existence of a mistake within the meaning of Rule 139 EPC); (b) there was no undue delay in seeking its correction (J 04/03, point 9 of the Reasons; J 10/87, point 13 of the Reasons); (c) third parties who might have taken note of the withdrawal by inspection of the file would have had reason to suspect that the withdrawal was erroneous (see J 10/08, point 12 of the Reasons; J 2/15, point 13 of the Reasons; J 8/06, point 6 of the Reasons)."
• "Some decisions by the board have required a further condition to be met, more specifically that the error was due to an excusable oversight (e.g. J 04/03, point 9 of the Reasons; see also J 10/87, point 13 of the Reasons). This board cannot adhere to this case law for the following reasons. ... [G 1/12 does not mention such a requirement]. "
• "In assessing whether the withdrawal was due to a mistake, only the intention of the applicant and not that of the European representative is relevant. The decision to withdraw the application indeed lies with the former and not the latter. Therefore, only the represented party's state of mind matters, and not that of the representative. Exceptions may apply "
• " Next, the board is satisfied that the request was filed without delay. The communication that the second application could not be treated as a divisional application was issued on 22 May 2018. The request for correction was filed on 29 May 2018."
• "The specific circumstances of this case are that third parties were informed at the same time that one parent application was withdrawn and one divisional application was filed, without knowing the chronological order of the two events. Regardless of what they may have assumed in light of these circumstances, they would in any case have realised that the invention disclosed in the parent application could still be the subject-matter of a pending application, either because the parent application could be reinstated under Rule 139 EPC, or because the divisional application was effectively filed under Article 76 EPC."
  
• "According to the request filed at the oral proceedings the withdrawal will be corrected such that it was made in a period of time between 9 and 20 May 2018. In the board's view the result which this request aims to achieve corresponds to the true intention of the applicant for the following reasons."
• The Board decides that: "The withdrawal of European patent application No. 15750584.3 is corrected such that it was made on a date between 9 and 20 May 2018."

EPO J 0005/19 -

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0184/19 - Art. 12(4) RPBA 2007 vs. 2020

Key points

• The patentee files AR 3-6 with the statement of grounds on 22.03.2019. The opponent requests that they are held inadmissible.
• "Auxiliary requests 3,4,5 and 6 correspond to the like numbered auxiliary requests filed shortly before the oral proceedings in opposition but which were not examined."
• "The Board can see no reason why these requests that were re-filed in appeal should not be admitted under the applicable rules of procedure, Article 12(4) 2007."
• " the Board in exercising its discretion refrained from not admitting these requests into the proceedings, Article 12(4) RPBA 2007."
• The Board's reasoning is a bit remarkable because Article 12(4) RPBA 2007 states: "Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, everything presented by the parties under (1) [including the Statement of ground] shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirements in (2).". 
• There is no dispute that the requirements of Art. 12(2) RPBA 2007 were  met. 
• This means that only the  the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings" can be at play.
• However, the requests were actually submitted before the OD, and they were not held inadmissible by the OD (the OD did not arrive at them, finding AR-2 to be allowable).
• Clearly this is different under new Art. 12(4) RPBA 2020.

EPO T 0184/19

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0660/16 - Review of case-management measure

Key points

• "On appeal, the patent proprietor argued that the opposition division should not have heard the witness. " 
• "Opponent 1 argued that the opposition division's decision to hear the witness could not be contested." 
• "Contrary to the view of opponent 1, the board has to examine the patent proprietor's request to review the correctness of this part of the opposition division's decision. An order to take evidence is neither an appealable decision under Article 106(1) EPC nor an interlocutory decision allowing a separate appeal within the meaning of Article 106(2) EPC. Instead, it is a case-management measure that precedes a substantive decision and cannot be reviewed as long as the proceedings are still pending. The review may occur once a substantive decision (in this case the opposition division's interlocutory decision referred to at point I. above) is issued (Case Law of the Boards of Appeal of the EPO, 9th edition, 2019, Chapter V.A.2.2.2 b)(xiii))." 
• That paragraph in the CLBA cites just one decision: T 1954/14  (post). That case was an appeal against a summons by the OD to hear a witness. The appeal was rejected as inadmissible. In my view, that is not quite the same as a decision that the decision to summon a witness, can be challenged in appeal.
• Article 106(2) indeed provides that "a decision which does not terminate proceedings as regards one of the parties can (...) be appealed together with the final decision (...)" (omitting the part about leave to appeal), but I'm not sure if this covers a case management "measure" as such (note, the Board does not say "case management decision"). On the other hand, where a case management decision/order/measure results in a substantial procedural violation, this may be a ground for setting aside the substantive decision. 
• Assuming for the moment that the Board meant to review the first instance proceedings for an alleged substantial procedural violation, a further issue is that there must both have been a procedural error of the OD, and an adverse effect of that error for the patentee. Harmless errors do not amount to a substantial procedural violation. I'm not sure if hearing a witness as such can adversely affect a party, provided that the parties are given enough time to comment on and rebut the evidence given by the witness.
• The Board also reviewed the substance of the factual findings by the OD regarding the public prior use.
• As a separate issue, if the order to take evidence was an interlocutory decision not including a leave for separate appeal, the present case illustrates that the phrase  "only be appealed together with the final decision" in Art.106(2) in fact may mean "may be appealed with the next interlocutory decision that includes a leave to appeal" - in the present case, the proprietor should indeed not have waited for the final decision of the OD to maintain the patent in amended form after the payment of the fee and filing of the translated amended claims of Rule 82. 
• On inventive step over the public prior use: "the product of the public prior use would have been available to the skilled person in May 2006. There is nothing that would prevent the skilled person from using a real product, with all its features established above, as the closest prior art."
• "The board fails to see an inventive step in adjusting the moisture content to a range that is conventional in the field of manufacturing pellets and that is not associated with a technical effect."
• 
  

EPO T 0660/16 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 3120/19 - Witness hearing unjustly denied

Key points

• "The appeal was filed by the appellant-opponent against the decision of the Opposition Division to reject the opposition against the patent in suit.'
• "The Opposition Division decided not to hear the witness Mr. Jepsen, offered in support of the prior use E-66."  The OD found the claims as granted to be novel and inventive."
• "The appellant-opponent submits that the Opposition Division infringed their fundamental right to be heard, Article 113(1) EPC, by its refusal to summon the witness Mr. Jepsen." 
• "It is well-established in the jurisprudence of the boards of appeal that failure to consider evidence submitted in due time will normally constitute a substantial procedural violation in that it deprives a party of their fundamental right to free choice of evidence and the right to be heard, as enshrined in Articles 117(1) and 113(1) EPC" 
• "The relevant facts and conclusions of the Opposition Division during the proceedings before it are as follows. With the notice of opposition, the appellant-opponent submitted evidence in support of prior use E-66 and an associated objection of lack of novelty for granted claim 1 []. Prior use E-66 was substantiated on the basis of a technical drawing E5, a statutory declaration by Mr. Jepsen (E6), and an offer to hear Mr. Jepsen as witness to corroborate the alleged facts of the prior use." 
• "According to the applicable version of the Guidelines (November 2018), G.IV.7.2 it is recommended that "[I]f the prior use or certain circumstances relating to it are contested, the division will need to take further evidence (e.g. hearing witnesses or performing an inspection) for those facts which are relevant to the case and which cannot yet be considered proven on the basis of the evidence already submitted". It was for this very reason that Mr Jepsen was offered as witness, namely to corroborate the alleged facts stated in [the written declaration of Mr. Jepsen; E6] and now contested by the proprietor. The Opposition Division should thus have followed the approach in the Guidelines." 
• At this point, it may be useful to clarify that to "offer" a witness is actually a formal request of a party to hear a witness (as I understand it), with the particular feature that the witness is "on the side" of the party making the request (note, you can very well request the EPO to summon a witness that is connected to the adversarial party or that is unrelated to any party, provided you can give contact details of the witness. It's just that the EPO can not compel a summoned witness to appear and testify [*]).
• * - addendum 29.03.2023: this should be read as: to appear and testify before the EPO. I do not exclude that the EPO can compel certain persons to testify before a national court through Art. 131 EPC. 
• "This hearing of a witness is decided by the EPO, Rule 117 EPC, and normally takes place at the oral proceedings long after the offer to hear the witness will have been made. By virtue of these facts information elicited by hearing a witness upon a decision of the EPO cannot therefore automatically be considered late filed and thus disregarded under Article 114(2) EPC, contrary to the respondent proprietor's view. Therefore the Opposition Division was wrong to conclude in section 12 of the impugned decision: "As it was not apparent what specific additional information would be provided by the witness, other than repeating his sworn statement in person, ... , then it was not felt by the OD to serve a useful purpose to hear the witness in person". As the appellant opponent correctly observed, such an approach would generally obviate hearing witnesses at all, and parties would then (in cases involving a witness) only rely on sworn statements by the witness under Article 117(1)(g) EPC filed in advance in the notice of opposition." 
• As a note, the custom of hearing of the witness during the oral proceedings was probably a result of the practical need to travel to Munich. With videoconference witness hearings, I think it is possible to hear witnesses earlier in the procedure. The OD can designate one member to hear the witness (Rule 119 EPC).
• "As explained in T 0474/04, reasons 8, [...] [in] case a witness is heard, there are additional approaches how the reliability of his testimony may be scrutinized that are not available from the evaluation of written evidence alone. These may inter alia concern the memory of the witness, the question whether his testimony is based on his own observations or on conclusions drawn by him, or on information from others, or the question whether the witness was able to observe what he claims to have observed. They may also concern the witness himself, factors which may indicate that he tells the truth or, on the contrary, that his testimony is based on an error in perception or recollection, on hearsay, or that he is not willing to tell the whole truth and nothing but the truth." 
• "It is for these reasons that if hearing of the witness has been offered or requested on matters that are contested and which are decisive to the outcome of a case such an offer or request to take evidence should normally be taken up." 
• "The principle of free evaluation of evidence is only applicable after the evidence has been taken and cannot be used to justify not taking evidence that has been offered, cf. T 0474/04" 
• The Board also notes that the alleged public prior use was sufficiently substantiated in the Notice of opposition: " It suffices for the purpose of Rule 76(2)(c) EPC that the facts and evidence are indicated to a degree that allows patentee and opposition division to see clearly what attack was being mounted against the patent, and what evidential support was being adduced for that attack (CLBA, IV.C.2.2.8 a) and in particular the cited T 0204/91). " 
• It is not clear to me, generally, whether there is a concept of partial inadmissibility of a Notice of opposition under Rule 76(2)(c) EPC (because in this case there were other lines of attack based on published prior art documents).
• " Where prior use relies on a witness, as is in this case, it is enough to name the witness and indicate the alleged facts for which the witness is called, CLBA, IV. 2.2.8 d)." 
• In connection with T 1911/17, I think the opponent may very well have an evidential burden to present some corroborating evidence already when the witness is offered, but that requirement was clearly met in the present case.  
• The Board also notes that the alleged prior use was critical to the outcome of the case: "The Board therefore concludes that if the evidence E5 and E6 is taken at face value, it appears to show all features of claim 1. Thus, the prior use, if proven, would be prejudicial to novelty of granted claim 1 and thus highly relevant" (the OD only needs to hear a witness if the alleged facts to be proven by the witness hearing can be decisive for the outcome of the case).

EPO T 3120/19 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1202/19 - Holding claims admitted by OD inadmissible

Key points

•  Claim 1 of the Main Request is directed to: "Use of McCoy cells persistently infected with Lawsonia intracellularis bacteria to grow and obtain these bacteria in purified form"
• "Lawsonia intracellularis is highly pathogenic." (wiki). 
• This post is however about procedural aspects of the case.
• The OD revoked the patent. The Board finds the claims of the main request to be not novel and AR-1 to AR-8 to be not allowable.
• Turning to AR-9 to AR-17: "The opposition division admitted auxiliary requests 9 to 17 into the opposition proceedings and considered that they did not overcome the objections discussed at the oral proceedings before the opposition division."
• "The respondent [opponent] contests this decision and maintains the objection against their admission already raised before the opposition division. Reference is made to the established case law and to the course of events at first instance, in particular the renumbering of the auxiliary requests at the beginning of the oral proceedings which had as a consequence the avoidance of a discussion - and thus, a decision - on the subject-matter of granted claim 1."
• "The respondent's [opponent's] request not to admit them into the appeal proceedings is understood mainly as a request to review the discretionary decision of the opposition division."
• The Board holds the requests inadmissible.
• " The sole reason for the opposition division for admitting auxiliary requests 9 to 17 into the proceedings appears thus to be the fact that "the patentee intends to maintain these requests for an eventual appeal against the decision of the opposition division" and so the opposition division considered it "legitimate to maintain the auxiliary requests as fall-back positions" [as stated in the decision under appeal]. The board, though, considers that it is not reasonable to admit claim requests into the opposition proceedings for the sole reason of providing fall-back positions in possible appeal proceedings; "
• "Claim 1 of auxiliary requests 9 to 17 is directed to a method to obtain McCoy cells persistently infected with Lawsonia intracellularis bacteria. " AR-9 to AR-17 also include a second independent claim being a use claim. The OD found the use claims not allowable for the MR and AR-1 and thereby could held AR-9 to AR-17 unallowable without examining the independent method claim. 
• The issue is probably that if AR-9, filed with the SoG / already before the OD is admitted, cancelling the use claim could be an attempted amendment in the course of the appeal proceedings.
• 
  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2125/18 - In principle (in Art. 13(2) RPBA)

Key points

•  Article 13(2) RPBA provides that case amendments are in principle not taken into account in a certain stage of the appeal proceedings, unless an exception applies. The Board in the present decision provides an interpretation of the phrase "in principle".
• As a comment, I speculate that the phrase "in principle" was possibly added into new Art. 13(2) RPBA during the discussions about the draft provision in the decision making process as a kind of compromise.e In other words, I suspect that there was some debate about Article 13(2) and that "in principle" was included in order to have sufficient support for the new provision and/or to accommodate strong reservations (edited 21.04.2022).
• The present Board: "First, the terminology "in principle" can only be understood to refer to the general principle which is to be observed at this late stage of the appeal procedure. This is because Article 13(2) RPBA 2020 is that part of the RPBA which is the most stringent - i.e. it defines the "third level of convergence". Thus, the wording "in principle" cannot be understood to mean that it can be applied simply where the Board finds it fitting, because this would reduce its application to the far broader discretionary powers granted to the Board under Article 13(1) RPBA 2020."
• "Also, it is only logical when following the concept of the three levels of convergence (as explained in e.g. the explanatory remarks to Articles 12(4), 13(1) and 13(2) RPBA 2020) that such a stringent approach must be followed after the less stringent ones, and as the proceedings progress. Indeed, this principle comes into effect only at a late stage of the appeal proceedings (here, after the summons was notified), when a party has made its complete appeal case and any amendments to that appeal case which may have been appropriate under Article 13(1) RPBA 2020. Thus, following the wording of Article 13(2) RPBA 2020, the principle has to be applied, such that, for the Board to take the amendment to the appeal case into account, exceptional circumstances must have arisen."
• Compare T 0172/17.
• The Board gives a very particular meaning to "in principle", but I'm not entirely sure if a native speaker would use "in principle" when trying to convey the concept identified by the Board. Possibly a native speaker would use "as a matter of principle" i.e. according to a dictionary: "a situation that requires something be done a certain way because one believes it is the only right way" (link to Merriam Webster Dictionary)

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1788/19 - CGK provides the solution

Key points

•  "The Examining Division concluded that the skilled person would be led to the claimed solution on the basis of the common general knowledge familiar to the person skilled in the art. In order to assess this argument it is first necessary to establish which "art" we are talking about and who the skilled person is."
• The Board: "according to the problem-solution approach, the starting point for defining the appropriate "person skilled in the art" is the objective technical problem to be solved (see Case Law of the Boards of Appeal, 9th Edition, 2019, I.D.8.1.1, and in particular T 422/93, Headnote, point 1). In the present case, in view of the problem identified above (point 2.4), the skilled person would be a notional thermal engineer, skilled in the field of thermal insulation. Even if the "skilled person" were considered to be a group of people (Op. cit., I.D.8.1.2), which might include specialists in electrospray ion sources [because the application at issue is directed to an " assembly for an electrospray ion source"'], in view of the posed technical problem of providing improved thermal insulation (as proposed by the appellant), this group would have to be assumed to include a notional thermal engineer. What is under discussion is therefore the common general knowledge in the art of thermal insulation."
• "Claim 14 therefore differs from the embodiment of Fig. 3 of D4 only in that the hollow member has "an internal evacuated space". The appellant agrees that this is the distinguishing feature of claim 14. " ...In D4: "This air gap (a cylindrical cavity filled with air, which may be referred to as a "hollow member") "can help to insulate the first gas and sample capillary from the second, heated gas" (see paragraph [0036]), i.e. it impedes the heat transfer from the second gas to the first gas."


• The Board: " the knowledge of the person skilled in thermal engineering would not be limited to a few examples of vacuum insulation which would be familiar to the average layperson. The skilled person would understand, in particular, the physical principle underlying these examples, that by reducing the pressure in a gas layer (e.g. by evacuating air from a sealed enclosure), the thermal insulation provided by the layer can be significantly increased compared with a similar gas layer at atmospheric pressure. Moreover, the skilled thermal engineer would be aware that this principle has much wider application than the examples given by the appellant.  Hence, the use of a vacuum layer in place of the insulating air layer of D4 would, at least in principle, be an obvious measure for the skilled person attempting to improve the thermal insulation."
• The Board: "The Board does not accept that an inventive step attack based on a document representing the closest prior art in combination with common general knowledge is somehow inherently flawed. On the contrary, it is settled case law that common general knowledge may be used in the assessment of inventive step. The matter was put as follows under point 2.3 of the Reasons in T 939/92: "It hardly needs re-stating that the question of inventive step can only be considered on the basis of the relevant state of the art, see Article 56 EPC. However, Article 54(2) EPC does not limit the state of the art to written disclosure in specific documents; rather it defines it as including all other ways ('in any other way') by which technical subject-matter can be made available to the public. Therefore, the absence of a reference to a particular document does not mean that there is no state of the art, as this could reside solely in the relevant common general knowledge, which, again, may or may not be in writing, i. e. in textbooks or the like, or be simply a part of the unwritten 'mental furniture' of the notional 'person skilled in the art'. It is also clear that in the case of any dispute as to the extent of the relevant common general knowledge this, like any other fact under contention, has to be proved, e.g. by documentary or oral evidence ..."."
• 
  

EPO T 1788/19 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2626/17 - Party as of right vs respondent

Key points

• " The present appeal by opponent 1 (Siemens AG) lies from the interlocutory decision of the opposition division [concerning the maintenance of the patent in amended form].
• " The respondents are the patent proprietors 1 and 2"
• Multiple patentees are joint proprietors, Art. 118 EPC, and must have a common representative (R.151 EPC) (subject to Art. 99(4) of course).
• " Opponent 3 (3M Innovative Properties Company) did not file an appeal against the decision of the opposition division and is therefore a party as of right to the appeal proceedings pursuant to Article 107 EPC."
• It is indeed useful to have a different term for the respondent and the non-appealing party that is on the same side as the appellant in the appeal.
  
  
• As to novelty over D4, slides from a conference presentation: " The talk finishes with the statement that fluoroketones might be a viable substitute for [the compound] SF6 and that the employer of the author of D4, the company manufacturing the fluoroketone, is looking for partners for further development of their applications in dielectric applications." 
• " The oral and written description of an idea is appropriate as a novelty-destroying disclosure, as long as the teaching it describes is enabling and not manifestly erroneous. In contrast, an attempt to put the idea into practice is clearly not a prerequisite for making that idea available to the public or to serve as a novelty-destroying disclosure." 
• This may be different for medical use claims.
• Further as to novelty: "The board does not doubt that carbon may form under arcing [as was identified as a risk in D4] and that this is an issue that has to be dealt with in order for fluoroketones to be economically useful as a replacement for SF6. However, the board observes that it would be a highly surprising stance to imply that the disclosure of D4 was not enabling given that claim 1 of the main request does not contain any feature which could be considered to mitigate the problem of carbon formation. If the respondents were of the opinion that the disclosure of D4 was not enabling, the same would logically apply a fortiori also to the subject-matter of claim 1 of the main request." 
• Note, failure to recite essential features is usually raised under Article 84 EPC which is however not a ground of opposition. 
• The opponent's attacks on AR-2 are not admitted. AR-2 was filed by the patentee with the reply to the appeal. The opponent did not timely file a rejoinder. Moreover, the opponent waited for 11 months after receiving the Board's preliminary opinion pointing out the lack of attacks, namely until one month prior to the oral proceedings.
• " Finally, the board is not persuaded by the appellant's argument that even if regarded as amendments, these submissions were filed in a timely manner, since they were submitted one month before the oral proceedings, as required by the board in the communication under Article 15 RPBA 2020. The board notes that the cited passage of this communication explicitly indicated that admittance of any further submissions is governed inter alia by the provisions of Article 13 RPBA 2020 and that, in addition to these requirements, any further submission should be at the disposal of the other party and the board at least one month before the oral proceedings (last paragraph of the communication). Thus the indication of this date cannot be considered as an additional time limit, superseding the framework for admittance established by Articles 12 and 13(1) and(2) RPBA 2020." 

EPO T 2626/17 - 

The link to the decision is provided after the jump, 

T 1911/17 - Burden of proof technical effect

Key points

•  In this opposition appeal, "the opponent submitted that, in view of the proprietors' position that antibody 20G7 [specified in the claim] performed better than antibody 24C5 [used in the closest prior art], the burden to proof this was with the proprietors" 
• The Board: "The "legal burden of proof" is on the party who relies on a legal consequence arising from an alleged positive fact. Accordingly, the "legal burden of proof" is determined by the legal cases which each party presents. The "legal burden of proof" (unlike the "evidential burden of proof") does not shift (see decision T 301/95, OJ 1997, 519, point 6.2.3 of the Reasons). " 
• The terms legal burden of proof and evidential burden of proof don't ring a bell with me.
• The explanation in T301/95: " 6.2.3 Under English law, a distinction is drawn between "legal" or "persuasive burden of proof" and "evidential burden of proof". The former rule usually places the burden of proof on the party making an allegation. This apportionment of the burden of proof usually remains the same throughout the proceedings. In the case of "evidential burden of proof", the apportionment may change continually in the course of the proceedings and be transferred from one party to another." 
• T301/95 in fact undertakes a review of the law of evidence in Germany, England and France and is quite interesting, also on that it concludes that none of the national laws can be applied in proceedings before the EPO for the matter of straw man opponents (which were then not yet permitted).
• However, even after reading T31/95 and the present decision, I don't understand what the relevance of the evidential burden is. In particular, the present Board says that " If the party bearing the "legal burden of proof" fails to demonstrate to the required degree the fact(s) on which its legal case rests, the board has to decide against that party."
• From some USA websites, I understand the term 'evidential burden' is used by common law lawyers to identify the level of proof that is initially required in order to get permission to present a contested fact to the jury in a jury trial (for what could be the original source of the term "evidential burden", actually in UK law, see N. Bridge, Modern Law Review 12(3) p.273-289 (1949) full pdf here, paragraph bridging p.276-277: " This burden sets up before the party who bears it a preliminary legal hurdle which must be surmounted before the jury shall be entitled to consider the question of fact in issue. This burden I propose to call the evidential burden of proof.")
• " There is no shift of the legal burden of proof in the appeal proceedings. Although an appellant must argue on appeal why the contested decision was wrong, this does not result in a shift of the legal burden of proof on the substance (see decisions T 1210/05, point 2.3 of the Reasons and T 1608/13, point 3.1 of the Reasons)." 
• T210/05: " Before the opposition division it is the opponent who bears the burden of proof as regards demonstrating that the patent does not fulfil the requirements of the EPC. Appeal proceedings do not result in a shift in the burden of proof in the way suggested by the respondent [opponent] - that is towards a requirement that the appellant prove a negative [namely, that a certain poster was not presented]. It is clear that in the case where the opposition division has revoked a patent, the appellant must argue before the board why this decision was wrong" 
• T 1608/13 r.3.1: " Referring to T 585/92 the respondent argued that in appeal, after the Opposition Division had revoked the patent [for insufficiency of disclosure based on an ill-defined parameter], the burden of proof was shifted to the appellant to prove that the decision was wrong. However, the primary aim of appeal proceedings is to review the decision under appeal on the basis of the submissions and requests of the parties. This clearly encompasses the review of the Opposition Division's reasoning, in particular the assessment of the respondent's objections considered in the decision. If the reasoning as such is found to be wrong, there cannot be any shift of the burden of proof on the substance. As regards the latter, it is established jurisprudence that a successful objection of lack of sufficiency presupposes that there are serious doubts substantiated by verifiable facts []. It is primarily the respondent's duty to provide such facts in support of its objections." 
• Turning to the technical effect: " The legal burden of proof lies with the opponent to establish that the claimed invention lacks an inventive step. The opponent must therefore set forth the state of the art which makes the claimed invention obvious to the person skilled in the art. If, in support of an inventive step, a patent proprietor alleges that the claimed invention has advantageous properties or effects, then the legal burden of proof for the alleged improvement over the prior art rests upon them (see decision T 97/00, point 3.1.6 of the Reasons)." 
• T97/00:  The patentee/respondent asserts that " the problem to be solved consisted in providing a process for activating a catalyst having an increased activity, an improved stability and a higher selectivity to C5+ hydrocarbons, as described in the patent in suit, column 2, lines 23 to 31" ... "  in the present case, the burden of proof for showing that the claimed method leads to the alleged and not supported advantageous effects mentioned in the patent in suit, rests upon the Respondent-Patentee. In the absence of any corroborating evidence that said advantageous effects are obtained, the allegation in the patent in suit of increased activity, improved stability and higher selectivity are unsubstantiated and, consequently, such alleged effects are not to be taken into account in assessing inventive step."
• Which leads us straight to G2/21 Plausibility
• After analysing the facts at hand:  "On the basis of the evidence on file, the board cannot conclude that antibody 20G7 is generally superior to antibody 24C5 in detecting BNP(1-32) and proBNP(1-108)." 
• Follows the entire reasoning on obviousness: " In the board's view, a person skilled in the art starting from the closest prior-art antibody 24C5 would have been able to provide alternative antibodies capable of binding to BNP(1-32) and proBNP(1-108) using routine methods. Under the case law of the boards of appeal in these circumstances, the claimed subject-matter, i.e. antibodies, is obvious (see e.g. decisions T 735/00, point 26 of the Reasons; T 187/04, point 11 of the Reasons; T 511/14, points 3 and 5 of the Reasons; T 605/14, points 23, 24 and 26 of the Reasons). Therefore, the subject-matter of claim 2 does not involve an inventive step (Article 56 EPC)." 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1447/18 - Burden of proof technical effect

Key points

• In this opposition appeal, the Board has to decide on the inventive step of a set of claims. The  Board arrives at the question of whether a technical effect is to be acknowledged for the distinguishing feature is to be acknowledged.
• The Board: "It follows that the examples of the patent in suit do not show that the compositions according to operative claim 1 have improved properties over the known composition of example 5 of D2.
•  In that regard, the patent proprietor considered that the patent in suit showed that an effect had been achieved and that the onus was on the opponents to show that that effect had not been obtained. The Board observes that each of the parties to the proceedings carries the burden of proof for the facts it alleges (Case Law of the Boards of Appeal, 9th Edition, July 2019, III.G.5.1 and III.G.5.2). 
• In the present case, the onus of proof to demonstrate the presence of an effect was on the patent proprietor who alleged that effect for the compositions according to claim 1 of auxiliary request 3.
• In the absence of evidence of that effect from the patent proprietor, the unproven effect cannot be taken into account for the formulation of the problem solved over the closest prior art."
• As a comment, CLBA III.G.5.1.1 also states: "A technical problem set out in a patent is considered to be credibly solved by a claimed invention if there are no reasons to assume the contrary. Under such circumstances, the burden is normally on the opponent to prove the opposite or at least provide evidence casting doubt on the alleged solution of the problem. If the opponent succeeds, the burden of proof shifts to the patent proprietor who must then prove its assertions (see e.g. T 1797/09)".
• It may be added that generally, the opponent has the duty to attack the claims in the notice of opposition, and if the attack is an inventive step attack, to assert all factual elements necessary for such an attack (and proof the asserted facts as appropriate). 

EPO T 1447/18 -

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2605/18 - All aimed at illustrating, refining or further developing the arguments

Key points

•  The opponent presents inventive step arguments during the oral proceedings. The patentee contests the admissibility.
• The Board: "the submissions presented by the respondent [opponent] during the oral proceedings to which the appellant objected were all aimed at illustrating, refining or further developing the arguments of the decision under appeal and countering the arguments of the appellant made in the appeal proceedings. Any additional passages or figures referred to merely served this purpose. The board notes that no additional pieces of evidence were submitted. The board therefore takes the view that the respondent's submissions objected to by the appellant do not amount to an amendment of the respondent's appeal case. Therefore, the board has no discretion under Article 13(2) RPBA 2020 not to admit them into the proceedings."
• The Board 3.2.05 recalls that: " the fact that oral proceedings form an important part of proceedings before the boards. Their prominence is underlined by the absolute right of a party to oral proceedings under Article 116 EPC. They serve to discuss matters pertinent to the decision of the board. Oral proceedings would serve no purpose if the parties were limited to present a mere repetition of the arguments put forward in writing. Instead, parties must be allowed to refine their arguments, even to build on them provided they stay within the framework of the arguments and of course the evidence, submitted in a timely fashion in the written proceedings (see decision T 247/20, Reasons, point 1.3 [of Board 3.2.08])."

EPO T 2605/18 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1995/19 - A dispute within the meaning of Rule 126(2)

Key points

• An application is refused."In the present case the applicant had appointed [at the relevant time] Ms [A], a legal practitioner qualified in Portugal, who was thus authorised to act before the EPO in the same way as a professional representative (Article 134(8) EPC)."
• There were some changes in the representative in the course of the appeal proceedings.
• The appeal fee is paid by the deadline with bank transfer, but no written Notice of appeal is filed within the 2 month period. The Notice is filed at a later time The Statement of grounds is filed in the prescribed time limit.
• "On 28 November 2019 the board issued a communication noting of loss of rights pursuant to Rule 112(1) EPC and Article 108, second sentence, EPC indicating that the appeal was deemed not to have been filed. A time limit of two months from notification of the communication was set, with the indication that the communication would become final in case of no reply."
• About 6 months later,  "On 11 June 2020 a request was filed according to Article 122(1) EPC for re-establishment of rights in respect of the time limit for filing an appeal under Article 108 EPC. "
• The one year period is complied with.
• "The request for re-establishment of rights is refused as inadmissible." because it is not filed within the two months period.
• It is not immediately evident to me why a late-filed Notice of appeal is deemed to not have been filed (G1/18) but a late-filed request for RE is inadmissible (and in the present case, should the RE fee be reimbursed?)
• The applicant disputes the moment that the two-month period started.
• The Board: "According to the case law of the Boards of Appeal, the cause of non-compliance is removed on the date on which the person responsible for the application is made aware of the fact that a time limit has not been observed (e.g. J 27/90[]). Removal is a question of fact, which occurs with the actual becoming aware of the fact that a time limit has not been observed. It is established jurisprudence of the Boards of Appeal that if a notification of the noting of the loss of rights under Rule 112(1) EPC is issued to a duly appointed professional representative, removal in principle occurs with the actual receipt of such communication (see [CLBA] III.E. 4.1.1.a)). In the event of exceptional circumstances, which cannot be blamed on either the applicant or the representative, the cause of non-compliance may persist even though the applicant's representative was informed of the loss of rights (e.g. J 16/93, points 4.3.2 and 4.3.3 of the reasons, also referred to in T 1588/15, point 5 of the reasons)."
• See also J1/20.
• "Pursuant to Rule 126(2) EPC, the communication of loss of rights is deemed to have been delivered on 8 December 2019. The board has no reason not to rely on the deemed notification of said communication, since there is no indication that it had failed to reach the appellant or reached them at a later date. Nor did the appellant maintain that this had been the case. Instead, they merely invoked, for the first time during the oral proceedings, the absence of an acknowledgement of receipt, further arguing that the EPO did not enquire whether the communication pursuant to Rule 112(1) EPC had actually been delivered.
  However, the board is not convinced that this is in itself sufficient to question the actual receipt and to give rise to a dispute within the meaning of Rule 126(2) EPC (T 247/98, point 2.6 of the reasons).
  On the contrary, by expressly referring to the communication in point 3.3.2 of the request for re-establishment of rights dated 11 June 2020, the appellant implicitly acknowledged that the delivery had actually taken place. A late receipt of the communication of loss of rights was not alleged."
• "On account of these considerations, the board concludes that the request for re-establishment in respect of the time limit for filing the notice of appeal was filed outside the two-month time limit from the removal of the cause of non-compliance set by Rule 136(1) EPC. Consequently, the request for re-establishment of rights is inadmissible. "

EPO T 1995/19

The link to the decision is provided after the jump.

T 0637/21 - Appeal fee

Key points

•  The opponent pays the appeal fee at the reduced rate. 
• "The appellant confirmed that it was not entitled to a reduced fee. "
• The appellant requests that the amount lacking is overlooked under Art. 8 Rfees.
• The Board: "the Board does not consider the amount lacking in the present case to be "small" within the meaning of Article 8, fourth sentence, RFees."
• "the Board also notes that with Article 2(1), item 11 of the Rules relating to Fees, the legislator introduced a reduced fee for certain categories of appellant. It seems reasonable to assume that the legislator saw this reduction as being of genuine financial assistance to the listed categories of persons, and not as a merely symbolic reduction. Thus the Board does not consider, for this reason as well, the shortfall to be "small".'
• The Board decides that the appeal is deemed not to have been filed.
• As a comment, oral proceedings only on the issue of payment of the appeal fee were scheduled but cancelled after the appellant announced that it would not attend.
• As a comment, the Board in the course of the proceedings clarified that the respondent did not have to file a full response to the substance of the appeal until the Board would find the appeal to be validly filed.
• As a comment, the debit order at issue contains the signature of Mr. B, a professional representative, i.e. states his name between slashes in the signature field.
• From the decision: "The appellant stated that the reduced fee was paid due to a clerical error by a paralegal and that the representative had not been able to check the debit order prior to filing, mainly due to difficulties caused by remote working following the COVID-19 pandemic."
• The decision does not discuss any request for correction of the debit order.

EPO T 0637/21 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2526/19 - ViCo's forever

Key points

• "Two weeks ahead of the scheduled oral proceedings before the board, the hearing was converted to VICO-based oral proceedings under Article 15a(1) RPBA."
•  "[The] compliance of Article 15a RPBA with the EPC has not been questioned by the Enlarged Board of Appeal in case G 1/21, whether or not a "general emergency" applies. Article 15a RPBA thus remains applicable, without any qualification, to these and future appeal proceedings."
• I refrain from commenting on this T decision except for citing G 1/21: "a hearing in person is the optimum format or, to use a term well known in the field of European patent law, it is the gold standard. It definitely fulfils the requirements of Article 113 EPC and Article 6 ECHR. It is also the format that the legislator had in mind when drafting Article 116 EPC. Therefore, in-person hearings should be the default option. Parties can only be denied this option for good reasons."

EPO T 2526/19

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0988/17 - Exceptional circumstances under Art.13(2)

Key points

• The Board in the translated headnote: “Neither Article 13(2) RPBA 2020 nor the explanatory notes thereto in CA/3/19 explain how to generally determine whether the circumstances are "extraordinary". However, the explanations of the RPBA 2020 cite as an example of such "extraordinary" circumstances the case where the Boad raised an objection for the first time in a notification. In this case, the changed basis of the appeal procedure justifies a changed submission. The question of whether, conversely, the basis of the appeal proceedings is also changed by changed submissions is therefore a possible criterion that can be used to assess the exceptional nature of the circumstances (point 6.3 of the reasons for the decision).”
• The point of contention is the admissibility of the patentee's response to an inventive step attack based of D1, the response being submitted after the summons for oral proceedings.
• The Board in translation: " In the present case, the Respondent's further submissions in its brief of October 26, 2021 refer to facts and evidence already in the proceedings and merely explain why, from the Respondent's point of view, the Appellant's objection raised in the statement of grounds of appeal was unconvincing." 
• "In the event of an appeal by the opponents, it is up to the board to examine whether the appellant's objections are convincing, even if the patent proprietor has not submitted a corresponding argument. "
• This may be an important point.
• " In fact, in the present case, the board had explicitly stated in its communication pursuant to Article 15(1) RPBA 2020 (item 7.) that it would have to be discussed whether, starting from D1, the person skilled in the art would have arrived at the subject-matter of claim 1 without any inventive step.
• The amended submissions of the Respondent therefore do not lead to a change in the basis of the appeal proceedings.
• Furthermore, the Respondent's submissions help resolve the issue raised by the Board and are therefore not detrimental to procedural economy.
• In these circumstances, the Board exercised the discretion conferred by Article 13(2) RPBA to admit the Respondent's submission in the October 26, 2021 brief into the proceedings." 

EPO T 0988/17 - 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1564/18 - Oral proceedings Ex Div in absence

 Key points

•  The Board essentially finds the refusal decision to be an unallowable surprise decision. 
• The ED cited D6, fig. 3-8 as anticipating claim 1 in a Communication under Art. 94(3). In the summons to the oral proceedings, again Fig. 3-8 of D6 were cited. Oral proceedings were held in the absence of the applicant who had announced that they would not attend.
• In the refusal decision, Fig. 1 and 2 of D6 were cited as anticipating claim 1 of the main request. These figures are described as "conventional art" in D6.
• The Board: "As the appellant had decided not to be present at the oral proceedings, it had relied solely on its written arguments. In such a case, the appellant's right to be heard is not violated if the examining division raises new foreseeable objections against new subject-matter submitted before the oral proceedings, including citing different passages of a document for newly-introduced features. However, in the present case the board cannot recognise such a reason for changing the closest prior art to the disclosure of Figure 1 of document D6. The main request considered  in the decision under appeal did not differ significantly from the previous sole request on file (only the expression [feature omitted] had been added at the end of claim 1), and in its reasoning the examining division did not justify why it had relied on a different part of document D6."
  
• " the board concludes that neither the annex to the summons nor any of the previous communications of the examining division contained the essential legal and factual reasons leading to the finding in the appealed decision that claim 1 of the main request lacked novelty over the prior art cited for the first time to refuse the application." 
• As a comment, although the Board seems to have a point, I find it confusing that the Board refers to "changing the closest prior art to the disclosure of Figure 1 of document D6" even though the rejection of the main request was for lack of novelty. 
• The Board: "Moreover, it is not possible to establish from the decision under appeal whether or why the amendments made in advance of the oral proceedings held in absentia justified the change to a new closest prior art. The decision was therefore issued in violation of Article 113(1) EPC." 
• The basic thrust seems correct, but again it is unfortunate to refer to "new closest prior art" when talking about novelty. On the other hand, I'm not sure if there is established terminology for the "equivalent" of "the closest prior art"  under novelty.
• As a further comment, provided that amendments made just before the oral proceedings were the normal kind of narrowing claim amendments, the Examining Division could have cited figures 1 and 2 as novelty-destroying in addition to the alleged novelty destroying figures 3-8. In other words, for novelty, it's not so much a matter of "changing the closest prior art", but adding new novelty objections (based on Figures 1 and 2) possibly in combination with abandoning earlier novelty objections (based on Figures 3-8). 
• G 4/92 does not apply to ex parte cases. The EPO's current practice regarding applicants staying away from oral proceedings before the Examining Division is described in  OJ 2020 A124. Whether the present decision puts a gloss on that Notice, can be left as an exercise for the reader. I also note that the present decision does not cite Rule 115(2) EPC.
• 
  

EPO Headnote

Since neither the annex to the summons nor any of the previous communications of the examining division contained the essential legal and factual reasons leading to the finding in the appealed decision that claim 1 of the main request lacked novelty over the prior-art device considered for the first time in the novelty assessment of the refusal, and since no reason was given why the amendments made in advance of the oral proceedings held in absentia justified the change to this new closest prior art, the decision was issued in violation of the right to be heard even though the prior-art device on which the refusal was based was disclosed in the same document as a closest prior art considered previously in the examination procedure.

T 2487/17 - Adding independent claim in opposition permitted

 Key points

• The Board, in translation: " Rule 80 EPC - The opposition division found in its decision that the request met the requirements of Rule 80 EPC. The appellant-opponent contradicted this. It took the view that the inclusion of independent claim 16, which was additional to the granted version of the patent, and of claims 17 to 22 dependent thereon, violated the requirements of Rule 80 EPC.
• " The Board does not find the objection convincing. Claim 1 of auxiliary request 2 was amended compared to claim 1 of the version as granted in that instead of the initially claimed composition, the use of the same as a shape-memory material is now claimed. The dependent claims 2 to 9 have been modified analogously and thus also relate to said use.
• " Furthermore, an independent claim 16 has been added, which differs from claim 1 as granted in that it includes the additional feature that the curable structural adhesive is a polyurethane composition. Claims 17 to 22 dependent thereon, which are also appended, correspond to granted dependent claims 2, 3 and 5 to 9.
• " The division of claim 1 as granted into a use claim, which relates to the entire originally defined composition, and a product claim, which relates to a restricted definition of the originally defined composition, is, in the board's view, an expedient reaction of the appellant- patent proprietor in order to respond to the objection of lack of novelty raised and thus avoid the revocation of the patent. Since both the dependent claims 2 to 9 and the dependent claims 17 to 22 have an equivalent in the granted patent, namely in the dependent claims 2 to 9, no claims have been included that do not already have an equivalent in the granted version of the patent had patents.
• " The requirements of Rule 80 EPC are therefore met." 

T 2487/17 - link after the jump.

T 0926/17 - (II) Rule 80

Key points

•  The OD maintains the patent in amended form based on AR-1. The opponent appeals. In their written submissions the appellant-opponent objects to the admissibility of the upheld version (auxiliary request 1 before the opposition division) ... as late filed.
• The Board gives as preliminary opinion that AR-1 is admissible. The opponent has no substantive comments on the point before the oral proceedings before the Board and the Board admits* the request. Nevertheless, the Boards reasoning seems to call for some comments.
• The Board: " The Board notes that Rule 80 EPC does not specify the point in time up to which amendment is allowed. Rule 80 EPC creates the legal basis for amendments, and Rule 116(2) EPC governs the deadline for doing so" 
• Rule 80 EPC was introduced as Rule 57a EPC 1973  in 1995. The official explanatory remarks are set out in Notice in OJ 1995, p.416. 
• It is correct that " Rule 80 EPC does not specify the point in time up to which amendment [in opposition] is allowed". As set out in said Notice, "  [New Rule 57a] addresses the purely substantive aspects of the proprietor´s entitlement to amend his patent, and does not specify the point in time up to which amendment is allowed: here existing practice would remain unchanged".
• The existing practice in 1995 was that limitations on the amendments "were justified by reference to Rules 57(1) and 58(2) [EPC 1973]" (as the Notice says) which provisions are now R.79(1) and R.81(3) EPC (see T256/19).
• I don't think that Rule 80 EPC creates the legal basis for amendments [in opposition]. The legal basis is Article 123(1), as discussed in R6/19.
• I'm not sure if the Board wished to imply that it could overturn a decision of an OD to admit an auxiliary request. Whether the Boards have such power seems to be controversial. 
• *) : The Board decided "not to overturn the decision of the opposition division to admit the (now) main request".

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0926/17 - (I) Software as such

Key points

•  Claim 15: " A computer program comprising instructions for carrying out all the steps of the method claim 14, when said computer program is executed on a computer system."
• Always useful to recall the basics: there is no need that a claimed product is a tangible product.
• Do we know if this claim 15 is permitted under Art.52 based on its wording? The answer is no. The computer system is recited but not actually part of the claimed subject-matter, of course, so that feature does not help. Moreover, the claim does not specify any computer-readable medium (T424/03).
• We have to apply T1173/97 headnote: "A computer program product is not excluded from patentability under Article 52(2) and (3) EPC if, when it is run on a computer, it produces a further technical effect which goes beyond the "normal" physical interactions between program (software) and computer (hardware)"."
• As also outlined in G-II, 3.6.
• In the case at hand, claim 14 is directed to "A method of detecting and cutting tough tissues such as bones, cartilage, and fat from food item pieces such as fish or meat fillets or poultry items, comprising imaging incoming food item pieces using at least one x-ray machine ... conveying, subsequent to said x-ray imaging, said food item pieces on a second porous conveyor belt ... cutting said tough tissues from said food item pieces"
• The method of claim14 clearly produces a further technical effect which goes beyond the "normal" physical interactions between software and computer.
• It seems that claim 15 hence passes the test of Art.52.
• The Board: "Claim 15 is directed to a computer program comprising instructions for carrying out all the steps of the method claim 14. As such, the above positive conclusions in respect of sufficiency, clarity, added subject-matter, novelty and inventive step in respect of claim 14 also hold for claim 15 for similar reasons."
• This is all fairly settled case law and there was no dispute about claim 15 in the opposition appeal case at hand.
• credits to Mr. Thomas for highlighting the decision - https://www.linkedin.com/pulse/92617-claims-computer-program-comprising-instructions-thomas/

• 
  
• EPO T 0926/17

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

Summertime reading - Lord Hoffmann's Two Principles

• Today's post is not about a particular case but a collection of some quotes about the issue of "no inventive step for non-technical features" from the IPKat weblog that I find useful.
• At the end of this post, I add a brief remark about a possible connection with the Comvik approach.
• I categorize this post under summertime reading though it is spring at the time of publication.
  

Lord Hoffmann's Two Principles (I)

David Pierce, Patentable subject matter - Where are we now?, IPKat weblog, 28 January 2010

As an aside, Lord Hoffmann (who was, until recently, the most senior IP judge in the UK) has come up with two reasons that could be used to at least explain these exclusions. Exclusions 1-6 [listed below] fall within what he considers to be the 'practical application principle', that these things cannot be the subject of a patent in themselves, but this would not necessarily stop practical applications being patentable (for example, the practical application of the discovery of the electrical nature of lightning to the invention of a lightning rod).

The last exclusion falls within the 'human behaviour principle', since mental acts, playing games and doing business are all aspects of human behaviour that should not [] be patented [(presumably for practical as well as ethical reasons)], even though they may be new, useful and inventive. [...]

The exclusions, being things that are not considered to be inventions [Article 52(2) EPC] are:

1. discoveries;
2. scientific theories;
3. mathematical methods;
4. aesthetic creations;
5. programs for computers;
6. presentations of information; and
   
   
7. schemes, rules and methods for performing mental acts, playing games or doing business.

Source: https://ipkitten.blogspot.com/2010/01/patentable-subject-matter-where-are-we.html

Lord Hoffmann's Two Principles (II)

IPKat ("Tufty the Cat"), Lord Hoffmann on Patentability of Software and Business Methods, IPKat weblog, 13 November 2009

"[…] Lord Hoffmann's main point was to demonstrate that there are two over-arching principles that can be applied to the exclusions of Article 52 EPC that make some sense of the EPO 'technical character/effect' test that confuses so many people (and cats), including at least one English Court of Appeal judge and the current EPO President. These principles can be described as the practical application principle and the human behaviour principle. The former principle applies to some of the non-inventions listed in A52(2) EPC, while the latter applies to the others. If I remember right, Lord Hoffmann divided them up as follows:

Practical Application Principle: discoveries, scientific theories and mathematical methods, aesthetic creations, presentations of information, and programs for computers;

Human Behaviour Principle: schemes, rules and methods for performing mental acts, playing games or doing business.

The reasoning goes something like this: Non-inventions in the first category do not in themselves have practical application, so should not be patentable in themselves, but they might in some cases have the capability to support a patentable invention, for example in the way that a new computer program can support an invention if there is a practical application (or 'further technical effect', if you prefer). 

Non-inventions in the latter category are aspects that cover human behaviour, so should not be patentable for this reason alone, even though they may very well have practical application (such as new tactics in football or new ways of investing money). An example that was given is a new method for a pilot to use when performing take-off in an aeroplane that minimises noise.

I am not yet sure if this new way of describing the bounds of what should and should not be patentable is workable or consistent, but it certainly seemed to make sense at the time, and definitely makes a lot more sense than the confusion that is going on with the situation in the US with the Bilski case. […]" 

Source: https://ipkitten.blogspot.com/2009/11/lord-hoffman-on-patentability-of.html

Lord Hoffmann's Two Principles (III)

The original source:
Lord Hoffman, Hume Lecture 2010, The David Hume Institute 2010, ISBN 9781870482875

" Nevertheless, over time, two important principles have emerged. One [the Practical Application Principle] is that you cannot patent the discovery of new information, or a system for producing new information. The reason is that a patent must be for doing something practical. Of course, the information may enable you to invent something practical. You cannot patent a genetic code which you have discovered, but knowing the gene code may enable you to make an artificial molecule which expresses the protein for which that gene coded. You can certainly get a patent for that.

There are two possible justifications for this principle, both deeply embedded in the nature of patents. One is the nature of a patent as a monopoly. It is a right to stop people from doing something. But you can’t stop people from thinking and therefore you can’t have a monopoly of some particular piece of information. The other explanation is that the patent specification must enable the skilled person to perform the invention. So you cannot simply claim a monopoly on anything which uses the information you have discovered, like making the molecule which expresses the protein. The specification does not tell you every way in which the information may be used.   

The second principle [Human Behaviour Principle] which evolved in England was that you cannot patent methods of human behaviour. That was probably based on public policy: that one should not be able to monopolise the way people may behave. It means that you cannot get a patent for novel methods of doing business, like the idea of issuing credit cards, although you can get a patent for a new and inventive form of electronics in the card or the machine that reads it. You cannot get a patent for a new method of avoiding tax, or keeping your assets out of the hands of your creditors. These may be new practical applications of inventive discoveries about psychology, economics, law and so forth, but they are not patentable. Not at any rate in Europe. " 

Source: https://static1.squarespace.com/static/59b82ed532601e01a494df34/t/59de2fbd51a584fb1ea14361/1507733437917/HOP-86.-Intellectual-Property-Hoffmann.pdf

Note: Out of an abundance of caution, I note that Lord Hoffmann is not describing EPO case law in the cited paragraphs. There are clearly a few differences.

Connection with the Comvik Approach

• For the current Comvik-approach generally, see G1/19.
• It seems that features falling under the Human Behaviour Principle are deemed to make no technical contribution for the purposes of assessing inventive step under the Comvik approach.
• On the other hand, features falling under the Practical Application Principle may very well make a technical contribution; if that is the case, inventive step can accordingly be based on such a feature under the Comvik approach.
• 
  

T 0592/17 - Need to substantiate carry-over AR's

Key points

•  " The appellant [opponent] requested that auxiliary request 5 not be admitted into the proceedings" under Art.12(4) RPBA 2007, in particular on the argument that the filing of AR-5 fails to meet the requirement of Art.12(2) RPBA 2007 that respondent's reply shall contain the respondent's complete case and set out clearly and concisely why the decision under appeal be amended or upheld and should specify all the facts, arguments and evidence relied on.
• " With the reply to the grounds of appeal, while identifying the amendments made in auxiliary requests 1 to 4 (point 2 of the reply), the respondent [patentee] did not provide any substantive arguments concerning the subject-matter of the claims of auxiliary request 5, let alone regarding the relevance of [the amended feature] in claim 1 of auxiliary request 5, the set of claims of which was first filed on 26 August 2021. More specifically, no arguments were submitted in the reply to the grounds of appeal as to why the subject-matter of auxiliary request 5 would overcome the objections of added subject-matter, novelty and inventive step raised by the appellant in the grounds of appeal, nor was any such argument self-evident. The respondent simply stated that it requested alternatively that the patent be maintained "based on Auxiliary Request 7 as filed during opposition proceedings"." 
• " During the oral proceedings, the respondent submitted that the claims of auxiliary request 5 were identical to the claims of auxiliary request 7 filed on 10 October 2016 before the opposition division and the amendments made in the latter request were substantiated during the proceedings before the opposition division which was sufficient." 
• " The board does not agree that a substantiation presented during proceedings before the opposition division is sufficient for the purposes of Article 12(2) RPBA 2007. It is established Case Law of the Boards of Appeal that a mere reference to a party's earlier submissions made during the proceedings before the opposition division is not sufficient as a submission in reply to a statement of grounds of appeal (see e.g. T 1311/11, reasons 19). In the present case, not even a reference to a substantiation made during the proceedings before the opposition division was provided in the reply to the appeal. Rather, the respondent's submission was limited merely to a statement that the auxiliary request was maintained. Since the relevance of the amendment of claim 1 of auxiliary request 5 was not substantiated, the respondent failed to submit its complete case in accordance with Article 12(2) RPBA 2007 and, hence, the board did not need to take this request into account in the appeal proceedings under Article 12(4) RPBA 2007. "
  
• Assuming for the moment that AR-7 at issue was admissibly filed before the OD, the question is if the "unless clause" of Art.12(4)(s.1) RPBA 2020 would mean that no substantiation is required in appeal, because then AR-7 was no case amendment in the sense of Art.12(4)(s.1) and Art.12(4) RPBA, s.3 and s.4 do not apply, as confirmed expressly for s.3 by Expl. Rm. 12(4), and as logically also being the case for s.4. ("s." referring to sentences, so the third and fourth sentence; Expl. Rm. being the Explanatory Remarks as can be found in OJ 2020 SP2).
  
  
• As a minor quibble, the Board states: "Under Article 12(4) RPBA 2007 (applicable to the present case pursuant to Article 25(2) RPBA 2020, the reply to appeal having been filed before 1 January 2020)", but only the date of filing the SoG is relevant, the reply must only have been filed "in due time" according to Art.25(2). 

EPO T 0592/17

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.