T 0449/15 - Art. 111(2) and res judicata

Key points

• A decision from 2016 which was not noticed by me back then. 
• It is the second appeal in the opposition proceedings. In the first decision, the case was remitted to the OD after finding that the main requests and AR 1 were not inventive basically because of insufficient proof of the asserted technical effect. The OD then revokes the patent. Patentee appeals, this time with better experimental evidence of the technical effect. At issue is AR-4 having only minor changes compared to the main request (the patentee admits this). The question is if res iudicata applies
• "Res iudicata is a generally recognised principle in the contracting states and acknowledged by the boards of appeal (see e.g. T 167/93, OJ EPO 1997, 229; J 3/95, OJ EPO 1997, 493; T 365/09, Reasons 2). According to the established case law of the boards of appeal, res iudicata means "a matter finally settled by a Court of competent jurisdiction, rendering that matter conclusive as to the rights of the parties and their privies ... Such a final judgement ... therefore constitutes an absolute bar to a subsequent legal action involving the same claim, demand or cause of action, and the same parties or their privies" (see T 934/91, OJ EPO 1994, 184, Reasons 3)." 
• The part about "same parties" seems less relevant for EPO opposition proceedings. 
• " Whether the present board is prevented from considering subject-matter claimed in these appeal proceedings in view of res iudicata depends on the question whether "the same claim, demand or cause of action" (see above) is at stake. Hence, it is necessary to compare the subject-matter of claim 1 of the main request decided upon in T 449/13 and of auxiliary requests 4 and 5 pending before the board for consideration in these second appeal proceedings." 
•  " it is concluded that the amendments undertaken do not alter the subject-matter claimed in substance compared to the subject-matter finally decided upon in T 449/13, or the facts on which said decision was based. Consequently, the finding that the claimed subject-matter lacks an inventive step is res iudicata also for the subject-matter of auxiliary requests 4 and 5. Therefore, the board is prevented from deciding on this issue a second time." 
• " the order for remittal for further prosecution in T 449/13 does not preclude a conclusion of res iudicata for remitted subject-matter. Pursuant to Article 111(2) EPC 1973 [] if a board remits the case for further prosecution to the department whose decision was appealed, that department shall be bound, in so far as the facts are the same, by the board's ratio decidendi."
• The patentee is hoping that the new experimental report makes that the facts are no longer the same. If Art. 111(2) is exclusive, there is a good chance for the patentee to still get the claims allowed in the second appeal. 
• The Board: The "ratio" of a decision is the ground or the reason for making it, in other words, the point in a case which determines the outcome of the judgement (cf. T 934/91, supra, Reasons 2)." 
• "  The same binding effect applies to the board in the case of a subsequent appeal against a further decision of the department of first instance following remittal (self-binding effect, cf. T 21/89, Reasons 3.1)."
• "  The principle of res iudicata and that of the binding effect of the ratio decidendi pursuant to Article 111(2) EPC 1973 are not mutually exclusive, but complement one another. " 
• "  the binding effect of the ratio decidendi extends to matter which has not become res iudicata, but it only applies "in so far as the facts are the same". On the other hand, matter which has become res iudicata is not open for reconsideration following a remittal for further prosecution. In view of the fact that such matter is finally settled, the binding effect is not limited to the ratio decidendi, but also precludes a change of the "facts" within the meaning of Article 111(2) EPC 1973, e.g. by introduction of new documents (see also T 1063/92, Reasons 2.5; T 153/93, Reasons 3). Accordingly, if a board of appeal has issued a decision rejecting certain claimed subject-matter as not being allowable and has remitted the case for further prosecution in accordance with an auxiliary request, examination of the allowability of the rejected claimed subject-matter cannot thereafter be re-opened (cf. T 79/89, OJ EPO 1992, 283, Headnote I)." 
•  As an example of the binding effect of ratio decidendi not covered by res iudicata: a claim interpretation given by the Board for Art.83 is binding for the OD in a subsequent consideration of novelty and inventive step.
• The patentee requests a referral to the Enlarged Board of Appeal: " The board notes in this context that, since a decision given by a board orally becomes effective, binding and final by virtue of being pronounced, boards are generally very careful about what they announce in the course of oral proceedings and whether they render an interlocutory decision on a particular point which would prevent them from reconsideration of this point at a later stage, should the need arise." 
• As a comment, the rule in italics applies equally to the first instance departments: "a decision given by a [panel of the EPO] orally [during oral proceedings] becomes effective, [and] binding ...  by virtue of being pronounced". By the same token: " [rendering] an interlocutory decision on a particular point [prevents] [the decision-making body] from reconsideration of this point at a later stage" in (the same) proceedings before the EPO.
• The difference is that a first instance decision is open to appeal. An appeal decision is only open to a petition for review.
• " In the present case, the chairman announced during the oral proceedings that "the board was of the opinion that claims 1 of auxiliary requests 4 and 5 were res iudicata and not open to consideration in view of T 449/13". Consequently, no decision on this issue had been taken prior to the appellant's submission of the request for a referral to the Enlarged Board, and the board was therefore not prevented from considering this request." 
   

EPO T 0449/15

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

T 2175/15 - Partiality objection

Key points

• • This is a very lengthy decision about a partiality objection in appeal. The published decision is anonymised, also omitting the application and patent number.
  • The text after the jump is the German text in HTML. All formatting from the PDF is lost on the EPO website in the HTML version. This loss makes the decision text in the HTML version almost incomprehensible because the PDF uses formatting extensively to indicate quotes. 
  • During oral proceedings in January 2021, the Board announces that it intends to admit Auxiliary Request 1, filed by the patentee during the oral proceedings and wherein all product claims are cancelled, to adjourn the hearing. The opponent is not happy with this envisaged course of action and asks the Board why it departs from the clear wording of Art.13(3) RPBA 2007 ( “Amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings.”). The hearing is then interrupted for a break. Subsequently, the Chair gives further details of the reasoning. The opponent announces a partiality objection. After a break, the opponent announces that it does not raise a partiality objection and wishes to discuss the admissibility of AR-1 further. The matter is discussed, and both parties request a different apportionment of costs. The Board then announces the (interlocutory) decision to admit AR-1 and to adjourn the oral proceedings The oral proceedings are then closed. With a letter of 12 April 2021, the opponent raises a first partiality objection. In the summons for the second oral proceedings, the Board gives the preliminary opinion that the partiality objection is inadmissible as being late-filed. The opponent then raises a second partiality objection.
  • The Board in the original composition holds the second partiality objection admissible and the Board in the new composition takes the present decision.
  • The Board in the new composition holds the second partiality objection to be admissible but not allowable. 
  • The Board reasons that a preliminary opinion can give rise to a well-founded partiality objection (r.4.3.1), namely (in translation) if it favours one party e.g. by giving indications that are not covered by Art. 114(1), or if it contains derogatory remarks or includes an application of the law that is grossly wrong that it allows the conclusion that it is arbitrary.
  • However, the summons for the second oral proceedings do not fall under one of those cases, and the partiality objection is not justified.
  • The Board in the original composition will now decide on the still pending first partiality objection. Hence, I  refrain from commenting on this aspect.
  • However, as a general point, even a successful partiality objection does not affect the already taken interlocutory decision to admit AR-1 in any way, as I understand it. "A decision given by a board orally becomes effective, binding and final by virtue of being pronounced" (T0449/15).

EPO T 2175/15

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

T 0489/14 (II) - Pedestrian simulation

Key points

• This is the follow up to G 1/19. Inventive step of the claimed "computer-implemented method of modelling pedestrian crowd movement in an environment" is at issue.
• " The main purpose of the simulation is its use in a process for designing a venue, as shown in Figure 22 []. Essentially, the designer creates or imports an architectural venue design, specifies the constituents of a pedestrian population that is typical for the venue being designed, and performs a number of simulations of pedestrian flows which the designer can specify at a high level (in terms of sources (entrances), sinks (exits) and supply rate). The simulation results are then examined and the design is revised if necessary." 
• The Board summarized G 1/19.
  The Board: " Hence [according to G 1/19], in the case of a computer-implemented invention, a technical effect relevant for the assessment of inventive step exists if the features of the claim directly achieve a (real) technical effect on physical reality (including both external physical reality and the "internal" physical reality of the computer system in which the invention is implemented).
• In addition, an "implied" technical effect relevant for the assessment of inventive step is present if the claimed invention or the data produced by it necessarily achieves a real technical effect when it is put to its intended (and only relevant) use. In contrast, merely providing calculated data which corresponds closely to technical effects of physical entities is not a technical effect relevant for the assessment of inventive step." 
• Turning to the claim at hand: " It follows that the data produced by the method of claim 1, which reflects the behaviour of a crowd moving through an environment, does not contribute to a technical effect for the purpose of assessing inventive step. Indeed, the potential use of such data is not limited to technical purposes, as it can be used in computer games or presented to a human for obtaining knowledge about the modelled environment, to give just two examples of non-technical uses that are within the scope of the claim."
• " The subject-matter of claim 1 of the main request therefore lacks inventive step (Article 56 EPC)."
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EPO 

The link to the decision is provided after the jump.

T 2361/18- Within one month of notification can also be before

Key points

•  Rule 103 EPC is a gift that keeps on giving for this weblog.
• "According to Rule 103(4)(c) EPC, the appeal fee is to be reimbursed at 25% if any request for oral proceedings is withdrawn "within one month of notification" of a communication issued by the board in preparation for the oral proceedings, and no oral proceedings take place. "
• "In the present case, the appellant withdrew its request for oral proceedings after the board had issued the summons to oral proceedings but before notification of a communication issued in preparation for the oral proceedings. "
• " The question therefore arises how "within one month of notification" is to be understood."
• "Although point 84 of CA/80/19 refers to the notification of the board's communication in Rule 103(4)(c) EPC as "[t]he point at which the appellant ... should be incentivised to withdraw the request for oral proceedings", the board sees insufficient reason to treat the condition "within one month of notification" in Rule 103(4)(c) EPC differently from the corresponding condition in Rule 103(3)(a) EPC. Indeed, a "too early" withdrawal of the request for oral proceedings only makes it more likely that the board will be able to use the freed-up capacity to schedule oral proceedings in another appeal case (cf. CA/80/19, point 82)."
• "Hence, for the purpose of Rule 103(4)(c) EPC, in the present case the request for oral proceedings was withdrawn "within one month of notification" of a communication by the board."
• And the same applies for the withdrawal of an appeal "within one month of notification" for the purpose of Rule 103(3)(a) EPC.

EPO 

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

T 0707/17 - Should have filed that request with its reply to the notice of opposition

Key points

•  "At the end of the oral proceedings, the proprietor withdrew its main request and auxiliary requests 1 to 4, and requested that the appealed decision be set aside and that the patent be maintained on the basis of one of auxiliary requests 5 to 8."
• "The novelty attacks based on E6 and on E11 were raised for the first time in the statement of grounds of appeal. Nothing of significance follows from the fact that E6 was filed with the notice of opposition, whereas E11 was only filed with the statement of grounds of appeal; because lack of novelty in view of E6 was first invoked in the statement of grounds of appeal."
• "Given that the auxiliary request found allowable by the Opposition Division resulted from a combination of granted claims, both attacks could and should have been presented in the notice of opposition, or, at the latest, when the proprietor submitted the relevant request. However, the Board also considers that the proprietor should have filed that request with its reply to the notice of opposition, rather than only shortly before the oral proceedings before the Opposition Division."  
• As a comment, this may not be evident when reading the Guidelines and Rule 116.
• "The Board further acknowledges that, in view of the timing of the request and of the preliminary opinion of the Opposition Division, it was only during the oral proceedings before the Opposition Division that developments led to the conclusion that the evidence provided by E1 and E2 was not sufficient to demonstrate it not to be allowable."
• " It was thus the procedural behaviour of both parties that led to the Board being confronted with facts and evidence brought forward for the first time with the statement of grounds of appeal.  In view of the above, and the fact that the maintenance of invalid patents is not generally in the public interest, the Board considers the prima facie relevance of the new facts and evidence to be the decisive criterion in this case".
• "the novelty attack based on E6 lacks prima facie relevance"
• "There are, to the contrary, serious reasons to suspect that E11 might be prejudicial to novelty of claim 1 of the patent as maintained."
• "Having taken the decision to consider novelty in the light of E11, the proprietor can expect an opportunity to overcome the new issue." Auxiliary request 5 was filed with the reply to the appeal and addresses the novelty objection. 
• "auxiliary request 5 and the inventive step attacks against it based on E11 are to also be considered."
• "Given that none of the attacks brought forward against auxiliary request 5 is successful, the patent can be maintained on basis of it."

EPO 

The link to the decision is provided after the jump.

T 2843/19 - On the rejoinder

Key points

• The appealing opponent argued lack of novelty over D3 in the statement of grounds. The opponent presented an inventive step attack based on D3 one month before the oral proceedings. The attack is not admitted.
• The Board, in the headnote: "Regarding the need for a timely [rejoinder of the appellant]: 
• 1. Under the Rules of Procedure of the Boards of Appeal (RPBA 2020), which have been in force since January 1, 2020, it is the responsibility of the parties to submit their submissions in the proceedings in good time so that the Board of Appeals can already take them into account when drafting the summons.
• 2. To the extent that the appellant cannot already submit a part of its submission in the statement of grounds of appeal, as Article 12(3) RPBA 2020 actually requires, because it is a response to attacks or auxiliary requests that are not already the subject of the contested decision but are submitted by the Respondent in the [appeal reply brief], a [rejoinder] is the appropriate means of choice for the Appellant to submit its response in good time. Precisely for this reason, Article 15(1) RPBA 2020 provides that the board shall endeavor to send the summons no sooner than two months after receipt of the reply to the appeal (according to Article 12(1) c) RPBA 2020).
• 3. The argument that it is unreasonable to have to present a cascade of lines of argument with regard to every conceivable assessment by the Board does not apply. In an inter partes appeal procedure, the parties have the duty to conduct the procedure carefully and expediently, for reasons of fairness towards the other party, but also in order to bring the procedure to a conclusion within a reasonable period of time. Article 13 (2) RPBA 2020 sanctions this obligation to promote proceedings.
• 4. The appellant's argument that it is reasonable for the board and the patent proprietor to deal with the discussion of a simple new matter during the oral proceedings ignores the influence on the further course of the proceedings. Discussing a line of argument for the first time at the oral hearing may lead to a situation in which the other party has to reconsider and, if necessary, adjust its line of defense for the first time at the oral hearing, leading to a significant delay in the procedure and to appropriate decision making at the hearing becoming difficult or impossible."

EPO T 2843/19

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

T 2612/19 - Medical method - omitting step does not avoid Art. 53(c)

Key points

• Is Article 53(c) EPC to be examined on the basis of the claims, or on the basis of the overall description?
• The Board: "if essential features of the invention are missing from the claim, these must be read into the claimed method when assessing whether it falls under the exceptions of patentability in accordance with Article 53(c) EPC."
• "It must therefore be clarified whether the claimed invention is fully and completely defined by the features of claim 1. For this purpose, the description, among other elements, must be consulted."
• Turning to the case at hand: "Claim 1 concerns a method of managing delivery of an orthodontic treatment plan [M1]. As argued by the appellant, the claim only mentions steps effectively performed before (features [M2] to [M4]) and after (features [M5] to [M7]) the actual treatment, i.e. the application of the appliances to the patient's teeth. However, as conceded by the appellant, the treatment step is a prerequisite for the claimed method to be applicable. This is not only evident from the wording of the claim and in particular from the step of comparing a digital representation of an actual arrangement of the patient's teeth following administration of a set of appliances to a planned arrangement (feature [M6]). For this step to be carried out, it is inevitable that the appliances have been applied to the patient's teeth beforehand. It is also evident from the flowchart in Figure 3A and the corresponding description (A-Publication, paragraphs [0021] to [0023]). Omitting the step 210 of administering appliances would render the step 212 of progress tracking meaningless since there would be no progress that could be tracked."
• "It follows that administering a set of appliances (the application of the appliances to the patient's teeth) is an essential feature of the invention. This method step must therefore be seen to be encompassed by the claimed method because otherwise the claimed invention would not be fully and completely defined by the features of the claim (see G 1/07, point 4.3.1 of the Reasons)."
• "The subject-matter of claim 1, therefore, is excluded from patentability under Article 53(c) EPC."
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EPO T 2612/19 -

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

T 2627/17 - Sufficiency of disclosure of 1st and 2nd medical use claim

Key points

• In this opposition appeal, claim1 is a pure compound claim defined by a Markush formula. Claim 18 is a second medical use claim specifying a relatively long list of diseases. Claim 15 is a first medical use claim.
• " The appellant [opponent] argued in respect of [first medical use] claim 15 that the alleged biological effects had not been supported across the full range of compounds claimed, and that even for the tested compounds, the data of table 11 did not allow the skilled person to identify which compounds actually provided a suitable effect in the tests employed, i.e. whether a sufficient biological effect had been achieved."
• The Board: "The relevant biological activity ascribed to the claimed compounds in the patent is the treatment or prevention of diseases or conditions which [...] involve activity at the estrogen receptor. "
• "In table 1 of the patent (pages 24-115), 453 specific compounds, many of which fall within the scope of claim 1, are disclosed. In table 11 (page 211), biological data is provided for said compounds based on IC50 activity in an "MCF7 Viability Assay" (described in examples 84 and 85; paragraphs [0810] and [0811]) and an "ER-alpha In Cell Western Assay (ski)" (described in example 86; paragraph [0813]), both assays concerning breast cancer cell lines." (link)
• In the table, either A or B is shown for the IC50 value, and + or ++ for the max response (single value), it seems for all 453 compounds.
• "In the present case, biological activity data is presented for the large number of compounds exemplified. Even accepting that not all examples fall within the scope of the present claims, as argued by the appellant in opposition proceedings with reference to D2 [] the data presented for the claimed compounds is considered sufficient to support the therapeutic application for which they were tested. 
• "As set out in T 609/02, absolute proof that a compound could be approved as a drug before it may be claimed as such (in a medical use claim) is not required. Rather, for demonstrating sufficient disclosure of a therapeutic application, the patent must provide some information in the form of, for example, experimental tests, to the avail that the claimed compound has a direct effect on a metabolic mechanism specifically involved in the disease, this mechanism being either known from the prior art or demonstrated in the patent per se. Showing a pharmaceutical effect in vitro may be sufficient if there is a clear and accepted established relationship between the shown physiological activities (in the present case, ER activity) and the disease (T 609/02, reasons, 9)."
• " Therefore, the data in table 11 of the patent sufficiently demonstrates the effect of the claimed compounds on the specific ER activity tested. Consequently, the appellant's argument that the effect would not be present for further compounds falling within the scope of the claims, but not tested, amounts to an unsubstantiated allegation, and therefore must fail. "
• " Consequently, the board found the invention defined in claim 15 to be sufficiently disclosed.' 
• Turing to the second medical use claim: 
• " Claim 18 is essentially directed to a compound (of any one of claims 1 to 10) for use in the treatment of a long list of specific conditions, including, inter alia, alcoholism, migraine, aortic aneurysm, susceptibility to myocardial infarction, aortic valve sclerosis, cardiovascular disease, coronary artery disease, hypertension, deep vein thrombosis, Graves' Disease, arthritis, multiple sclerosis, cirrhosis, hepatitis B, chronic liver disease, bone density, cholestasis, hypospadias, obesity, osteoarthritis, osteopenia, osteoporosis, Alzheimer's disease, Parkinson's disease, migraine, vertigo, anorexia nervosa, attention deficit hyperactivity disorder (ADHD), dementia, major depressive disorder and psychosis." 
• " In T 2059/13, cited by the [opponent]  it was accepted that the compound in question (aripiprazole) successfully bound to the 5-HT1A receptor. However, there was no evidence in the patent nor in the cited prior art of any link between said receptor and bipolar disorder, the subject-matter of the second medical use claim (reasons, 4.4.4 and 4.4.5). Consequently, sufficiency of disclosure was denied. ... The situation in the present case in relation to many of the conditions listed in claim 18 is similar." 
• " With regard to a direct link between ER activity and the conditions other than estrogen-dependent cancer listed in claim 18, apart from mere verbal statements (e.g. paragraphs [0006] and [0061]), the patent is silent - both in terms of biological data demonstrating said link, and any reference to common general knowledge linking ER activity to the specific conditions listed. The situation in the contested patent is therefore similar to that underlying case T 2059/13, addressed above, in that the patent does not demonstrate the suitability of the claimed compounds for the treatment of claimed conditions other than estrogen-dependent cancer." 
• It follows that with regard to the second medical use directed to therapeutic applications other than estrogen-dependent cancer, the invention defined in claim 18 is insufficiently disclosed.
• In an auxiliary request, claim 18 is deleted. The Board turns to inventive step.
• " The objective technical problem underlying contested claims 1-14 is therefore the provision of further compounds (and corresponding compositions) with ER activity." 
• " the claimed compounds represent non-obvious alternatives to those disclosed in D4 as set out above." 
• As a comment, the present decision also illustrates the basic rule that finding one new compound with one inventive use provides for the inventive step of the product claim, thereby giving protection for all uses of the compound. The same principle applies for sufficiency of disclosure. Also the non-enabled diseases, for which the 2nd medical use claim is invalid, fall under the product claim (and the first medical use claim, for that matter).

EPO T 2627/17 

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

T 1024/18 - (II) Public prior use

Key points

•  "The opposition division found that the prior use was sufficiently substantiated at least by the Neos 3 diaper production line. The technical features of the production line were disclosed in E4 and evidence of the sale [of the Neos 3 production line] to SCA in 2009 was proven by invoice E3. It however found that: [] the alleged prior use was not made publicly available by the sale to SCA" 
• " According to established case law, the sale of an apparatus is, in the absence of any special circumstances limiting the freedom to divulge details thereof, sufficient to render the technical details of the apparatus available to the public. The sale by GDM of the Neos 3 production line to SCA in 2009, as evidenced by E3, has not been questioned. However, the Board finds, contrary to the opposition division, that there is no evidence of confidentiality, not even tacitly so, which restricted [the buyer] SCA from freely divulging details of the production line to any third party." 
• " The Board concurs with the respondent and the opposition division that the 'beyond reasonable doubt' standard of proof is appropriate for the prior use to be seen as proven. " 
• The Board reviews the findings of fact based on the evidence on file, in particular based on the transcripts of the witness hearings. The  Board: " As regards SCA allegedly not communicating information regarding the Neos 3 production line to others, this cannot be concluded from the witness statements. On page 9/40, 2nd last paragraph, of his testimony, Mr Claessens states 'we do not kind of openly communicate issues of GDM to others, but it's not a secrecy agreement'. This further enforces that no confidentiality agreement was in place restricting SCA from divulging details of the Neos 3 production line to a third party." 
• "  The respondent's argument that a tacit obligation not to divulge details of Neos 3 must have existed due to the commercial and technical relationship that existed between GDM and SCA is held to be mere conjecture lacking foundation. According to the witness Mr Berg, indicated as commercially responsible for the acquisitions of Neos 2 and Neos 3 and for preparing, negotiating and signing the purchase contracts on SCA's behalf, there was no joint development project between GDM and SCA (see Mr Berg's testimony, questions and answers bridging pages 3-4/8 and 5-6/8, respectively). Irrespective of this, any possible existence of a commercial and technical relationship existing between GDM and SCA before the sale of the machines also does not allow a conclusion that a tacit obligation of confidentiality existed once the machines were sold to SCA and became its sole property. In fact, the sole secrecy agreements referred to by the witnesses (see Mr Berg's statement, page 4/8, line 6 onwards and page 7/8, last paragraph) relate to GDM being prohibited from divulging any detail of the SCA production facilities, rather than any restrictions being placed on SCA relating to the purchase of the Neos 3 production line. It is noteworthy that, despite a secrecy agreement restricting GDM from divulging details of the SCA facilities, no agreement is referred to by the witnesses, let alone has been filed, obliging SCA to similar secrecy with respect to the purchased Neos 3 production line. The lack of an agreement limiting SCA from divulging detail of Neos 3 is thus found by the Board to be proven beyond all reasonable doubt." 
• As a comment, in the present case, the patentee does not seem to be SCA. 
• The somewhat puzzling aspect is that disclosure from an assistant to the inventor is of course no prior art even if the inventor is not bound by secrecy. 

EPO -  T 1024/18

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

T 2660/18 - Simulating a nuclear reactor (redux)

Key points

• In T0625/11, of January 2017,  the Board found that the features of a method of calculating a maximum value of an operating parameter of a nuclear reactor, involving simulation steps, provide a technical contribution. In the present appeal, the method also pertains to simulating a nuclear reactor, but the analysis has to be made under G 1/19.
• The Enlarged Board in G 1/19: "The Enlarged Board agrees with the findings of T 1227/05 and T 625/11 if they are understood as being that the claimed simulation processes in those particular cases possessed an intrinsically technical function. However, there are rather strict limits for the consideration of potential or merely calculated technical effects according to the COMVIK approach (see points E.I.d to E.I.g above). The often-quoted criterion of T 1227/05 that the simulation constitutes an adequately defined technical purpose for a numerical simulation method if it is functionally limited to that purpose should not be taken as a generally applicable criterion of the COMVIK approach for computer-implemented simulations, since the findings of T 1227/05 were based on specific circumstances which do not apply in general."
• The present Board:  A rod pattern design [as obtained with the method of claim 1]  appears to have non-technical uses such as for study purposes. These are "relevant uses other than the use with a technical device", and therefore a technical effect is not achieved over substantially the whole scope of the claimed invention (G 1/19, points 94 and 95).
• "The data "indicative of limits that were violated by the proposed test rod pattern design during the simulation" [as recited in claim 1] do even not, or at least do not entirely, reflect the physical behaviour of a real system underlying the simulation (see G 1/19, point 128).
• "The board notes that, due to the breadth of the wording of claim 1 of the main request, the obtained rod pattern design might violate any number of limits by an almost unlimited amount. 
  Hence, this is not an "exceptional case" in which calculated effects can be considered implied technical effects (see decision G 1/19, points 94, 95 and 128)."
• "During the oral proceedings, the appellant [applicant] argued that the "Logikverifikation" decision of the German Federal Court of Justice (Case X ZB 11/98, GRUR 2000, 498) supported its view that the claimed subject-matter brings about a technical effect. However, the board referred the appellant to decision G 1/19, Reasons 124, which takes a different view. As the board endorses the reasoning provided in decision G 1/19, it is not convinced by the appellant's argument."
• The Board also notes that: "The board is of the opinion that, in the case at hand, no technical effect is achieved by the method's functionality as the method merely produces a test rod pattern (i.e. a fuel bundle configuration) design and data "indicative of limits that were violated by the proposed test rod pattern design during the simulation". Contrary to case T 625/11, no parameter is identified that is "intimately linked to" the operation of a nuclear reactor."
• This part of the reasons is necessary because the Enlarged Board in G 1/19 did not say that T 1227/05 and T 625/11 were wrong. Rather, the Enlarged Board approved T 1227/05 and T 625/11 based on the specific circumstances of those cases. So it is an entirely valid argument for an applicant/patentee to argue that the simulation method claim under examination is substantially the same as in  1227/05 or T 625/11 in particular in the sense that "the claimed simulation processes possesses an intrinsically technical function."

EPO T 2660/18

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

T 0464/18 - The Board examines of own motion in opposition

Key points

•  In this opposition appeal, the  Board finds the main request to be not novel.
• Turning to AR-1, " During the oral proceedings, the appellant stated that they intended to raise objections under Article 123(2) EPC and objections of lack of novelty against the auxiliary requests 1 and 2, and the respondent objected that these objections should be disregarded by the Board pursuant to Article 13(2) RPBA 2020.

  Irrespective of the admissibility of the appellant's objections, at the oral proceedings the Board examined of its own motion (Article 114(1) EPC) whether claims 1 of auxiliary requests 1 and 2 complied with the requirements of Article 123(2) EPC and came to the conclusion that they introduce added subject-matter for the following reasons." 

• The respondent/patentee objects under R.106: " During the oral proceedings, the respondent submitted that, since no objections were raised against the auxiliary requests 1 and 2 by the appellant in the written proceedings, the Board should allow at least the auxiliary request 1. As regards an examination of the requirements of Article 123(2) EPC by the Board of its own motion, the respondent submitted that since the Board did not raise any objections in the communication in preparation to oral proceedings, the respondent was not in a position to properly react to such an examination, and therefore a decision of the Board not allowing these requests for lack of compliance under Article 123(2) EPC constituted a violation of the right to be heard, in respect of which an objection under Rule 106 EPC was raised." 

• " During the oral proceedings, the respondent was given the opportunity to explain orally why the introduction of features in claim 1 of auxiliary request 1 and 2, respectively, did not result in an intermediate generalisation, even though the added features were disclosed in the description in combination with other features. Since the arguments of the respondent were not convincing, for the reasons given above, the Board concluded that it was justified to decide that the auxiliary requests were not allowable. The respondent's argument that they were taken by surprise by the Board's examination of the requirements of Article 123(2) EPC of its own motion is not convincing. The respondent should have expected the issue of amendments to be discussed at the oral proceedings, in particular in view of the fact that the independent claims of the auxiliary requests were amended by introduction of features taken from the description (see also G10/91, points 19 of the reasons). Furthermore, although the Board did not raise objections in the communication pursuant to Article 15(1) RPBA, it drew the parties's attention (see point 7) to the fact that "depending on the outcome of the discussion regarding the main request, the first and the second auxiliary requests will be discussed during oral proceedings". Hence, a discussion of the auxiliary requests was to be expected.
  Finally, the issue of intermediate generalisation was thoroughly discussed at the oral proceedings and it is not apparent why this discussion would have required an adjournment of the oral proceedings, or even a remittal, for the respondent to properly prepare to it. Accordingly, the Board takes the view that no violation of the respondent's right to be heard (Article 113(1) EPC) has taken place when coming to the conclusion that auxiliary requests 1 and 2 are not allowable under Article 123(2) EPC. As a consequence, the objection under Rule 106 EPC is dismissed." 

• Comes the surprise at the end - the  Board remits the case: " However, the fact that the respondent was only made aware for the first time during oral proceedings that the auxiliary requests were not allowable under Article 123(2) EPC justifies that the respondent be given a proper opportunity to prepare and file amended requests. In view thereof, and of the fact that the respondent requested remittal of the case to the opposition division and the appellant did not object, the Board takes the view that there are special reasons in the sense of Article 11 RPBA justifying remittal of the case to the department of first instance." 

EPO 

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

T 0024/18 - The high number of objections

Key points

• The Board holds amended claims inadmissible under Art.13(2) RPBA. 
• The Board: "The allegedly high number of objections is also not a reason to justify the late filing of requests, because such circumstance is by no means exceptional." 
• As a comment, Art.13(2) does not require that the filing of the appeal case amendment is justified by exceptional circumstances. Art. 13(2) RPBA in the English version reads "shall, in principle, not be taken into account, unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned". The English version merely requires that there are exceptional circumstances, without expressly requiring any link between those circumstances and the filed case amendments
• Of course, the Board in the present case does not say that the invoked exceptional circumstances do not justify the late filing. The Board says that the filing is not justified by the circumstances, because the circumstances are not exceptional. In other words, whether or not the circumstances are frequent or rare, is equated to whether they can be used to justify the filing of the amendments.
• cf.  T 2703/16 which held that the fact that the applicant’s place of business was heavily affected by the Covid-19 pandemic in spring 2020, was not an ‘exceptional circumstance’ in the sense of the provision.
• Generally, the concept of what is justified in an individual case, seems rather distinct from statistics. For example, whether or not amended claims are admitted in a particular case, should not depend on how often the Boards raise new objections in their preliminary opinion. 
• The Board, additionally: "In fact, the circumstances cited by the proprietor appear to describe a fairly normal course of events. In particular, it is common for the parties and the board to go deeper into certain aspects of a given objection during the discussion at the oral proceedings, as this is one of the main purposes of the oral hearing. It is also not uncommon for the board to modify its preliminary opinion in view of the details discussed or the questions raised during the oral proceedings. " 
• The requests at issue were filed at the oral proceedings before the Board.

EPO 

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

T 0194/21 - Incorrectly applying the 10 day period

Key points

•  The OD issued the impugned decision on 12 June 2020. The Statement of grounds was filed 5 May 2021, too late, but only 9 days late. 
• The reason is that the notification of the decision to the opponent with a registered letter failed twice. The decision was then notified by public notice, i.e. by the publication of a notice in the European Patent Bulleting on 25 November 2020, cf. Rule 129(1) EPC.
• The decision is therefore deemed to be notified one month after the publication (Rule 129(2) EPC and Dec. Pres. OJ 2007 SE 3, K.1)
• The period for filing the SoG, therefore, expired Monday 26 April 2021 (R.134(1)).
• The professional representative filing the SoG probably added the 10 day period of Rule 126(2), but that period of course only applies for notification by post. Moreover, the professional representative (who is "grandfathered"* it seems) probably added the 10 day period at the end, so 25.12.2020 + 4 m = 25.04.2021 + 10 d =  05.05.2021.
• The Board finds that the appeal is inadmissible as late-filed.
• The professional representative had laid down representation shortly before the hearing before the OD, the opponent is located in an EPC Contracting State, so the decision of the OD was to be notified to the opponent.
• * = due account should be given to "the racist roots of the term “grandfather” protection"  https://www.americanbar.org/groups/litigation/committees/real-estate-condemnation-trust/practice/2021/grandfather-clause-racist-origins/ 

EPO T 0194/21 

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

Visser's Annotated EPC 2022

The new edition of Visser's Annotated EPC just arrived!

You can buy the book here:

https://law-store.wolterskluwer.com/s/product/annotated-european-patent-convention-2022-edition/01t4R00000OkKfl

In addition to a thorough updating of developments, new material in the 2022 edition includes the following:

• Amended EPO Guidelines that entered into force on 01.03.2022
• Consolidated discussion of procedures relating to oral proceedings held by videoconference 
• Commentary on recent amendments to the Implementing Regulations
• Recent decisions of the boards of appeal

The 2022 edition is suitable for candidates preparing for the EQE 2023 (pre-examination and main examination); a PDF supplement with an overview of any major legal changes between 01.03.2022 and 31.10.2022 will be made available via https://law-store.wolterskluwer.com/s/product/annotated-european-patent-convention-2022-edition/01t4R00000OkKfl at the end of 2022.

T 2120/18 - Filing no response to the opposition

Key points

• The patentee requests extension of the time limit to file a response to the opposition under Rule 79. The extension is refused. The patentee files no response. The OD issues the written decision revoking the patent. The patentee appeals.
• The Board finds no substantial procedural error on the side of the OD. 
• " The opposition division's refusal of the proprietor's extension request appears to be problematic because it did not give any specific reasons why it considered the reasons for the request insufficient. However, the consequence of a possible error in the exercise of its discretion not to extend the time limit would (merely) be that late submissions by the proprietor could not be disregarded. In the absence of any submissions by the proprietor during the opposition proceedings, however, the opposition division's possible lack of proper reasoning has no effect." (i.e. the error is harmless)
• " It is common ground that the rejection of the extension request did not terminate the opposition proceedings. Therefore, as the non-compliance with the four-month time limit did not lead to a direct legal consequence to the detriment of the proprietor, and as the opposition division did not decide on the opposition until eleven months after the refusal of the extension request, the proprietor was still in a position to respond to the notice of opposition well beyond the time limit."
• It seems useful that the Board explains this.
• The patentee gave the substantive reasons for patentability in the Statement of grounds. 
• The Board holds the whole statement of grounds inadmissible under Art. 12(4) RPBA 2007.
• Note, this does not make the appeal inadmissible for failure to file a Statement of grounds. 
• The Board: " A decision not to take into account the proprietor's submissions under Article 12(4) RPBA 2007 does not necessarily lead to the revocation of the patent. The decision under appeal is still to be reviewed by the board, which might overturn the impugned decision, e.g. if it is not convinced by the reasons given by the opposition division or in the event of a substantial procedural violation." 
• This statement may be uncontroversial for the patentee as respondent, but seems remarkable for the case of the patentee as appellant, as is here the case. 

EPO T 2120/18

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

T 0045/18 - Implicit disclosure

Key points

•  " The appellant [patentee] submitted that in document D1 it is not disclosed that the wire U1 is connected in the same orientation to converter 10 as wire U2 is connected to converter 12.' 
• " Whilst D1 does not state explicitly that sides of the phase windings U1 and U2 located in the upper layer of slots 1 and 2 "go in the same direction", [] the Board considers that this would be implicit to the skilled person." 
• " The appellant submitted that there were two ways in which the adjacent windings U1, U2 could be connected to their respective converter - in the same orientation or in the opposite orientation. " 
• " The Board did not find these arguments persuasive. The disclosure in page 4, lines 9 to 11 makes clear that the converter control is not to be altered in the manner proposed by the appellant. Furthermore, it would be immediately apparent to the person skilled in the art of electrical machines that if the windings U1 and U2 were connected in the opposite orientation to frequency converters whose output frequencies and output voltages are essentially the same, the electro-magnetic effects of the windings U1, U2 would cancel each other out." 
• " Thus, it is implicit to the skilled person that the wire U1 in one slot (for example slot 1) has to be connected in the same orientation to converter 10 as wire U2 in the adjacent slot (for example slot 2) is connected to converter 12. " 
• " With there being no other distinguishing feature, the Board came to the conclusion that the subject-matter of claim 1 of the main request lacks novelty over document D1." 
• As a comment, this seems to be a good example of implicit disclosure (for novelty, but as can also be the case for Art. 123(2)), also in the sense that it is not a lack of novelty based on inherent properties of what is expressly described in the prior art.
• In other words, the feature at issue ("  that the wire U1 is connected in the same orientation to converter 10 as wire U2 is connected to converter 12") could probably have been added to D1 in compliance with Article 123(2) EPC (if D1 were a pending European patent application).

EPO 

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

T 3181/19 - Farewell to Rule 49(7)

Key points

• The Examining Division refused the application for lack of line numbers under Rule 49(7) EPC.
• The Board confirms that Rule 49(7) EPC is not a ground for refusal, if only because the rule itself says (in English): "The lines of each sheet of the description and of the claims shall preferably be numbered in sets of five" 
• Moreover, the EPO itself explains that with  PatXML no line numbers can be added and that line numbers are not actually required (link)
• "Rule 49 states that lines should "preferably" be numbered. In other words, it is not mandatory. As we move away from paper-based systems, line (and page) numbers become redundant/meaningless. That is why we introduced paragraph numbering some years ago. Data can be viewed sequentially on a computer screen and, however it is reformatted, the paragraph numbers remain the same. This would not be the case with page and line numbering."
• The website about PatXML was last updated on 26.01.2011
• For some reason, PatXML never took off but I understand that the EPO is trying to finally abolish the paper-based formatting requirements of Rule 49 in the course of 2022.
• The Board does not remit the case, and examines novelty and inventive step, finding the claims at issue to be not patentable. 

EPO T 3181/19

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

T 2623/17 - A full-fledged discussion of inventive step

Key points

•  "Document D11 was not admitted by the opposition division on the ground that it was prima facie not relevant because  [...]. The prima facie relevance is an established criterion for assessing the admittance of late filed documents in the first instance proceedings. The opposition division therefore applied a correct criterion. 
• "Any discussion as to whether the criterion of prima facie relevance was applied in a reasonable manner inherently touches upon the substance of the case. In the present case, this discussion during the oral proceedings before the board became so detailed that it could eventually only be considered a full-fledged discussion of inventive step. The board therefore left the question of admissibility open. In view of the outcome of the discussion, neither party is adversely affected by proceeding in this manner."
• The Board, after a lengthy discussion of inventive step in view of D11 "What the appellant's [opponents] argument really demonstrates is that a skilled person, even when considering the combination of D11 and D1, would still not arrive at the claimed solution but would have had to make the further modification of adding of oxygen, which itself is motivated by non-obvious insights, such as that fluoroketone decomposition products do not recombine as readily as those of SF6 and that oxygen can be used to scrub them."
• 
  

EPO T 2623/17 

The link to the decision is provided after the jump

T 2669/18 - Substantive assessment under admissibility

Key points

• The Examining Division holds a request inadmissible because it was prima facie not novel. It was also filed after the date set under R.116(2), but that was not invoked by the Ex. Div.
• The question is how the Board should review this decision under Art. 12(4) RPBA 2007.
• " Allerdings ist eine Kammer auch dann, wenn sich die Prüfungsabteilung an die anzulegenden Ermessenskriterien gehalten hat, nicht unabänderlich an diese Ermessensentscheidung der Prüfungsabteilung gebunden. Eine derartige Beschränkung der Überprüfung erstinstanzlicher Entscheidungen vermag die Kammer weder dem EPÜ noch der Entscheidung G7/93 zu entnehmen, und sieht sich dabei im Einklang mit gefestigter Rechtsprechung der Kammern"
• Art. 12(6)(s.1) RPBA 2020 provides an exception "unless the decision not to admit them suffered from an error in the use of discretion"
• "Insbesondere erscheint es interessenwidrig, wenn ein Antrag nur deswegen nicht inhaltlich von einer Kammer überprüft werden könnte, weil er von dem erstinstanzlichen Organ aufgrund von Ausführungen zur materiellen Rechtslage nicht zugelassen wurde, die die Kammer inhaltlich nicht teilt, wohingegen eine Überprüfung ohne weiteres möglich wäre, wenn der Antrag zugelassen worden und nur inhaltlich ohne Erfolg geblieben wäre. "
• The Board admits the request.
•  

EPO T 2669/18 

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

T 2293/18 - Support in the description

Key points

• The patentee does not adapt the description to the amended claims and invokes T1989/18.
• The Board follows established case law that the description must be adapted to the amended claims.
• The Board, in translation: "The requirement that the claims be supported by the description basically means that subject-matter may be claimed in the claims which has a basis in the description. This is to ensure that the claims contain only what is deemed to be disclosed, present and accessible to a person skilled in the art after reading the description (see T 409/91 [])"
• This seems similar to Art. 123(2).
• "The requirement that claims must be based on the description thus ensures that the claims reflect the actual contribution to the state of the art in a manner that can be carried out by a person skilled in the art over the whole area they cover (see T 659/93 []".
• This seems similar to Art. 83 EPC.
• "It follows that claims and description, as parts of a single document, must match. Although they may contain different information in accordance with their different function, as follows from the EPC, they must not contradict each other."
• "In the light of these principles, the case law of the Board of Appeal has become established that Article 84 EPC is the basis for adapting the description to amended claims in order to avoid inconsistencies which might render the scope of the claims unclear []. The adaptation of the description must be carried out as required by legal certainty. If contradictions arise due to limitations of the claims, these are to be corrected by adapting the description in such a way that all information is removed that no longer explains the limited subject matter of the patent and that is not necessary or useful for understanding the invention.

EPO T 2293/18 -  

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

T 2632/18 - New objection Board and Art. 13(2)

Key points

• The patentee files an auxiliary request after the notification of the summons before the Board.
• The Board, on the admissibility: " in the present case no new objections were raised in the board's communication under Article 15(1) RPBA 2020."
• The Board then rather obiter deals with the case that the Board had raised new objections. As a comment, this may mean that the present Board 3.5.03 wishes to make the points even if obiter.
• "it is recalled that the mere fact that a "new" objection was raised by a board cannot per se amount to "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020 (see e.g. T 2271/18, Reasons 3.3)."
• I don't see this in T 2271/18.
• The Board also places this obiter remark in the headnote: "That a "new" objection was raised by a board in appeal proceedings cannot per se amount to "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020."

• The Board: "In the board's view, [the Explanatory Remarks to Art. 13(2)], at most, provides an example of how to present "cogent reasons" rather than implying that a new objection raised by a board in a communication alone exemplifies "exceptional circumstances" in that context. A "precise explanation" as regards cogent reasons is however completely absent here."
• The Explanatory Remark at issue: "The basic principle of the third level of the convergent approach is that [...] amendments to a party's appeal case are not to be taken into consideration. However, a limited exception is provided for: it requires a party to present compelling reasons which justify clearly why the circumstances leading to the amendment are indeed exceptional in the particular appeal ("cogent reasons"). For example, if a party submits that the Board raised an objection for the first time in a communication, it must explain precisely why this objection is new and does not fall under objections previously raised by the Board or a party [...]."
• The Board seems right that this Explanatory Remark does not state that a new objection of a Board is an exceptional circumstance. 
• As a comment, it is of course beyond doubt that the Board has to comply with Article 113(1) EPC. If the Board raises a new objection of its own motion against claims, the applicant/patentee must be given a fair opportunity to respond, including the right to have a submitted response (e.g. amended claims) properly examined by the Board. 
• 
  

EPO T 2632/18 

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

T 0288/19 - Notional business person

Key points

• The applicant is Swiss Re.
• The Board: "The volcano activities in Iceland 2010 and the subsequent closure of airspace led to an estimated loss of 1.7 billion dollars for the airline industry. Between 15 and 21 April 2010 almost the entire European airspace was closed resulting in cancellation of all flights in, to and from Europe. The invention relates to dealing with such airport closures and flight plan changes related to natural disaster events."
•  "It is an aim of the invention to reduce the risk that airline companies go bankrupt due to lack of cash for operation during or after natural disaster events. The airlines seek risk transfer by means of insurance technology to cover such unforeseeable events and to ensure operation of the aircraft fleets."
• I'm not sure why the board uses "insurance technology" here.
• "The invention proposes automatically paying financial compensation to the affected business units, i.e. airlines and their fleets, by monitoring relevant airport data, defining critical thresholds and automating cover payments in case of airport closures."
• The distinguishing features include d) "The invention proposes automatically paying financial compensation to the affected business units, i.e. airlines and their fleets, by monitoring relevant airport data, defining critical thresholds and automating cover payments in case of airport closures."
• "Features (d) to (f) as such and disconnected from the (technical) automated system are related to a business method."
• "Non-technical features within the meaning of Article 52(2)(c) EPC, i.e. features related to business methods, are allowed in the context of other technical features, but cannot contribute to inventive step. These features can thus be included into the formulation of the task (see, inter alia, G 1/19 [reasons 31], T 0641/00, G 3/08, Case Law of the Boards of Appeal, 9th edition 2019, sections I.D.9.1.2 to I.D.9.1.4). According to T 0641/00, the aim to be achieved in a non-technical field may legitimately appear in the formulation of the problem as part of the framework of the technical problem. Therefore, the non-technical features (O) to (V) ("damage cover" and "automated payment") can be included into the task formulation as a framework condition to be fulfilled."
• The Board, in the headnote: "The business person sets the framework of the problem to be solved by their business model (insurance conditions) and thus reduces - by setting specific boundary conditions - the degrees of freedom of the skilled computer specialist. The technically skilled person, who has to solve the objective technical problem of implementation, therefore has no latitude in selecting the corresponding (physical) parameters"

EPO T 0288/19 - 

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

T 0550/14 - Trying to prove a negative

Key points

• This is an appeal against a refusal decision. 
• " The examining division considered the basic idea of the invention to be non-technical. It was seen as a method for managing the funding of catastrophe relief efforts which enabled charitable organisations to put in place funding before a catastrophic event actually occurred."
• The applicant Swiss Re apparently found it a good idea to seek a patent monopoly on this.
• "as stated in e.g. T 2314/16 [] over the years the case law has provided guidance on the issue of technicality. Recently, the Board has tended to use the framework for discussion given in [T1463/11 - CardinalCommerce] to help classify whether borderline features of a claim are on the technical or the non-technical side."
• "The appellant was heavily critical that the division merely alleged that all aspects of the invention were part of a business method with no supporting evidence. It was therefore deprived of a chance to argue for inventive step in a proper way. The business model had to be properly defined. Moreover, if there were no arguments why certain features were deemed to be part of the business model, the right to be heard was not respected. In the present case, a more detailed discussion should have taken place about the feature "parametric trigger", which in the appellant's view was electronic, measurable and therefore technical and which therefore should have been searched. The appellant asked the Board to define criteria that the examining division should use to prove that a feature was not technical."
• "The Board agrees that in this field there is a danger of simply asserting that certain features are non-technical with no basis. Indeed, the Board has seen decisions where the reasoning has not been fully convincing. But this is not one of them."
• "It is thus clear that some discussion can and ought to take place [about whether borderline features are technical]. However, rather like objections against added subject-matter, one is essentially trying to prove a negative which tends to be a rather short exercise. On the other hand, the appellant is trying to prove a positive which involves more argument. Thus an objection from the division should probably start with a prima facie assertion that the feature in question is non-technical, perhaps because it is in one of the exclusions listed in Article 52(2) EPC, or a related or analogous field. If this is uncontested then this would be enough. However the Board considers that it is then up to the appellant to provide arguments why there is a technical effect or that some technical considerations are involved. The division should consider these arguments and give reasons why they are not convincing. As mentioned above, the Board is satisfied that this happened in the present case."
• This analysis of the debate may be of even greater general relevance as the framework for Article 123(2), mutatis mutandis. I don't recall it having been spelt out for Art. 123(2) before, but the outlined approach seems to make sense.
• The Board seems to say that the opponent (or examining division)  "is essentially trying to prove a negative" when arguing that a feature is non-technical, but at least when the argument is that the feature is in fact the implementation of a business method, the opponent seems to make a positive assertion. 

EPO T 0550/14

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