R 0005/13 - An opponent is not entitled to be heard on inventive step attacks starting from other documents

Key points

• R 5/13 was issued in 2014, i.e. before this blog started. Still, it warrants a post, partly based on Mr. Bausch's article on the case.
• The opponents are petitioners and complain that "the Board applied the problem-solution approach wrongly in allowing only one document as the starting point for discussing inventive step, where the case law allowed for more than one document to be considered as the closest prior art and for a discussion of lack of inventive step starting from any of those documents. That denial implied an infringement of the right to be heard according to Article 113(1) EPC." 
• The Enlarged Board:  "the petitioners argue that they should have been allowed to discuss all the issues of inventive step of any stage of the problem-solution approach in respect of all possible starting points they wished to rely on, despite the fact that the Board structured the discussion by first establishing which document or documents constituted the most promising starting point for an obvious development leading to the invention. In this, the Board ... by doing so ... systematically applied the standard method of the problem-solution approach." 
• " In the present case, the Board considered that the case could be decided in respect of the issue of inventive step by systematically applying the problem-solution approach stage by stage. Thus, it systematically limited its decision-making and accordingly the discussion with the parties to determining the closest prior art first, before discussing the other aspects of the inventive step of the subject-matter claimed according to the patent proprietor's first auxiliary request.
• Consequently, the Enlarged Board does not follow the petitioners' argument that the Board was obliged to let them continue to argue on the alleged lack of inventive step starting from document D1 despite the Board's conclusion not to take that document as the closest prior art and starting point for the further discussion of inventive step."
• " Since the petitioners were given the opportunity to submit their arguments with regard to the issue of determining the closest prior art, their right to be heard has been observed. Once the Board had reached a substantive conclusion by already excluding one or more documents (here: documents D1 and D11) as starting points for the assessment of inventive step, it was logically consistent to exclude all other prior art not found to be the closest prior art as starting point for the further discussion of inventive step according to the second and third stages of the problem-solution approach.
• " By following this methodology the Board did not infringe the right to be heard, because - as indicated above - a party* is not entitled to be additionally heard on the application of the problem-solution approach starting from other pieces of prior art than the closest prior art." (underlining added)."  (* - i.e. opponent, as is clear from the context)
• As a comment, this decision seems to reflect the established case law on the procedural aspect of the CPA rule. As a further comment, I'm not sure if the Enlarged Board's position will be the last word on the matter. 

EPO R 0005/13

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

T 0454/18 - Proof of internet publication

Key points

•  The opponent produced sufficient evidence in 2015 of a web publication in 2006 (before the priority date) by a combination of web.archive.org print screens (showing a link to a PDF file) and an affidavit from an author stating that the PDF wile was published in 2005 and was never changed.
• " According to the affidavit S19 by [Mr. H], founder of [H] Ultrasonic LLC and author of document S13, document S13 was added in December 2005 to his website, thus publicly available from that moment on. Further, according to his affidavit, no changes were made to document S13 after December 2005." 
• " there is no reason to believe that the author of document S13 in his affidavit is not telling the truth. He appears to be an independent person who does not seem to have any business, economic or other relationship with any of the parties involved in the proceedings. Nor did the appellant contest the validity of the affidavit. There is also no convincing reason not to believe the author's statement in his affidavit that document S13 is unchanged since December 2005.
• " Secondly, the probability that the Internet links functioned correctly is estimated to be higher than the opposite. There is no reason to provide Internet links which do not function. The probability that the Internet links worked correctly, but that the wayback machine "web.archive.org" in its random crawls did not arrive at the lowest hierarchical page S18 earlier than 2 May 2006, is estimated to be higher than the opposite. Given the affidavit, it also seems unlikely that a version published in December 2005 had different content from document S13." 

EPO T 0454/18

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

T 2377/18 - CPA and binding effect starting point

Key points

• This decision illustrates the substantive aspects of the choice of the starting point document for the problem-solution approach. 
• It is a basic feature of the PSA that one document (or embodiment) is taken as the starting point and that obviousness of the claimed invention is analysed in view of the distinguishing feature of the claimed invention in view of that document and in view of the objective technical problem solved by that feature. The objective technical problem can generally be formulated as "how to modify the starting point document so as to achieve the technical effect", the technical effect being the effect achieved by the distinguishing feature, in the context of the claimed invention, compared to the starting point document.
• In the present case, the patentee argues that D1 is not the CPA.
• The Board (al quotes in translation): " In this sense, the [patentee's] arguments against the selection of D1 as the closest prior art seem to imply that the problem and solution approach must be applied based on only a single prior art document or exemplary embodiment, namely from the one to be initially selected closest prior art. This is not consistent with established case law." 
• The Board: "If the person skilled in the art has several viable paths, i.e. paths starting from several different documents or exemplary embodiments that could lead to the invention, the boards of appeal have consistently held that the ratio of the problem-solution approach requires the invention to be examined in relation to all of these paths before inventive step is acknowledged. If the [claimed] invention is obvious to a person skilled in the art in at least one of these ways, it is not inventive. If the inventive step is denied, the choice of starting point does not have to be specifically justified" 
• This is indeed established case law and was already indicated by Szabo 1986.
• However, the choice of the starting point document is important, as far as substantive aspects are concerned. In the present case, the claim was directed to a hood furnace (also translated as a bell annealer), in any case a batch design; D1 was about a continuous furnace. 
• " The board agrees with the appellant that the basic structure of a conventional bell annealer plant is part of the specialist knowledge of a person skilled in the art. However, such bell annealer furnace systems are structurally fundamentally different from the continuous heat treatment system disclosed in D1. The expert faced with the above task would therefore have no reason to combine the different building constructions. Even if he wanted to combine them, he had no idea how the well-known bell annealer systems could be integrated into the continuous furnace at D1. To do this, he would have to completely redesign D1's heat treatment facility in an unknown way. 
• " In addition, according to the settled case law of the Boards of Appeal (supra, I.D.3.6), the selection of the closest prior art not only defines the subject matter serving as a starting point, but also defines the framework for further development, namely a further development within this genus. A change from the consciously chosen type to another, previously known but not selected other type during the further development (i.e. here from continuous furnaces as disclosed in D1 to bell annealers) can then only be regarded as the result of an ex post facto analysis." 
• 
  

EPO T 2377/18

The link to the decision is provided after the jump break.

T 0582/19 - Lapse of patent in all states

Key points

• Rule 84(1) provides that: "If the European patent has been surrendered in all the designated Contracting States or has lapsed in all those States, the opposition proceedings may be continued at the request of the opponent filed within two months of a communication from the European Patent Office informing him of the surrender or lapse. "
• The general view is that the verb "may" implies that the proceedings can be terminated even if the opponent files the request, in certain cases.
• The present Board, in machine translation: "With regard to the request for continuation of opposition appeal proceedings under Rule 84(1) and Rule 100(1) EPC, filed within the time limit, the board exercises its discretion to allow this request. The legitimate interest asserted by the appellant [opponent]  to revoke the patent in full within the framework of these proceedings is inherent for the appellant opponent here, since the lapse of the patent in the [contracting states] is only effective ex nunc, while the revocation is effective ex tunc."
• This may be different if the patent is surrendered in all states and surrender has retroactive effect under the national law of all designated states wherein the patent is validated.
• See also my comments on T 1959/15. 

EPO T 0582/19

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

T 1732/18 - Phase I clinical trial data do not kill patent

Key points

• It seems there were 15 opponents in this pharma case. The file is almost 9.000 pages. 
• The decision is dated 27.10.2021 and was notified 16.05.2022. No notice of delay in issuing the written decision as prescribed in Art. 15(9)(a)(s.2) RPBA is visible in the online file.
• " The therapeutic application is defined in claim 1 as the "treatment of a thromboembolic disorder administered no more than once daily for at least five consecutive days". ...  It is implicit in this feature that the treatment has a clinical benefit, in particular that it is effective. Since a treatment without acceptable safety cannot realistically be considered as having a clinical benefit, the aspects of both efficacy and safety have to be taken into account to determine whether the treatment defined in claim 1 is disclosed in the prior-art citations relied on by the respondents (see also decision T 2506/12, Reasons: 2.8)." 
• " Since claim 1 concerns a further medical use, attaining the claimed treatment benefit is a functional technical feature of the claim. To meet the requirement of sufficiency of disclosure, the suitability of the treatment for the claimed therapeutic indication must therefore be disclosed unless this was already known to the person skilled in the art.'
• " The application as filed contains experimental evidence on this account in example 1 (see pages 11 to 14). Example 1 reports on a phase II study carried out to test the safety and efficacy of different dosage regimens of rivaroxaban, including the once-daily oral administration of 30 mg in the form of rapid-release tablets, in the prevention of venous thromboembolism in patients undergoing total hip replacement. The application reports that the efficacy and safety of this treatment were found to be in (approximately) the same range as standard anticoagulant therapy with enoxaparin" 
• " This evidence and the conclusions expressed in the application are presumed credible in the absence of evidence to the contrary."  
• " The respondents [opponents] did not provide any experimental counter-evidence obtained with rivaroxaban that might have called the results of example 1 into question or might have shown that the treatment according to claim 1 could not be carried out in any particular embodiment." 
• "the board considers that the information provided in the application as filed renders the medical indication of claim 1 of the main request credible. As a consequence, post-published evidence is not required but may also be considered [note: for sufficiency]. According to this evidence, as summarised in the appellant's document D121, subsequent phase II and phase III studies demonstrated the clinical efficacy and safety of the claimed dosage regimen at various od doses in both the prophylactic and therapeutic treatment of thromboembolic disorders, and several of these applications, falling within the ambit of claim 1, subsequently received regulatory approval."
• For these reasons, the ground for opposition under Article 100(b) EPC does not prejudice maintenance of the patent as granted.
• Regarding inventive step: " At the priority date, the entirety of published clinical data on rivaroxaban was phase I data. It was common ground that the conference abstracts D2 and D11 represented the closest prior art."
• " Both D2 and D11 mention the investigated drug compound only by its internal project code name "BAY 59-7939". The appellant's argument that D2/D11 do not provide enabling disclosure of the active compound does not succeed since the person skilled in the art would have found no difficulty in looking up the chemical identity and preparation of "BAY 59-7939" in the appellant's further publications on this compound. " 
• " the features distinguishing the subject-matter of claim 1 from the disclosure of D2/D11 are the use of tablets and the medical use [note: i.e. clinical benefit] achieved with a specified dosage regimen (namely, once-daily dosing of rapid-release rivaroxaban for at least five consecutive days)." 
• " Tablets are a conventional dosage form. The appellant did not base its reasoning in favour of inventive step on the choice of tablets over other dosage forms (e.g. capsules)." 
• " The issue to be decided under obviousness is whether the skilled person would have had an incentive and reasonable expectation of clinical success regarding the specific regimen defined in claim 1, i.e. once-daily dosing of rapid-release rivaroxaban for at least five consecutive days, in patients, i.e. subjects at heightened risk for thromboembolism.' 
• " The board considers that the disclosure of D2/D11 by itself, or in light of common general knowledge, would not have provided motivation to the person skilled in the art to pursue clinical testing of a once-daily regimen of rapid-release rivaroxaban in patients, for the following reasons.' 
• [follows some extensive reasoning by the Board]
• "  In summary, the serious concerns about safety in the case of a new anticoagulant did not warrant a "try-and-see" attitude for the dosage regimen, and the known, relatively short, half-life of rivaroxaban would not have supported an expectation of success with regard to once-daily dosing of rapid-release rivaroxaban." 
• " the skilled person setting up a phase II clinical trial of a new anticoagulant was not in a routine "try-and-see" situation. Without a reasonable expectation of success with regard to clinical efficacy and safety, the mere wish for patient convenience would not have been sufficient as an incentive for testing an [once daily] regimen of a rapid-release form of the drug.' 
• The claims are held to be inventive.

EPO T 1732/18 - 

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

T 2766/17 - Statements in the description contradicting the plain claim wording

Key points

• "It is established case law that if the patentee amends its claims, it has to bring the description into line with them (see decision T 977/94 [] ).
• "The Board is aware of decision T 1989/18, in which the competent Board considered that the provisions of the EPC did not require the adaptation of the description to the subject-matter as claimed (points 4 to 13 of the Reasons)."
• "The current Board [agrees] that for the purposes of Article 84 EPC, the claims must be clear in themselves. However, if the description cannot be relied upon to resolve a clarity issue in a claim, this does not imply that, a contrario, clarity of the claim cannot be affected if the description contains statements contradicting the plain wording of the claim.
• "A patent specification is a unitary document disclosing and explaining an invention to the person skilled in the art. Article 84 EPC and Rule 42(1)(c) EPC expressly link the claims and the description for the purpose of disclosing the invention. Hence, the patent specification has to be considered as a whole for understanding the claimed invention as a solution to a technical problem."
• "In some cases, the drafter may choose to give a term a special meaning so that the patent specification becomes its own dictionary [internal citation omitted]. Hence, statements in the description contradicting the plain claim wording may cast doubts as to the intended meaning of this wording. It is the Board's view that under such circumstances, an objection under Article 84 EPC has to be raised.
• The Board in the headnote: "Statements in the description contradicting the plain claim wording may cast doubts as to the intended meaning of this wording. Under such circumstances an objection under Article 84 EPC has to be raised."
• Turning to the amended pages of the description at hand: "The amendments bring the description into conformity with the amended claims by making clear the non-optional character of the feature that the cast edible film is self-supporting. This is in compliance with Article 84 EPC."

EPO T 2766/17

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

T 0339/19 - Interpreting Art. 13(2) RPBA (and legal peace)

Key points

• Art. 13(2) RPBA is a provision that requires some interpretation for its correct application, in my view. In this decision, Board 3.3.06 analyses the meaning of Art. 13(2) in some detail. 
•  Board 3.3.06: "The board holds that the new request qualifies as an "amendment" to the proprietor's case, as it indeed changes the factual and legal framework thereof. While filed as a reaction to the preliminary opinion of the board, the latter did not raise any points of fact or law that had not already been discussed or addressed in the framework of the opposition proceedings. [...] The board thus cannot establish "exceptional circumstances" when giving these words their ordinary meaning, and such reading of Art. 13(2) RPBA would lead to the result that the request should not be admitted. The board is aware that many decisions of the Boards of Appeal have indeed interpreted the term "exceptional circumstances" in this manner."
• "Yet this board takes the view that Art. 13(2) RPBA, as in fact all provisions of the Rules of Procedure, needs to be read and interpreted in the light of the overarching principles by which appeal proceedings are guided. In taking this approach, the board finds most helpful guidance in decision T 1294/16 of 10 March 2021, where the board concerned was faced with a situation comparable to the one at issue.
• "The present board finds itself in complete agreement with the above-cited passages, namely that the term "exceptional circumstances" should be interpreted in light and in application of the principles underlying the rules of procedure. The board would like to add that these principles have been developed by the boards of Appeal in connection with the right to be heard (Art. 113 EPC), the right to oral proceedings (Art. 116) and the right to a fair hearing both under Art. 6 European Convention of Human Rights (as per decisions G 1/05 (OJ 2007, 362), G 2/08 of 15 June 2009, T 1676/08 of 9 March 2012 and R 19/12 of 25 April 2014) and Art. 125 EPC (T 669/90 of 14 August 1991, headnote). The right to be heard also relates to the right to introduce and have heard evidence as defined in Art. 117 EPC, T 2294/12 of 12 January 2016, point 1.1. of the reasons. Art. 114(2) EPC however clarifies that such right to introduce new facts or evidence is not unfettered, but rather limited to their timely submission."
• "In each case where new facts or evidence are introduced, it is thus incumbent on the deciding board to balance the right to be heard with the public interest of doing justice in good time. The board is further in agreement with decision T 855/96 of 10 November 1999 that emphasises the position of the boards as the only judicial instance in proceedings before the European Patent Office and accentuates the need for public acceptance of its decisions ...
• [As held in T 855/96] "It serves legal peace and the acceptance of decisions rendered by the Boards of Appeal, and takes into account the importance of the boards' role as the only judicial instance that when deciding on the patentability of a patent with effect for all designated Member States, decisions should take into account the complete submissions made in appeal proceedings. Thus, a document submitted at the appeal stage should be taken into account unless completely irrelevant where its consideration can be justified from a point of view of procedural economy." (translation of quote of T 855/96 by the Board)
• "In taking the above principles as an interpretative guidance for the term "exceptional circumstances", the board decided to admit the main request because neither did its admittance compromise the procedural rights of the appellant/opponent in that issues beyond the current framework of appeal proceedings had to be discussed, nor did it lead to delays that would have compromised the interests of procedural economy."
• The Board finds the request at issue to be allowable.

• 
  

 

EPO  T 0339/19

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

T 1444/20 - Adapting the description

Key points

• The only independent claim pending is directed to an "An anti-drug antibody immunoassay for the determination of the presence of an anti-drug antibody (ADA) ... in a sample comprising the following steps in the following order:"
• As a comment, perhaps the term "assay"  indicates an activity, not a physical entity in this claim, as it seems to be defined solely by comprising "the following steps in the following order"
• The Examining Division rejected the application because "pages 20 to 28 of the description contained numbered claim-like clauses, and this gave rise to a lack of clarity within the meaning of Article 84 EPC."
•  This is the description as filed i.e. of the PCT application published as WO2016071119A1 which contains under the caption  "Specific embodiments of the invention" inter alia " A method for the determination of the presence of an anti-drug antibody against an effector function suppressed human or humanized drug antibody in a sample comprising the following steps in the following order ".  There are also such statements for corresponding uses.  The list of embodiments was placed basically just before the Examples. 
• The Board: "The numbered embodiments listed on pages 20 to 27 of the description under the heading "Specific embodiments of the invention" cannot be mistaken for claims, since it is evident that they are a part of the description text, and they are not denoted as "claims", either. Rather, the description refers to them as embodiment, item, immunoassay, method or use."
• "Thus, there is no reason why the presence of the section "Specific embodiments of the invention" in the description should affect the clarity of the claims."
• The Board: "the entire section "Specific embodiments of the invention" relates to the same subject-matter (defined by the same method steps) as the current claims and may be taken to provide additional support for the claims in the description, as also required in Article 84 EPC (CLBA II.E.2.6).  (underlining added)
• I think that the Board here says that the paragraphs at issue are fully consistent with the claims, which seems to be a highly fact-specific finding.
• "The decision under appeal also asserts that, independently of Article 84 EPC, there is a requirement for removing redundant subject-matter from the description, and that the section "Specific embodiments of the invention" comprises such redundant subject-matter. This objection is based on two approaches relying on the Implementing Regulations to the EPC (Article 78(1) EPC)."
• " As per Rule 42(1)(c) EPC (Rule 27(1)(d) EPC 1973 and Rule 27(1)(c) EPC 1973, before and as of 1 June 1991, respectively) the description must disclose the invention, as claimed, in such terms that the technical problem and its solution can be understood, and state any advantageous effects of the invention with reference to the background art. In line with the concept of a technical invention on which the EPC is founded, the first half-sentence requires the description to disclose how the invention can be understood as the solution to a technical problem."
• " However, in the absence of an objection of lack of unity under Article 82 EPC, this does not translate into a requirement to bring the description in line with claims intended for grant, and to remove passages of the description that disclose embodiments which are not claimed."
• As a comment, the reference to Article 82, lack of unity of invention is unclear to me.  
• " A number of decisions have relied on Rule 48(1)(c) EPC as a potential legal basis for requiring the description to be adapted to the subject-matter as claimed. Nevertheless, on closer analysis, the wording and history of this provision suggest that this was not its intended purpose. The board agrees in this regard with the analysis provided in decision T 1989/18, Reasons 9 and 10."
• In T 1989/18, Board 3.3.04 reasoned that " Furthermore, points (a) to (c) of Rule 48(1) EPC are in the order of their offensiveness, ranking from high to low. This is reflected in paragraphs (2) and (3) of Rule 48 EPC. At the Munich diplomatic conference, there was general acceptance that the application should not be refused even if the application as filed contained statements or other matter contrary to "ordre public" or morality. Moreover, Rule 48(3) EPC remained optional (see Minutes of the proceedings of Main Committee I of the Munich Diplomatic Conference for the setting up of a European System for the Grant of Patents, document M/PR/I, No. 2225 to 2236). It is therefore difficult to conceive that the legislator intended to impose more severe sanctions on less offensive matter, in particular to provide a ground for refusal based on the inclusion of merely "irrelevant or unnecessary" matter (see also the doubts expressed in decision T 1065/99, point 7)."
• As a comment, I'm not convinced by this reasoning. First of all, the fact that the application should not be refused even if the application as filed contained statements or other matter contrary to "ordre public" or morality" may simply mean that the applicant can avoid the refusal by deleting the offensive statements. Moreover, Rule 48(2) and (3) seem to indicate an additional measure, in my view, namely omitting the offensive statements from the A publication, in addition to the general sanction of refusal of the patent application when not complying with Rule 48(1) EPC. These measures were added in the course of the drafting, suggesting in my view that they are additions to the general sanction of refusal of the application (see BR/135 e/71 p.25 / p.18 of the English Travaux to Rule 34 EPC;  in view of BR/51 e/70 p.11 / p. 24 of the PDF; admittedly the Travaux are not very clear).
• Finally, the Board's observation in T 1989/18 that "according to the wording and history of Rule 48 EPC, it does not pertain to patent specifications" seems to ignore the fact that the entire chapter II of Part III Implementing Regulations pertains to "Provisions governing the application" but all these provisions are grounds for refusal so in a way they all aim at having a patent application that is ready for grant and hence suitable for the B1 publication.

EPO T 1444/20

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

T 1474/19 - Carrying out a debit order with a mind willing to understand

Key points

•  The appellant pays the appeal fee at the reduced rate by mistake. The appellant is a large company.
• The Board: "Neither point 5.1.1 nor point 5.4.1 nor any other provision of the ADA 2017 requires that a fee amount be specified in the debit order." 
• As a comment, the software prescribed in the point 5.1.2 of the ADA only permits sending a debit order if the amount is specified, as far as I know.
• " The board in T 152/82 held that "A debit order must be carried out notwithstanding incorrect information given in it if the intention of the person giving the order is clear."' 
• The Board summarises the case law: "Notwithstanding formal deficiencies, a debit order in line with the prescribed (from 1 December 2017 only: electronic) filing requirements has to be assessed on its substance, in view of the party's clear intention objectively expressed in the order, to pay a particular fee (e.g. appeal fee) from an identifiable account. No fee amount needs to be specified. On this basis, the EPO is authorised to and must debit the intended fee in the applicable, i.e. correct, amount." 
• " The considerable number of cases before the boards regarding the question of the "correct", i.e. applicable appeal fee, in particular cases where the "wrong" option was unintentionally selected in EPO Form 1038E, is a strong indication that these difficulties have effectively materialised" 
• " The introduction of the fee reduction for natural persons and entities referred to in Rule 6(4) and (5) EPC clearly aimed to maintain access to justice for these persons and entities and not to introduce a new admissibility hurdle for other appellants. However, exactly the latter seems to have happened, perhaps in part because of the design of EPO Online Filing, which might be somewhat prone to errors. As a result, fee payment may not be smooth in every case, and this may have severe negative implications for appellants and their legal positions. ... In any case, the fee payment procedure should not be to the detriment of appellants whose clear intentions might be obscured by a system which also does not warn them when an incorrect amount is indicated in the debit order." 
• " As explained in T 170/83, it is the receipt of the debit order which authorises the EPO to avail themselves, for the debit order's specified purpose, of funds already deposited with the EPO and which thus completes the payment.' 
• " Since no amount needs to be specified, the EPO has to execute a debit order for a particular fee, for which the purpose of the payment is clear, in accordance with its substance, even if no or an incorrect amount is given (see again T 152/82, Reasons 7). The EPO has to establish from the debit order, the other documents on file and the circumstances of the case, which fee the appellant intended to pay and what the applicable fee amount is for the payment to be valid. As far as the determination of the applicable amount is concerned, this is similar to how the EPO processes payments under the automatic debiting procedure" 
• In practice, the debit orders are of course automatically processed by the EPO computer systems. That's precisely why they must be filed in the specific "electronically processable format (XML)". 
• "Article 2(1), item 11, RFees does not make the amount dependent on the filing of the declaration referred to in Rule 6(6) EPC (see also T 225/19), but its presence in the file may enable the EPO to determine if entitlement to the reduction exists, as might common-knowledge circumstances, e.g. the appellant being a natural person.' 
• " Thus, the appellant's clear intention was to pay the appeal fee to file a valid appeal, the applicable amount being EUR 2 255. The debit order was received by the EPO on 11 April 2019, together with the notice of appeal. As there were sufficient funds in the deposit account on 11 April 2019, this is to be considered the (full) payment date " 
• " Thus, there is no need for the board to take a stand on the jurisprudence on correction via Rule 139 EPC, in particular whether correction of a debit order with retroactive effect on the date of factual payment is an option. Even if it were an option, if a case does not pass the hurdle of the clear intention to pay a fee, in accordance with the jurisprudence of T 152/82 on the basis of the debit order, it might also not qualify for correction under Rule 139 EPC." 

EPO T 1474/19 - 

The link to the decision is provided after the jump.

T 1035/18 - Inventive step of simulation method

Key points

• The Board: According to G 1/19, whether a simulation contributes to the technical character of the claimed subject-matter does not depend on the degree to which the simulation represents reality (point 111 [of G 1/19] ); nor does it depend on the technicality of the simulated system (point 120). What counts is whether the simulation contributes to the solution of a technical problem (point 120).

EPO 

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

T 1990/18 - The three month period of Art.15(9) RPBA

Key points

• Art.15(9)(a) RPBA prescribes that where a Board announces a decision during oral proceedings " the Board shall put the decision in writing and despatch it within three months of the date of the oral proceedings". The provision adds that "If the Board is unable to do so, it shall inform the parties when the decision is to be despatched"  and that "The President of the Boards of Appeal shall also be informed thereof." 
• The Explanatory Remark adds that: "The new provision emphasises the ongoing commitment of the Boards to despatching their decisions in good time." 
• The decision in the present case was taken 05.11.2021 and notified in writing 26.04.2022. The public file does not show any notification of the parties under Art.15(9)(a) RPBA.
• Of course, in principle, such a notification could be present in the non-public part of the file. 
• 
  

EPO T 1990/18 -

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

T 0727/17 - Patenting the iPhone 1

Key points

• Can we still put ourselves in the shoes of the pre-iPhone skilled person in the field of mobile phones?
• The iPhone was released 29 June 2007.
• The application at issue in this appeal has a priority date of 2006. The divisional application at issue was filed in 2011.
• "The present application relates to the field of portable communication devices with a display and a touch-screen and, in more detail, to a method of displaying missed telephone calls and of providing the user with options to contact the caller relating to the missed call. The associated graphical user interface (GUI) is illustrated in Figures 12B and 12C of the present application as reproduced below.  FORMULA/TABLE/GRAPHIC FORMULA/TABLE/GRAPHIC"
• "Each entry of the missed phone call list ("interactive displayed item") includes two sections []. Tapping on those sections either initiates a phone call to the caller (i.e. "Bruce Walker" in Fig. 12C) or displays contact information of the caller ("second contact information") allowing the user to initiate a non-telephonic communication to the caller (see e.g. email addresses "2820" and "2822" in Fig. 12C)."
• "Document D1, which was taken as a suitable starting point for the assessment of inventive step in the impugned decision, relates to a portable communication device, which is adapted to provide the user with different functions, e.g. a "telephone mode", a "talk log" or an "electronic note", and to provide for those different functions the respective view on a screen (cf. title and abstract). "
• " the method of [claim 1] therefore differs from the method of D1 solely in that (i) the communication list ("TALK LOG") includes missed telephone calls; (ii) the non-telephonic communication is initiated in response to detecting the user selection of the second contact object and is directed to the corresponding caller."
• "Although it is questionable whether a valid objective technical problem can be formulated in this case (see point 2.4 above) [...] the board, in the appellant's favour, assumes the objective technical problem to be "how to respond to missed calls by non-telephonic communication by fewer clicks and less screens in the system of D1".
• "as to distinguishing feature (ii), it was well within the skills of the skilled person at the present application's priority date to make the contact object for non-telephonic communication in the address book details view interactive to allow the user to initiate the non-telephonic communication by selecting it, in order to reduce the number of necessary clicks and screens. The board notes in this respect that D1 already discloses an "interactive contact object" in the address book details view, namely the "HOME PHONE" entry. As a consequence, in order to solve the
  above-mentioned problem, the skilled person would have readily arrived at a method with all the features of present claim 1 without exercising inventive skills."
  
• "The appellant argued that the priority of the present application dates from the year 2006, i.e. 16 years ago, when smartphones [were] developed. From this point of view, only with hindsight a lack of inventive step could be identified."
• The Board seems to not explicitly reply to this observation. 
• After some further consideration, the appeal is dismissed.

EPO T 0727/17 

The link to the decision is provided after the jump.

T 0527/17 - Muscle Derived Cells

Key points

•  Claim 1 is directed to: " A pharmaceutical composition comprising human muscle-derived progenitor cells (MDCs) for use in improving left ventricular contractility of the heart wherein said improving comprises administering the MDCs to the heart of a human subject in need thereof" 
• Claim 3 is directed to: "MDCs for use in administration to the heart of a mammalian subject to thereby improve left ventricular contractility in said subject in need thereof" 
• Claim 3 is interesting in that it implies that human cells can be a "substance or composition" in the sense of Art. 54(4) and (5).
• By way of comparison, the border between compositions and apparatuses (for second medical use claims) is quite a topic of debate.
• " It was a matter of dispute whether the therapeutic indication in claim 1 constitutes an additional difference." 
• " The effect brought about by the differences agreed by the parties [i.e. the undisputed distinguishing features] is that the MDCs of claim 1 are suitable for improving the left ventricular contractility of the human subject from which they have been obtained." 
• " The objective technical problem to be solved may thus be formulated as providing a product suitable for improving left ventricular contractility in a human subject needing it." 
• " The skilled person wishing to translate the therapeutic effect on the myocardium shown in Example 7 of D9 from rodents to humans would therefore be prompted to use human myogenic cells isolated according to the method of D9 and disregard the methods of D5 or Example 9 of D8.

  Hence, the board holds that the subject-matter of claim 1 is inventive." 

• " The opponent did not raise any objection directed specifically against any of claims 2 to 5." 

• EPO T 0527/17

The link to the decision is provided after the jump.

T 1598/16 - Bacteriophage for acne treatment

Key points

•  Claim 1 is directed to: 'A bacteriophage (1) capable of lysing a P. acnes bacterium and incapable of lysing any bacterium which is not P. acnes, and which is incapable of sustaining lysogeny in a bacterium, (2) wherein the bacteriophage has (i) a genome having overall sequence identity of at least 88% with the genome of the bacteriophage deposited under Accession No. NCIMB 41349" (a few alternative deposits follow). [bold text added]
•  " Claim 1 is directed to a bacteriophage defined both by functional features, namely that it is "capable of lysing a P. acnes bacterium and incapable of lysing any bacterium which is not P. acnes, and which is incapable of sustaining lysogeny in a bacterium", and by reference to the accession numbers given to the bacteriophages as deposited with a recognised depositary institution under the Budapest treaty." 
• " The bacteriophages according to the invention are capable of lysing a P. acnes bacterium, incapable of lysing any bacterium which is not P. acnes and incapable of sustaining lysogeny in a bacterium (paragraph [0023]). " 
• "  The opposition division considered document D8 the closest prior art, and no other documents have been put forward in the appeal proceedings. The board agrees that document D8, a meeting abstract disclosing the use of bacteriophages for treatment of acne, is a suitable starting point for the discussion of inventive step. Although D8 does not disclose any particular bacteriophage, it teaches that "Unlike antibiotics, phage are specific for one species of bacteria" and furthermore states that they have isolated several strains of phage which kill subsets of the strain bank comprising a large number of strains of P. acnes and that they "are currently isolating mutants of these phages with exclusively lytic capabilities and broad spectrum of virulence". D8 thus identifies the functional features as claimed, namely species specificity with a broad spectrum of virulence and exclusively lytic capabilities (i.e. no lysogenic capability) as being desirable properties for bacteriophages to be used in the treatment of acne." 
• " The difference between D8 and the subject-matter claimed in claim 1 is that specific bacteriophages, identified by reference to their deposit numbers or by structural features, are not provided in D8. The technical problem can thus be formulated as the provision of bacteriophages which possess the desired characteristics as listed in D8 and are therefore suitable for use in the prevention and treatment of acne. The solution consists of the bacteriophages as claimed, and the board is satisfied that the problem has been solved." 
• "the board considers that the solution involves an inventive step because there is no teaching in the prior art rendering obvious the provision of the three claimed bacteriophages, which are not merely further bacteriophages as they do have properties that render them particularly suitable for the aim of the patent, namely prevention and treatment of acne" 
• As a comment, this decision appears to illustrate that naturally occurring micro-organisms can very well be patented under the EPC. 

EPO T 1598/16

The link to the decision is provided after the jump.

T 0317/20 - The subgroup attack

Key points

• "The requirements of Article 83 EPC of a medical use claim are complied with if, at the relevant date of the application, the skilled person is able to prepare the claimed product, ... and if the application discloses that the claimed product is suitable for the claimed therapeutic application, ... unless this is already known to the skilled person at the priority date" 
• The key part here is likely " discloses that the claimed product is suitable" - does "discloses"  means that merely a verbal statement is enough? (as it is for Article 123(2) - though see T 2842/18 of the same Board 3.3.04).
• The opponent argues that the compound does not work, i.e. does not provide the medical effect specified in the claim, for a sub-group of patients. The patent does not include data for that sub-group of patients.
• " In the absence of experimental proof of treatment of these patients, comprehensible and plausible arguments can substantiate serious doubts as to whether the skilled person could carry out the invention as claimed, and evidence in the form of experimental data is not necessarily required" 
• " The opponent and the intervener argued that the improvement of physical function observed in Example 9 of the patent was only due to the relief of pain caused by the anti-NGF antagonist antibody. Indeed, Example 9 of the patent relates to a study on the analgesic effects of anti-NGF antibody E3 in patients with moderate to severe pain from osteoarthritis of the knee"
• " The board notes that it was not disputed between the parties that, even if rare, osteoarthritis patients with impaired physical function who did not suffer from pain existed", those patients are the sub-group invoked by the opponent.
• " In view of this interrelation of use-related pain and physical function as assessed by the WOMAC questionnaire, a lower score in the pain-related domain of the WOMAC questionnaire is expected to also result in a lower score for difficulties in physical activities, as was reported in Example 9 of the patent. However, Example 9 of the patent cannot demonstrate the suitability of an anti-NGF antagonist antibody for the improvement of physical function in osteoarthritis patients who do not suffer from pain." 
• " the proprietor submitted that an occasional failure in the treatment of a small patient subgroup did not result in an insufficiency of disclosure. [] However, the disclosure of a patent must allow an invention to be performed in the whole range claimed (see also Case Law of the Boards of Appeal of the European Patent Office, 9th edition, 2019, II.C.5.4). The improvement of physical function of an osteoarthritis patient is a limiting purpose-feature of the claim, and therefore the invention as defined in the claim is only sufficiently disclosed if this improvement is achieved for all osteoarthritis patients." 
• I suppose that this statement when quoted out of context could kill a lot of pharma patents. It should be understood in the more nuanced way as set out by the Board in the next paragraph. 
• " Therefore, the failure of treating an entire patient subgroup, albeit small, which is distinguished from the patient group as a whole by its pathological status, is not equivalent to an occasional failure in treating some patients within the patient group. The size of the patient subgroup is not decisive for the assessment of sufficiency of disclosure of the invention as defined in the claim. This argument [of patentee] therefore does not persuade the board, either." 
• 
  
• " in view of the above considerations, it is concluded that the opponent's arguments substantiate serious doubt that the skilled person could carry out the invention as claimed. Neither the teaching in the patent nor the skilled person's common general knowledge at the filing date of the patent discloses the suitability of an anti-NGF antagonist antibody to improve the physical function of an osteoarthritis patient in the absence and independent of pain relief.  Therefore, the invention as defined in claim 1 of the main request is not disclosed in the application such as to meet the requirements of Article 83 EPC." 
• 
  
• Turning to the auxiliary requests: " the board could not identify exceptional circumstances which would justify the amendment of the proprietor's case by filing auxiliary requests 11, 17, 18 and 19 after the board had summoned the parties to oral proceedings and issued its preliminary opinion. The board thus decided not to admit auxiliary requests 11, 17, 18 and 19 into the appeal proceedings pursuant to Article 13(2) RPBA 2020." 
• The patent is revoked.

EPO 

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

T 0960/15 - Review of decision to admit

Key points

•  The Board, in the headnote: " In the present case, the Opposition Division decided to consider document D8 and the review of this decision is a primary object of the appeal proceedings " 
• This implies that the Board can find the decision of the OD to be incorrect and hence may hold the document D8 to be inadmissible. 
• Whether the Boards have such power was denied in T 0617/16. 
• " There is, therefore, long-established jurisprudence setting out the Boards' powers to review discretionary decisions, and the limits on those powers that reflect the decisions' discretionary nature. This extends to a discretionary decision to admit a submission, such as D8." 
• " Article 12(2) RPBA 2020 introduced a general definition of the nature and scope of the appeal proceedings in accordance with the established case law (see EPO OJ Supplement 2/2020, explanatory remark, page 33/65). Under this provision (which is applicable, see Article 25(1) RPBA 2020), D8 itself and the parties' cases in respect of its admission into the proceedings belong to "the requests, facts, objections, arguments and evidence on which the decision under appeal was based"." 
• " When reviewing the [OD's] not to disregard it, the Board cannot identify any error in the principles applied, or not applied, by the Opposition Division, or anything unreasonable about it. On the contrary, the Opposition Division demonstrated the relevance it saw in D8, when considering it novelty-destroying in respect of the first auxiliary request. Furthermore, the Opposition Division apparently only needed to read some parts of the extensive D8 to verify its relevance (appealed decision, point 6.1.1)." 
•  "The Opposition Division concluded that claim 4 of the first auxiliary request lacked novelty over D8" 
• 
  

EPO T 0960/15

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

T 0127/20 - Opposition inadmissible

Key points

• The present case is a rare example of an inadmissible opposition (and an appeal confirming the rejection of the opposition as inadmissible). 
• The novelty attacks are based on an earlier-filed but later published German patent application; the inventive step attack refers to the documents cited in the grant proceedings in general, and the attack of insufficiency of disclosure in the check box in the opposition form, is only substantiated as lack of clarity in the reasoned statement of opposition. 
• The PCT application claiming the priority of the German patent application entered the European phase, but that PCT application was not cited in the Notice of opposition. 
• Citing a national prior right is of course a classic one since T 550/88. 
• Because the opposition is to be rejected as inadmissible, the merits of the attack based on the Euro-PCT application as prior right are not to be considered, because that attack was not in the file before expiry of the nine-month opposition period. The Board in translation: " The question whether the content of WO 2015/150227 A1 (and another document WO 2007/022923 A2) submitted on March 6, 2018 after the opposition period is prima facie relevant or not, can only arise if an opposition is admissible, and therefore an opposition procedure is validly initiated." 
• The notice of opposition was signed by a (EQE-passed) professional representative, incidentally.
• Oral proceedings before the Board were summoned to be held on 1 July and cancelled on 20 April 2022 but the decision is dated 12 April 2022? 

EPO T 0127/20 

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

T 1546/19 - Ratio decidendi

Key points

• This is an appeal against a refusal. In fact, the second appeal, against a second refusal.
• " The main request is almost identical to the sole request underlying the impugned decision, the only difference being the correction of a typographic error in feature C), which now reads: "in releasing" instead of "is releasing". The request underlying the impugned decision is identical to the request considered in the first decision of the board (T 0883/15, dated 28 May 2018)." 
• " In the first decision of the board concerning the current application, it was decided that document Dl fails to disclose by explicit statement or unambiguous implication [feature X]" 
• " The appellant argues that the examining division was only bound by the "ratio decidendi" of the first decision of the board to the extent that the claims were novel over document D1 but not regarding whether document D1 also discloses [feature Y, a load detection unit]. Notably, in the context of inventive step, a different juridical appreciation of the facts was required." 
• The Board in the first decision stated: " Thus, the board concludes that D1 indeed teaches the detection of a pressure load exerted on the touch sensor." 
• " In view of the above, the board holds that the examining division was indeed bound by the first decision of the board not only to the extent that the claimed subject-matter was novel but also as to the distinguishing feature identified by the board. Hence, the examining division was correct in limiting the discussion during the second oral proceedings to the question of whether the distinguishing feature identified in the board's first decision was obvious. Since the issue of novelty over document D1 is res iudicata, even the board is bound by its previous decision. I.e. it cannot be re-discussed in these proceedings which of the claimed features are known from document D1 as far as these features were considered in the first decision of the board."
  
•  As a comment, "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."
• As a further comment, for the confluence of Art. 111 and res iudicata, see also T 0449/15.
• "In the statement setting out the grounds of the second appeal, the appellant further argued that the board violated its right to be heard by remitting, during the first appeal, the case to the examining division without holding oral proceedings. As a consequence, the appellant had no opportunity to discuss the disclosure of document D1 in oral proceedings before the board of appeal." 
• The Board finds that the request for oral proceedings in the first appeal was auxiliary to the request for remittal, which was granted.
• Moreover, "the first decision of the board was taken in accordance with the appellant's requests and based on grounds on which the appellant had had an opportunity to present its comments. Consequently, it meets the requirements of Article 113(1) EPC." 
• As a comment, the relevance of these observations is unclear to me: if it is res iudicata, even a clear violation of Art. 113(1) EPC does not permit setting it aside (as far as I know).
• 
  

EPO T 1546/19

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

J 0014/21 - Restoration of priority and authentic interpretation

Key points

• An applicant files a request for restoration of priority with the EPO as dO, such a request having been granted by the IB as rO based on the unintentional requirement. 
• The entry into the regional phase was carried out with further processing.
• This includes a further processing fee for the declaration under Rule 6(6) EPC.
• The Guidelines state that: "where the application is deemed withdrawn under Rule 160(1) for failure to comply with a requirement under Rule 159(1), the request for restoration of priority may still be filed together with a timely request for further processing in respect of the 31-month time limit under Rule 159(1)"
• However, the relevant provision of the PCT, Rule 49ter states that the request is to be "filed with the designated Office within a time limit of one month from the applicable time limit under Article 22 [PCT]", which is one month from the expiry of the 31-month time limit of Rule 159. 
• The Legal Board: "There is nothing in the law to indicate that the failure to observe the time limits under R. 159(1)(c) and (f) EPC, and the subsequent remedying of this failure with the grant of further processing, could have an impact on the failure to meet the time limit under R. 49ter.2(b)(i) PCT."
• The Board then notes that when the provision was adopted, the PCT Assembly adopted "Understandings" stating that "where ... the designated Office reinstates the rights of the applicant with respect to that international application in accordance with Rule 49.6 or 76.5(ii), respectively, such reinstatement will extend to ... the time limit under Rule 49ter.2(b)(i)." 
• Rule 49.6 PCT is implemented by the EPO as re-establishment (the exceptional case where RE is possible even though FP is also possible), but that appears to be no further discussed in the decision.
• The Board concludes that: " further processing (or the granting of further processing) "turns back the clock" so as to re-open the possibility for a request for restoration for which the time limit had already been missed." 
  
  
• PCT travaux préparatoires
• "There is no jurisprudence of the boards of appeal explicitly addressing the legal quality of "understandings" of the PCT Assembly, particularly not for a case like that in hand in which the relevant provision of the PCT Regulations is silent on the (intended) legal consequences of a particular factual situation, with only the "understandings" addressing that situation. " 
• The Legal Board then addresses the more general point: " Taking into account any such agreement or subsequent practice of the parties to a treaty, whereby the parties can be seen as the treaty's legislator, is commonly referred to as the method of "authentic interpretation" by the legislator or "authentic means of interpretation", although these, or similar, terms are used for a wide variety of situations and cases, and not always in a consistent fashion. The parties as the "masters" of "their" treaty are, in principle, not prevented from making (subsequent) understandings or agreements relating to the treaty. Any such agreements are, after all, an expression of the consensus of the parties, i.e. the legislator [follows a very useful reference to extensive legal literature]." 
• The Legal Board also refers to Art. 31(1) VCLT and Art. 31(2)(a) VCLT.
•  "The board understands Art. 31 VCLT, in particular its paragraphs (2)(a) and (3)(a), to be based on the general idea that an agreement, or a subsequent agreement, between the parties of the treaty may play a role when assessing the "context" within the meaning of Art. 31(1) VCLT. Any such agreement is then taken as formalised evidence of the intention of (all) the parties, i.e. of the legislator, that a specific provision should be interpreted or applied in a certain way. Accepting that agreement as being a part of the "context" within the meaning of Art. 31(1) VCLT has to be seen in contrast to the supplementary means of interpretation, including the preparatory work of the treaty and the circumstances of its conclusion, under Art. 32 VCLT, to which recourse may be had only for confirming the result of the interpretation under Art. 31(1) VCLT, or for the purpose of resolving an ambiguity or obscurity or of avoiding a manifestly absurd result. While the intention of the legislator might be deduced from the preparatory work of the treaty, often referred to in the EPC context as travaux préparatoires, the legislator's intention, which is formalised in an agreement between the parties, is accorded more weight for the interpretation of the treaty provisions. Whether it was indeed the legislator's intent that the agreement formed part of the "context", or was to be taken into account together with it, will depend on the circumstances of each case." 
• As a comment, the issue of whether, in the context of the EPC, the Administrative Council is competent to lay down authentic interpretations of the EPC Articles (say in Rule 28(2) EPC) was also at play in G3/19  "Pepper". However, in that case, the Enlarged Board, perhaps wisely, did not comment on whether Rule 28(2) EPC was binding on the Enlarged Board.
• Turning to the publicity requirement:  "there may be cases where an understanding of the PCT Assembly will have to be disregarded when interpreting the newly introduced rule, in spite of the "understanding" expressing the legislator's intention, failing its publication in a manner that allows users to readily take note of it without having to have in-depth insight into the PCT legislative procedure. This will be the case, in particular, if the "understanding" leads to the application of the law which is to the detriment of the party relying on a newly introduced rule." 
  
  
• The request for restoration of priority was hence filed timely but still fails on the all due care criterion: "the attorney [a "Russian-speaking patent attorney based in the United States"] knew that instructions from the appellant for filing the international application were missing. Nevertheless, he went on a weekend trip, which included the final day of the deadline, without access to his emails and without having reached out to the appellant (again) beforehand. Thus, he could not clarify beforehand whether the appellant would give the necessary instructions immediately. Lastly, the attorney did not find a substitute for the duration of his absence who could have ensured that any last-minute instructions from the appellant could have been implemented and that the application could be submitted on the last day of the deadline at the latest." 

EPO J 0014/21

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

T 1234/17 - Customizing footwear

Key points

• "In the Board's view, the claimed invention can essentially be seen as two mappings: the first maps sensor acceleration data to gait category and the second maps the gait category to a "customized design". The first mapping is specified in the claim to be via a "model of human physiology", which according to the description, see [0041], might involve "suitable statistical processing". The model of human physiology is defined by physiological attributes[]. In the case of footwear [to be customized] the physiological attributes are a set of categories of human gait (e.g., supination, protination, over-protination, neutral)."
• "the Board considers that the basic idea of customising footwear depending on the model of human physiology, that is, the type of human gait, does not contribute to inventive step, but is a non-technical idea that would be given to the skilled person [by the notional business person, PJL].'
• "Regarding the first mapping, the recording of sensor data, such as time series of acceleration vectors, is no doubt technical. However, the question is whether the mere idea of mapping this acceleration data to gait category is technical, involving any technical considerations or having any overall technical effect. This question arises in many inventions that involve mappings and algorithms. "
• " In T 1798/13 [] the present Board essentially held that it was not enough that an algorithm makes use of a technical quantity in the form of a measured physical parameter (weather data). What matters is whether the algorithm reflects any additional technical considerations about the parameter, such as its measurement. "
• "the Board considers that the mere idea of mapping acceleration data to gait category does not contribute to inventive step either, but is an idea that would be given to the skilled person  [by the notional business person, PJL]. Only its implementation involving the sensors could contribute."
• The present decision does not refer to G 1/19. 

EPO 

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

T 1437/07 - The title and Art. 123(2)

Key points

• An older decision from 2009.
• The abstract can not be used as basis for Art. 123(2). However, can the title of the application be used for Art. 123(2)?
• "In decision T 246/86 (OJ EPO 1989, 199, point 2.2), the board found that the abstract does not form part of the disclosure for the purposes of Article 123(2) EPC." 
• Because Article 85 EPC provides that "the abstract shall merely serve for use as technical information; it may not be taken into account for any other purpose".
• The Board: "amended claim 1 [in the present case] is based on a heading which is not on the cover sheet, but which is within the description of the application as filed [namely, the heading of Example 9]. According to Article 76(1) EPC and Article 123(2) EPC the allowability of an amendment is judged on the "content" of the application. The term "content" relates to the parts of a European patent application which determine the disclosure of the invention, namely the description, claims and drawings (Case Law of the Boards of Appeal, 5th edition 2006, III.A.1.1, first paragraph). Thus, headings that are situated within any of these parts form part of the disclosure content of an application and therefore amendments may be based on them."
• As a comment, an application as filed usually does not have a "cover sheet". The A1 publication may have a cover sheet. USA provisional applications sometimes have a cover sheet, but those are not relevant applications for Art. 123(2). The filing of an EP application normally includes the Request for Grant form (mutatis mutandis the PCT Request form for Euro-PCT applications). 
• Some patent applications have a title on the top of page 1 of the description. I think the present decision implies that also such a title on the top of page 1 of the description is "situated within any of these parts form part of the disclosure content of an application and therefore amendments may be based on them" and hence is part of the basis for Art. 123(2).
• The Board: "[The opponent] submitted that the special character of a heading becomes evident when considering that the title of a patent could be amended by the EPO without informing the applicant or patent proprietor. However, the only titles that may be amended by the EPO are those printed on the cover sheet of a patent application (for the amendment procedures, see the Notice dated 13 March 1991 concerning the amendment of the title of the invention in European patent applications, OJ EPO 1991, 224; Guidelines, A-III, 7.2). This "title of the invention" is also part of the abstract (Rule 47(1) EPC). "
• As a comment, the title of the application that can be amended by the EPO is indeed the title that is printed on the cover sheet of the publication of the application (e.g. the A1 publication) (and later on the cover sheet of the patent specification). Neither the EPO nor the applicant can amend the application as filed, as I understand it (subject to R.56, missing parts).
• The Board recalls that "This "title of the invention" is also part of the abstract", but that probably means the abstract included in the publication of the application (the abstract on the cover page of the A1 publication). The abstract that is part of the application as filed documents filed by the applicant when filing the application, typically on a separate page, does not change if the EPO amends the title.

EPO T 1437/07

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

T 0518/20 - Art.12(4) RPBA 2020 in action

Key points

• A notice of opposition is filed. Patentee requests rejection of the opposition with their response. The OD issues summons. The patentee files 15 auxiliary requests by the Rule 116 date. The OD finds AR-4 to be allowable (and admits it, it seems there was no objection to this).
• Opponent appeals and includes in the SoG a new inventive step attack against D4 based on the document E3 already on file and considered in the OD decision and the prior art acknowledged in the patent in suit.
• The Board does not admit the new attack.
• "Die beschwerdeführende Einsprechende hat mit der Beschwerdebegründung erstmals vorgetragen, dass der Gegenstand des Anspruchs 1 gemäß Hilfsantrag 4 nicht auf einer erfinderischen Tätigkeit beruhe, wenn man vom im Streitpatent genannten Stand der Technik (dort Figur 1) ausgehe und diesen mit der Lehre der E3 oder der E1 kombiniere. Damit richtet sich das Beschwerdevorbringen der Einsprechenden nicht gegen die der angefochtenen Entscheidung zugrundeliegenden Argumente und Einwände (vgl. Artikel 12 (2) VOBK 2020). 
• "Die beschwerdeführende Einsprechende hat weder im schriftlichen Verfahren noch in der mündlichen Verhandlung Gründe dargetan, warum dieser Angriff erst mit der Beschwerdebegründung vorgebracht wurde. Schon von daher war die mit der Beschwerdebegründung neu vorgebrachte Angriffslinie nicht in das Verfahren zuzulassen."
• The attack is not admitted under Art. 12(4) RPBA 2020.

EPO T 0518/20

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