T 0234/19 - Selecting CPA, waiving attack

Key points

•  In this opposition appeal, in translation: "In the opposition proceedings, the appellants, as opponents, attacked inventive step in the oral proceedings based on D3 as the closest prior art, see pages 2 and 3 of the minutes of the proceedings. Other lines of argument put forward in the notice of opposition or in the further course of the opposition proceedings were not pursued further [during the oral proceedings]. Accordingly, inventive step was dealt with in the decision under appeal solely on the basis of D3, see point 16 of the reasons for the decision."
• "In its statement of grounds of appeal, the appellant does not address the opposition division's decision at all. It neither argues that the subject matter of the independent claims is obvious to the person skilled in the art based on D3, nor does it argue that and why D3, contrary to the view taken by both parties in the opposition hearing and consequently adopted in the opposition decision, does not represent the closest prior art ."
• "Instead, the appellant raises objections based on D1 (claim 1) or D4 (claim 8), which were raised in its notice of opposition or in later submissions in the opposition proceedings, but were not pursued further in the course of the opposition proceedings. "

• "The Board does not admit this argument into the appeal proceedings under Article 12(4) RPBA 2007 "

• "Pursuant to Article 12(2) RPBA 2007, to which the aforementioned Article 12(4) refers, the statement of grounds of appeal must state the grounds on which the contested decision is to be set aside. This has not happened with regard to Article 56 EPC. The primary purpose of the appeals procedure is to review the contested decision in court, and not to revive lines of argument that were abandoned in the course of the opposition proceedings and therefore not dealt with in the contested decision, and to feed them into a decision for the first time in the appeals procedure."

• "The Appellant did not comment further on this point addressed in the Board's communication under Article 15(3) RPBA 2020." The opponent/appellant indicated that he would not attend the hearing. The claims are held to be inventive.

• As a comment, the minutes of the oral proceedings before the OD indeed mention that the opponent selected D3 as the closest prior art.

• As a further comment "or which were no longer maintained" is a new addition in Art. 12(6)(s.2) RPBA 2020 compared to Art. 12(4) RPBA.

EPO 

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

T 0899/18 - Rat embryonic stem cell

Key points

•  This might be a run-of-the-mill biotech opposition case.
• Claim 1 is directed to: " A rat embryonic stem cell characterized by having the following properties (a)-(j):   [...] (c) having an embryoid body forming ability, (d) expressing SSEA (Stage-Specific Embryonic Antigen)-1 and SSEA-4, (e) having the same number of chromosomes as does a normal rat cell, (f) capable of being subcultured and holding the undifferentiated state, (g) having in vitro pluripotency, (h) having the potential to differentiate into cells of the three embryonic germ lineages, (i) having teratoma formation ability, and (j) having an ability to produce a chimeric rat." 
• Claim 2 is directed to " A method of producing a rat embryonic stem cell " 
• Claim 5 is the product-by-process claim: " A rat embryonic stem cell obtained by the method according to any one of claims 2 to 4." 
• Claim 13 is: " Use of a rat embryonic stem cell of claim 1 or 5 in the production of a genetically modified rat." 
• Claim 14 is: " A method of producing a genetically modified rat, which comprises the following steps (X)-(Z): (X) introducing a desired gene into the rat embryonic stem cell of claim 1 or 5, (Y) preparing an oocyte for transplantation comprising the rat embryonic stem cell into which the gene was introduced, (Z) transferring the oocyte for transplantation into a pseudopregnant female rat to produce an offspring rat.
• Claim 15 is: " A genetically modified rat produced by the production method of claim 14." 
• The opponent appeals only on the ground of insufficient disclosure.
• " The methods and results disclosed in the patent are confirmed by the experimental evidence in document (2), which was produced and submitted by the respondents after the publication date of the application on which the present patent was granted. While the appellant argued that the probative value of document (2) was highly suspect, he did not put forward any persuasive arguments to support his allegation. 
• " In the light of the experimental results provided in the examples of the patent, there is no doubt that chimeric rats produced by the methods taught in the patent are genetically modified, in particular by insertion of the GFP gene into the cell genome in most tissues, including testis (see Figure 24 of the patent). No experimental evidence to the contrary has been submitted by the appellant." 
• The Board: " the evidence in documents (1) and (3) does not discharge the appellant's burden of proof, nor supports his objection of lack of sufficient disclosure of the claimed rat embryonic stem cells." 
• Application filing date 2005.

• EPO 

The link to the decision is provided after the jump.

T 0570/18 - Dairy Nutrition with Cereals

Key points

•  The patentee is a big food company.
• " Claim 1 of the main request (patent as granted): "The use of a fermented dairy product contained in a container for mixing with cereals, wherein the mixing comprises the following steps: a) providing cereals in a recipient having an upper opening, preferably a bowl, a cup, a glass, or a plate, b) pouring the fermented dairy product from the container onto the cereals, and c) optionally stirring with a stirring mean [sic], preferably with a spoon, and wherein the fermented dairy product has a viscosity of from 300 to 600 mPa.s, [] measured at 10°C [and further measurement details]."
• See the patent application here: https://patents.google.com/patent/WO2012038391A1/ 
• The Board: " The patent aims at promoting the consumption of a fermented dairy product contained in a container, and involves mixing the dairy product with cereals. The dairy product's specific viscosity - prevents the cereals from being immediately and completely covered with the dairy product; - calls for not much stirring (paragraphs [0012] and [0013]); and - is stated to be associated with crunchiness of the cereal even after contact with the fermented dairy product (example 6).' 
• " D2 is an excerpt from the Mintel database GNPD. It describes three packaged commercial products sold before the patent's priority date. One of the entries in the database is the product with the record ID 1278892 ("Rumblers Oat Crunch"), sold in April 2010. This is the product that is referred to as D2 in the following. The package of D2 "Rumblers Oat Crunch" comprises a cereal product in a first container and a yogurt (i.e. a fermented dairy product) in a second container. The label instructs the consumer to pour the yogurt onto the cereal product and to stir (figure, page 4)." 
• "the claimed use differed from D2 only by the viscosity range in claim 1." 
• " In the patent in suit, the comparative fermented dairy products have a viscosity far from the viscosity range called for in claim 1 and there is only one data point within this range. No data was provided for the commercial product of D2.

  2.6.4 A decisive point lies in comparing the claimed subject-matter with the closest prior art D2. There is no disclosure in D2 of the viscosity of the fermented dairy product. During the opposition proceedings, which started in April 2016, it was not possible to establish the viscosity of the fermented dairy product of D2 at the point of time when it was sold." 

• " In 2017, the opponent attempted to obtain further information on the viscosity of the product of D2. In the meantime, products sold under the brand "Rumblers" were no longer available. These products had been rebranded in 2014 as "Nomadic Oat Clusters", as press release D8 shows. For a product belonging to this brand, the opponent established the viscosity of the yogurt at about 300 mPa.s." 

• The patentee: " there was no certainty that the product of D2 and those sold under the brand "Nomadic Oat Clusters" were identical. The rebranding could have been associated with a modified composition and in particular a modified viscosity."

• The Board: " However, there is no evidence that the rebranding exercise changed the product of D2 in terms of its textural properties.   Rather, the contrary applies. The press release D8 informs the public that the product formerly known as "Rumblers" was rebranded to "Nomadic Oat Clusters" and this involved "combining the same taste and creamy Irish yogurt, just with a new name and a great new look". It is more likely than not that the rebranding only changed the presentation of the product, while the textural properties or viscosity remained as they were. Moreover, the appellant is correct that it would be improbable and uncommon for changes influencing the consumer's perception of the product not to be mentioned in the press release."

• The Board finds the effect not proven.

• " Therefore there is no effect to be considered in the formulation of the technical problem.' 

•  " Consequently, starting from D2, the technical problem is the provision of an alternative use." 

• " The skilled person would consider modifying the runny property of the fermented dairy product, i.e. its viscosity. The board fails to see anything other than an arbitrary selection in the distinguishing feature. Furthermore, the appellant correctly argued that to arrive at the viscosity range called for in claim 1 would be a matter of routine. The skilled person would modify the runniness (i.e. viscosity) of the yogurt while ensuring that it adequately coated the cereal and met customers' preferences." 

• The Board finds the claim to lack an inventive step and, after consideration of an auxiliary request, revokes the patent.

• For the real EQE Paper C experience, the decision even includes a paragraph about " a  a blogger's report on the product "Rumblers Oat Clusters", published shortly after the patent's filing date (DYC1). " 

EPO 

The link to the decision is provided after the jump.

T 1767/19 - In principle the subjective technical problem

Key points

•  The Board recalls that the objective technical problem should in principle be based on the [subjective] problem set out in the patent (application).
• The Board in translation: " When objectively determining the problem solved according to the invention, the problem formulated in the patent in suit should first be taken as a basis. Only if the problem formulated in the application does not do justice to the state of the art and/or is not solved in accordance with the features of the invention does it have to be adapted to the state of the art and/or the actual technical success (T 1060/11, Reasons 7.2) . " 
• " The task in the present application is technically sensible and is solved by the features of the independent claim. The objectively closest prior art is said to be identical to that stated as the closest prior art in the present application. Consequently, the subjective task specified in the present application [" der in der vorliegenden Anmeldung genannten subjektiven Aufgabenstellung"] may not be deviated from. " 
• "Furthermore, the task should not be generalized ("improving the quality of the hologram"), nor should the task be specified to such an extent that the solution would be anticipated ("avoidance of multiple reflections and interference"). The solution is based on the finding that the incorrect exposure of the pixels is due to optical interference in the holographic recording material, which in turn is caused by the multiple reflections between the parallel surfaces of the light modulator and the beam splitter cube." 

EPO  T 1767/19

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

T 1992/15 - New patentee

Key points

• The OD revokes the patent. The written decision is dated 10.08.2015. On 05.08.2015, a valid request for registration of a transfer of the patent was filed. The registration under Rule 85  was made on 14.08.2015 with effect as of 05.08.2015. 
• On 08.10.2015, a Notice of appeal was filed in the name of the first patentee.
• The Board decides that this appeal is inadmissible under Article 107.
• "Am 8. Oktober 2015 war die Clariant Finance (BVI) Limited daher nicht mehr Patentinhaberin und konnte demgemäß auch keine rechtswirksame Beschwerde einreichen."
• A second appeal was filed on 26.11.2015 in the name of the new patentee. This date is clearly outside the two-month period when calculated from 20.08.2015.
• However, here we enter EQE paper D territory. Namely, the question is whether the written decision of 10.08.2015 was validly notified to the patentee. Without a valid notification, the period for filing an appeal does begin (but a Notice of appeal can already be filed before the notification).
• "Die Zulässigkeit dieser Beschwerde hängt davon ab, ob die angefochtene Entscheidung der Einspruchsabteilung einer beschwerdeberechtigten Partei mindestens zwei Monate und 10 Tage vor Beschwerdeerhebung, das heißt vor dem 16. September 2015 (vgl. Artikel 108, Regel 126(2) EPÜ), wirksam zugestellt wurde - in diesem Fall wäre die Beschwerde vom 26. November 2015 verspätet und damit unzulässig - oder ob eine wirksame Zustellung später oder gar nicht erfolgt ist - in diesem Fall wäre die Beschwerde rechtzeitig eingelegt und damit zulässig. "
• The decision of the OD was notified to a professional representative. The question is if the representative was an authorized representative of the party that was the patentee, at the relevant date.
• The transfer of the patent was effective 05.08.2015, such that the decision could not be notified to the representative. Moreover, the request of 05.08.2015 mentioned a new representative for the new patentee.
• Hence, the second appeal was timely filed.
• For the admissibility of the Main Request, the Board applies Art. 13 RPBA 2007 because the first summons was issued before 01.01.2020.

 

EPO 

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

T 0308/17 - Need to substantiate carry-over requests

Key points

• This decision was issued in March 2020, but the Enlarged Board in July 2022 rejected the petition for review concerning it. (Entry in the EP phase in 2007, incidentally).
• In this opposition appeal, the opponents appeal. "With the reply to the appellants' statements of grounds of appeal, the respondent [patentee] submitted a main request and auxiliary requests I to XVIII. The main request corresponded to the request considered allowable by the opposition division. Auxiliary requests I to XVIII were filed for the first time in the appeal proceedings."
• The phrase "were filed for the first time" may require some analysis but seems not essential for the Board's reasoning.
• The patentee argued that: "essentially the same claim requests had been filed before the opposition division and had been substantiated then, being aimed at overcoming the novelty objections with regard to document D1."
• The interesting issue is the admissibility of Auxiliary Request X.
• The Technical Board, on the admissibility of Auxiliary Request X: "The case law of the Boards of Appeal has consistently held that this requirement [of Article 12(2) RPBA 2007] is not met if claim requests are not substantiated, except if the amendments made are self-explanatory. It has also held that requests that are not self-explanatory are to be considered as submitted only on the date of their substantiation "
• "[The appeal procedure is] a distinct procedure in which any facts, evidence or arguments considered relevant must, if need be, be resubmitted (see G 10/91, OJ 1993, 420; G 9/92 and G 4/93"
• "Since the respondent's reply to the statements of grounds of appeal contains no explanation relating to the auxiliary requests, beyond the statement that "all of these requests address the newly raised objections against claims 20 to 22", the board can only hold that the amendment made to claim 1 in auxiliary request X was not substantiated therein. In view of the above mentioned case law (see point 19.), it is not relevant whether or not the claim requests were substantiated in the proceedings before the opposition division. It remains to be decided whether or not the amendments made to claim 1 are self-explanatory as suggested by the respondent (see section XXI. above)."
• " Contrary to the respondent's position, it was not self-explanatory which objections were addressed by each of the numerous amendments of claim 1 of the request (see section XI), i.e. whether it was lack of novelty or inventive step or any other objection raised in the statements of grounds of appeal against claim 1 of the main request (see sections IV and V) nor why the amendments would overcome any of these objections."
• See, similarly, T 0238/19.

EPO T 0308/17

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

T 2920/18 - A close reading of Art.13(2) RPBA

Key points

•  The patentee (respondent) files a new auxiliary request after notification of the summons.
• "The respondent argued that the first auxiliary request did not comprise any additional subject-matter since only claims 2 to 5 and claims 12 and 13 of the main request had been deleted in reaction to the Board's preliminary opinion as regards the objection under Article 100(b) EPC against claims 2 and 3 of the main request"
• "The Board follows decision T 247/20, point 1.3 of the Reasons, in that the examination under Article 13(2) RPBA 2020 is of a two-step nature (see also T 2988/18, point 1.2 of the Reasons), i.e. in that it is first necessary to examine whether there is an amendment to a party's appeal case. If that question is answered in the negative, there is no discretion not to take the relevant submission into account. However, if the question is answered in the positive, it is necessary to examine whether the party concerned has provided cogent reasons for the existence of exceptional circumstances which may justify the submission at such a late stage of the proceedings."
• "The question of whether Article 13 RPBA 2020 is applicable in the case of a mere deletion of claims, [...] is answered differently in the case law."
• "according to that systematic interpretation, the filing of an amended set of claims, even if the amendment is merely a deletion of claims and the remaining claims were already part of a set of claims in the appeal proceedings, constitutes an amendment to a party's appeal case. The Board finds the systematic interpretation of the term "amendments to a party's appeal case" convincing and endorses this view. "
• So, whether or not to admit the request is subject to Art. 13(2) RPBA.
• " the Board would first like to point out that Article 13(2) RPBA 2020 does not explicitly provide for discretionary power of the Boards. However, it is clear from the explanatory remarks that the legislator had the intention to give the Boards discretionary power (see Supplementary Publication 1, OJ EPO 2020, Annex 2, page 221, explanatory remarks in the third column, third paragraph, last sentence: "The Board may decide to admit the amendment in the exercise of its discretion."). This is also apparent from Article 13(1), first sentence, RPBA 2020, which in general provides for discretion for the admittance of amendments to the appeal case after the filing of the statement of grounds or reply. Furthermore, the exclusion of any discretion would hardly be compatible with Article 114(2) EPC."
• "In T 1294/16 the Board concluded that the word "in principle" should be ignored due to its ambiguity, because it was either redundant to the requirement of "exceptional circumstances" or would provide a residue of discretion for the Board to admit a request even in the absence of exceptional circumstances (cf. ibid., point 18.1 of the Reasons). The Board does not follow this approach, since a term contained in a legal provision should only be disregarded if no interpretation appears possible or if it appears to be manifestly contrary to the meaning of the provision, or if an interpretation cannot be reconciled with higher-ranking law"
• "On the contrary, the Board is of the opinion that a meaningful interpretation is readily possible. The principle laid down in Article 13(2) of the RPBA 2020 is precisely that amendments to a party's case shall not be taken into account at this late stage of the procedure ("in principle"). The exception to this principle then follows in the half sentence introduced by the phrase "unless", i.e. the principle that amendments to a party's case shall not be taken into account at this late stage of the procedure (i.e. "in principle") can be set aside if the existence of exceptional circumstances is demonstrated with cogent reasons. Such an interpretation is also consistent with the explanatory remarks to Article 13(2) RPBA 2020"
• Turning to exceptional circumstances: "the explanatory remarks appear to require causality in the sense that the amendments to a party's appeal case must have been triggered by exceptional circumstances.
• "However, in similar cases, some Boards have acknowledged exceptional circumstances provided that the admittance of the amendments was neither detrimental to procedural economy, nor to the convergent approach laid down in the RPBA, nor to the legitimate interests of a party to the proceedings. This specific procedural situation was considered an "exceptional circumstance" within the meaning of Article 13(2) RPBA 2020 (see T 1598/18, point 25.1 of the Reasons; T 1294/16, points 18.3 and 19 of the Reasons; T 339/19, point 1.5 of the Reasons)." 
• "It should be noted that the wording of Article 13(2) RPBA 2020 does not require the amendment to be triggered by exceptional circumstances."
• As a comment, that's undeniable true. Based on the English wording, the requirement is simply that "there are exceptional circumstances".  Any requirement for a nexus between the circumstances and the appeal case is implicit. 
• As a further comment, the wording requires that the party justifies the circumstances (in the English version). So, if the relevant circumstance is a  new objection raised by the Board, it is for the party to justify that circumstance according to the literal wording of the provision.
• " It is sufficient for exceptional circumstances to exist, which can therefore also be of a legal nature. In the Board's view, such an interpretation does not conflict with the above explanatory remarks, which appear to illustrate only the main scenario under that provision that an amendment to the appeal case may be taken into account if it is made in reaction to exceptional circumstances."
• " In addition, a teleological interpretation which considers the purpose of the EPO's power to disregard late-filed facts or evidence and the discretionary power to refuse new requests as enshrined in Articles 114(2) and 123(1) EPC seems to support this conclusion. It follows from the preparatory documents ("travaux préparatoires") to the EPC 1973 (cf. T 122/84, point 11 of the Reasons; T 951/91, point 5.13 of the Reasons) that this procedural possibility is intended to prevent the parties from improperly delaying the proceedings. In particular, it serves to ensure the principles of procedural economy and of fair proceedings. It should therefore be noted that the power to disregard late submissions under the EPC does not constitute a procedural end in itself. In the Board's view, therefore, there is no reason, unless there is a risk of prejudice to the above principles, to disregard requests filed at a late stage of the proceedings aiming at maintenance of a patent in a particular version (cf. also T 339/19, points 1.3.3 and 1.5 of the Reasons)."

EPO 

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

T 0431/21 - Discretion under Rule 137(3) EPC

Key points

•  "The examining division, in exercise of the discretion provided by Rule 137(3) EPC, decided not to consent to the amendments introduced in the main request and in the auxiliary requests 1 to 13, all requests filed on 28 July 2020. "
• "The Board comes to the conclusion that [] the examining division exercised its discretion under Rule 137(3) EPC in an unreasonable manner thereby exceeding the limits of the discretion, and that the deficient reasoning in the contested decision gives rise to a substantial procedural violation in the meaning of Article 113(1) EPC and Rule 111(2) EPC detrimental to the appellant's (applicant's) right to be heard,"
• "the Board agrees that the criterion that an amended set of claims is "prima facie" not allowable (so called "clear non-allowability") is, in general, an accepted principle (amongst others) to be taken into account in the assessment of whether consent under Rule 137 (3) EPC should be given to the amendment. However, the Board concurs with the appellant (applicant) that the examining division did not duly balance this criterion with the equally relevant principle of the legitimate interest of the appellant to obtain a valid patent."
• "that the requests dated 28 July 2020 were filed in due time, i.e. within the time limit set according to Rule 116(1) EPC, and that they are convergent, as also acknowledged by the examining division in its decision (see page 4). In fact each lower raking auxiliary request is further limited with respect to the preceding higher ranking request by incrementally introducing additional features. "
• "he amendments filed by the appellant (applicant) in response to the summons to oral proceedings represent a fair attempt to overcome the "prima facie" objections raised therewith by the examining division under Articles 84 and 123(2) EPC"
• "In particular, in order to respond to the "prima facie" objection of the examining division that several features were allegedly essential for understanding the invention and for achieving the claimed technical effect and hence, as such, could not be omitted from the independent claims, the appellant (applicant) incrementally introduced in the main request and in the auxiliary requests at stake further technical features, "
• "In the Board's view, as the amendments are considered at least to go in the right direction, the decision of the examining division to assess "prima facie", i.e. without discussing any of them in detail, that they were all unsuitable for overcoming the objections raised is not justified."
• " the Board shares the appellant's (applicant's) view that discussing the alleged "clear non-allowability" for each request separately, as wished by the appellant (applicant), would have been fair and appropriate and therefore should have not been denied by the examining division at the oral proceedings. "
• "Finally, the objection of the examining division that the fact that no adapted description was concurrently filed resulted in the impossibility to interpret the claims in the light of the description is not convincing and in itself does not justify the rejection of all the amendments under Rule 137(3) EPC. In fact the Board cannot see why, in the event that an interpretation of the scope of the claims in the light of the description was required and justified, also the originally filed description could not be used."
• For all the reasons above the Board thus concurs with the appellant (applicant) that the examining division exercised its discretion under Rule 137(3) EPC in an unreasonable manner and thereby exceeded the proper limits of its discretion.
  
  
• Turning to when features are "essential" for Art. 84: "In particular, it was correctly argued [by the applicant] that in order to assess [whether] a feature was essential or not, the technical problem addressed by the application must be considered, whereby any feature which did not contribute to solve this technical problem was not an essential feature and therefore did not need to be recited in the independent claim/s which otherwise would be unduly limited in scope. "
  
  
• On the right to be heard: " the Board concludes that the examining division should have addressed the arguments provided by the appellant (applicant) in the decision under appeal and explained why they were considered not convincing, and not simply list the objections at stake and assert that the right to be heard was respected, as recited in the contested decision, page 6 onwards." ... the Board agrees with the appellant (applicant) that the reasoning presented in the section of the decision dealing with the alleged "clear non-allowability" issue in view of Article 84 EPC (see page 6, fourth full paragraph onwards) fails to explain why the detailed arguments presented in writing by the appellant (applicant) in support of the allowability of the requests filed on 28 July 2020 are not convincing.In fact in the relevant passages of the decision the examining division does not address or rebut these arguments in any way, but simply asserts the contrary.
  
  

EPO 

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

T 2117/18 - Attaching the Notice of opposition in appeal

Key points

•  The Board does not admit an inventive step attack of the opponent as appellant.
• The attack was included in the Notice of opposition and was very briefly indicated in one sentence in the Statement of grounds.
• " The appellant submitted that it had made a reference in the statement of grounds of appeal to the contents of its notice of opposition. It had even attached the notice of opposition to the statement of grounds of appeal, thereby allegedly incorporating it.
• "  As a rule, in appeal proceedings, general references to submissions made in the proceedings before the departments of first instance are not taken into account due to a lack of substantiation (T 972/14, Reasons 7; see also T 1744/14, Reasons 4.4, T 1727/15, Reasons 2.9 and T 460/19, Reasons 2). Otherwise, it would be left to the Board and the other party to determine which parts of such submissions are relevant to which parts of the decision under appeal or the arguments of the other party.
• " Attaching the notice of opposition to the statement of grounds of appeal is to be considered equivalent to such a general reference to previous submissions. It does not make a mere general reference in the statement of grounds of appeal to previous submissions more specific either. Evidently, the notice of opposition cannot take account of the decision of the opposition division, which was only taken afterwards." 
• " In its submission dated 13 April 2022, which was only filed after notification of the summons and the Board's preliminary opinion under Article 15(1) RPBA 2020, the appellant provided detailed reasoning for the inventive-step objection starting from document E5/E15. ' 
• " an objection becomes effective - and is thus to be considered to have been validly submitted for the first time - only when sufficient substantiation is provided (for unsubstantiated requests, see T 1732/10, Reasons 1.5 and T 2393/18, Reasons 4.2). In the present case, this was done with the submission dated 13 April 2022. " 
• " The late filing of the objection starting from document E5/E15 was not justified by the appellant with cogent reasons, and the Board is not aware of any exceptional circumstances in this regard either." 
• 
  

EPO T 2117/18

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

T 0058/19 - Ideally the CPA should

Key points

• This opposition appeal case demonstrates how the choice of the CPA can be important.
• As a preliminary procedural point, the decision also illustrates that the appellant can use a rejoinder to submit evidence in reply to assertions that the respondent makes in his statement of reply.
• "The admittance of D12, D12a and D13 which were filed by the appellant after the statement of grounds of appeal, but before notification of the summons to oral proceedings, is subject to the stipulations of Article 13(1) RP[]showing the publication date of D12 and D13 were submitted to refute the respondent's assertions according to which [...]. On that basis and in view of the absence of any objection to their admittance by the respondent, the Board makes use of its discretion pursuant to Article 13(1) RPBA 2020 and admits D12, D12a and D13 into the proceedings."
• On to the inventive step over D1. "According to the case law [...] ideally the closest prior art should be a document that mentions the purpose or objective indicated in the patent in suit as a goal worth achieving. The aim thereof is that the assessment process should start from a situation as close as possible in reality to that encountered by the inventor, avoiding ex post facto considerations."
• "According to paragraph [0014] of the specification, the aim of the present invention was to provide VDF-TrFE copolymer materials which can efficiently undergo crosslinking under thermal or UV exposure conditions, yielding a uniformly cured material which still maintains outstanding piezoelectric, ferroelectric, pyroelectric and dielectric properties."
• "D1 merely address the use of the materials described in D1 "in the areas of curable elastomers and elastoplastics, adhesion enhancement, coatings, thermosetting resins, grafting polymers and the like" (paragraph [0013]). It does not address electric properties of the materials described in D1, let alone piezoelectric, ferroelectric, pyroelectric and dielectric properties which are at the core of the invention described in the patent in suit."
• "Summing up, reading into D1 that this prior art discloses copolymers comprising VDF and TrFE repeating units or using that document as starting point for assessing inventive step when it does not relate to the aim of the present invention, i.e. crosslinking VDF-TrFE copolymer materials while maintaining their piezoelectric, ferroelectric, pyroelectric and dielectric properties, can only be the result of an inadmissible analysis of D1 made with the hindsight knowledge of the invention described in the patent in suit, as is submitted by the respondent."
• "Therefore, the appellant's objection that the subject-matter of claim 1 lacks an inventive step starting from the disclosure of D1 fails to convince."
• The Board then finds the claim to be inventive starting from D2 and starting from D4.
• As a comment, it seems remarkable that the Board begins with "ideally the closest prior art should be a document that mentions the purpose or objective indicated in the patent in suit as a goal worth achieving", and seems to find that because D1 fail to mention the purpose, it is not a suitable starting point at all and any inventive step argument starting from it must fail. 

EPO T 0058/19

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

T 0920/20 - Attacks are not personal

Key points

•  In my blog post about T1657/14 (06.05.2020) I wrote: "this suggests that for opponents, there is no amendment of a party's case if they adopt arguments or attacks of the other opponents. Indeed, Article 12(4)(§1)(s.1) does not require that the 'part' was (admissibly) raised and maintained by the opponent itself in the first instance proceedings." 
• The present Board in the headnote in translation: "Article 12(4) RPBA 2020 does not contain any restriction to the effect that each party in the appeal may only refer to those matters of the preliminary proceedings which they themselves "admissibly presented" there. It therefore seems legitimate to also refer to lines of attack that had been introduced into the opposition proceedings by other parties. If this happens, there is no change in the submission that requires admissibility ["keine zulassungsbedürftige Änderung des Vorbringens"] 
• I note that at least one tutor advocated the converse position in a course that I attended a few years ago.
• The Board, in translation, in the reason: " With regard to the other part of the line of attack, namely the impermissible generalization objected to by only picking out the "form teeth" and omitting all other teeth in claim 1, the opposition division had made no decision, so that Article 12(2) RPBA does not apply directly. However, there is also no change in the submission that requires admission, since the appellant (opponent 1) was able to show that this part of the line of attack from point 3.5 of its statement of grounds of appeal had already been "submitted in a permissible manner" in the opposition proceedings under Article 12(4) RPBA namely by Opponent 2 in its notice of opposition (see above). The Board cannot derive any restriction from Article 12(4) RPBA that each party may only refer to those matters of the preliminary proceedings in the appeal which it itself has introduced there in a permissible manner. It therefore seems legitimate for the appellant to also refer to lines of attack introduced by other opponents in the opposition proceedings." 

EPO 

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

T 1042/18 - Art. 12 and 13 RPBA and G10/91

Key points

• In the present case, the opponent argues that their new attack complies with G 10/91 hn.2 and G 7/95, i.e. that it is not a fresh ground of opposition and hence is admissible (the English version of G 10/91 is G 9/91).
• The Board finds that Art. 12 and 13 RPBA and G 10/91 exist cumulatively and independently of each other.
• The new attack at issue is presented for the first time during the oral proceedings before the Board, but I think the general question pertains to submissions at any stage of the appeal proceedings.
• The Board in translation: " In appeal proceedings, new submissions are restricted not only by the case law of the Enlarged Boards of Appeal in G 10/91, G 1/95 and G 7/95 regarding new grounds for opposition, but also by the possibility, given to the boards in Article 114(2) EPC and the Rules of Procedure not to admit late submissions. These restrictions are independent and cumulative." 
• As a question, is hn.3 G 10/91 based on Art. 114, or on some other article of the EPC (or not at all on an article of the EPC0? If hn.3 of G 10/91 is based on Art. 114 EPC as well, does that mean that there are two complexes of case law based on the same provision and both dealing with the admissibility of new attacks?
• To cite G 9/91, r.18: " Although Article 114(1) EPC formally covers also the appeal procedure, it is therefore justified to apply this provision generally in a more restrictive manner in such procedure than in opposition procedure. In particular with regard to fresh grounds for opposition, for the above reasons the Enlarged Board considers that such grounds may in principle not be introduced at the appeal stage." 
• The present Board: " The provisions of the RPBA 2020 on late filing elaborate Article 114(2) EPC in a way that is fundamentally binding for the boards (Article 23 RPBA 2020). This also includes the determination of procedural stages in the complaints procedure, during which the delay rules are to be applied with varying degrees of severity." 
• The new inventive step attack is not admitted. The inventive step attack was based on the same documents cited previously as novelty-destroying, which would be enough under G 9/91 as held in G 1/95 r.7.2
• The Board is of the view that at least the OD's decision to reject the opposition, enabled the opponent to present the inventive step attack with the Statement of grounds.
• " In the appeal proceedings, there is already a first-instance decision which, from the point of view of the opponent, was usually made taking into account the counter-arguments of the patent proprietor. At this stage of the proceedings at the latest, it is therefore regularly possible - and also usual - as an opponent to first argue that the disclosure content of a certain document is novelty-damaging and then, in the event that the Board of Appeal should come to a different view in this regard, supplementary arguments on the basis of the same document claiming lack of inventive step. That this is possible and customary is also shown in the present case by the behavior of the appellant itself, who raised both novelty objections and objections of lack of inventive step in the grounds of appeal based on documents D1, D7, D9 and D12. The fact that the appellant, based on documents D4 and D5 and fully aware of the decision under appeal - in which these documents were not considered to be novelty-damaging - only raised novelty objections in the statement of grounds of appeal cannot be to its advantage." 

EPO T 1042/18 - 

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

T 3000/19 - Youtube as prior art (and possibly the EPO mainframe)

Key points

•  The application is refused as allegedly not novel or not inventive over a Youtube video. The Board concludes that the EPO's current way of " saving" video prior art (namely as a single print screen in a PDF file) is insufficient "for preserving video evidence and guaranteeing its accessibility over time as needed for EPO proceedings".
• " However, the web page corresponding to the URL indicated in the citation of document D4 is no longer functioning, so the board cannot assess on its own the relevant parts of the video evidence D4." 
• " Essentially the same situation was dealt with in appeal case T 3071/19 against the decision to refuse a parallel application of the same family as the current application. In that case, the decision to refuse the application was based on the same evidence D4 as in this case (D2 in that decision). As the responsible board explained in T 3071/19, Reasons 6, under these circumstances, the board cannot review the correctness of the contested decision's reasoning in so far as it relies on what is shown in the YouTube video evidence. Nor can the board assess the appellant's arguments that this online video is not an enabling disclosure and that there are further distinguishing features other than those recognised in the decision under appeal." 
• There is no copy of the youtube video in the file. 
• The reason is that the EPO is as of yet (2022!) only capable of storing black/white, "dead image"  PDF files in the prior art, as I understand it.
• For that reason, D4 is actually only a screenshot: " The document with the screenshot was annexed to the communication and is part of the electronic file. The reproduction of the screenshot is of poor quality, but the first video frame (with time stamp "0:00/1:21") can be seen. The document also shows YouTube information about the video, including the publication date of 9 July 2008 used by the examining division. It does not show any other information relevant to the case." 
• As a comment, it is possibly interesting to learn from the EPO IT report 202 that "With regard to decommissioning the mainframe, progress was made by moving the PHOENIX image archive to cloud-native servers running an off-the-shelf image archive"  and "there is no place in the cloud-native world for 1970s technology, such as the mainframe"   (IT Report 2020, CA/40/21)
• 
  
• The Board holds the following on internet disclosures in general:" An internet disclosure may be regarded as part of the state of the art within the meaning of Article 54(2) EPC. However, examining divisions should make sure that an internet disclosure used as state of the art is reliable in terms of both the publication date (see decision T 1066/13, Reasons 4 to 4.3; see also the Guidelines for Examination in the EPO, G-IV, 7.5.1) and continued accessibility to its content in the version made publicly accessible on that date" 
• " Since the content on the internet changes over time, when "electronic evidence" such as an internet document or a video is used as prior-art disclosure against the patentability of an application, appropriate measures should be taken for collecting, storing and preserving this evidence and making it accessible under suitable conditions for the judiciary, or interested parties, for example, the applicant, an opponent, their respective representatives or a member of the public." 
• " In the current case, document D4 consisting of a screenshot (see point 4 above) included in the file is clearly insufficient for the judicial review of the decision under appeal. Furthermore, it is not apparent from the file whether the video's content has been collected, preserved and/or stored in a manner which guarantees accessibility for members of the judiciary or interested parties." 
• " The board could also not find publicly available information about whether and how, in proceedings before the EPO, the content of an internet video used as prior-art evidence in examination should be preserved and made accessible to external parties or the boards of appeal." 
• " With regard to the search report, the Guidelines for Examination (B-X, 11.6) indicate that video and/or audio media fragments available on the internet are converted into a non-patent literature citation, and that the bibliographic data contains the URL of the original location on the internet. At the time the decision under appeal was written, the Guidelines for Examination (November 2018, B-X, 11.6) further indicated that such fragments should be cited as a screenshot of the first page of the internet citation. In the present case, the non-patent literature citation is document D4 with a screenshot of the video. The examining division has thus followed the indications in the Guidelines." 
• " However, a number of screenshots taken from a video, let alone a single screenshot, fail to preserve in its original format the necessary video content to ensure that the video evidence required for review and public inspection is available later. Consequently, the procedure in accordance with the Guidelines for Examination, B-X, 11.6 is insufficient for preserving video evidence and guaranteeing its accessibility over time as needed for EPO proceedings or for further judicial proceedings before the boards of appeal of the EPO or national courts (Article 131(1) EPC). The board could not find any other passages of the Guidelines for Examination describing how to preserve the content of multimedia disclosure used as prior art in the proceedings before the EPO and to guarantee its accessibility for external parties or judicial bodies." 
• Let's hope the EPO will be able (and will) set up an archive for saving videos from the internet. 

EPO T 3000/19

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

T 0809/21 - Limited extent of opposition

Key points

• " In most cases oppositions are filed against the patent as a whole; the present case is one of those relatively rare cases where the patent is opposed only to a limited extent." 
• The OD  nevertheless revoked the patent in its entirety. In particular, independent claim 8 was found not allowable, even taking into account all amendments of that claim in the auxiliary request, and there was no auxiliary request directed to unopposed claims 1-7 only. 
• " According to G 9/91, the Opposition Division's discretion to extend the opposition to unopposed claims is limited to claims which, while not explicitly opposed, are dependent upon an opposed independent claim "which falls in opposition or appeal proceedings". This does not apply in the present case as claims 1 to 7 are not dependent on opposed independent claim 8. Hence, the Opposition Division had no discretion whatsoever to extend the opposition to the unopposed claims 1 to 7." 
• " Claims 1 to 7 are not, therefore, subject to any opposition in the sense of Articles 99 to 105 EPC, nor are they the subject of any current proceedings before the EPO." 
• " The Opposition Division reports a number of statements purportedly made by the opponent after the nine month opposition period, to the effect that the opposition was directed at the patent as a whole". The Board: " such statements could have no bearing whatsoever on the determination of the extent of the opposition. It is clear from the passage from G 9/91 cited above (point 3.4) that the extent of the opposition cannot be enlarged retrospectively after the expiry of the period prescribed in Article 99(1) EPC." 
• " According to the minutes of the oral proceedings (see point III(x), above), the opponent argued that if one claim falls (claim 8, for example) the request in which it is comprised falls. The Board agrees, but the meaning of a "request" in a case where only certain claims are opposed must be clearly understood. An admissible request to the EPO can only be made in the context of ongoing proceedings before the EPO; if there are no proceedings there can be no requests. In the present case claims 1 to 7 are not the subject of any proceedings before the EPO, and cannot therefore be the subject of any admissible request. Hence, the requests of the proprietor are to be understood as being directed at the opposed claims 8 and 9 only." 
• "  The result was that the opposition against claims 8 and 9 was successful, in that the Opposition Division decided that the patent could not be maintained in a form which included any version of claims 8 and 9 submitted by the proprietor." 
• " In a case where the patent is not opposed in its entirety, the opposition being directed at certain claims only, and where the Opposition Division decides that all of the proprietor's requests in relation to the opposed claims must fail, only the unopposed claims, which are not part of any opposition proceedings, are left standing.
• Hence, provided the requirements of Rule 82(1) EPC are met [*] (either during oral proceedings or, in a written procedure, by means of a separate communication, see below, point 5.4), the patent may be maintained on the basis of the unopposed claims, irrespective of whether the proprietor has filed an explicit request for this during the proceedings. Such a request would, in fact, be superfluous, since the unopposed claims have been granted and are not the subject of any opposition. "
• * - it is unclear to me what these requirements are, in view of G 1/88. Rather, Art. 113(1) and (2) must be complied with. 
• "The procedure to be followed in such a case is ... In other words, the Opposition Division should inform the parties that it intends to maintain the patent on the basis of the unopposed claims only, possibly with an amended description, and should ensure that the proprietor approves the text and that the opponent has had an opportunity to comment upon it. According to standard procedure, these requirements can all be fulfilled during oral proceedings, in which case a separate communication under Rule 82(1) EPC is neither necessary nor appropriate (see G 1/88, Reasons, point 5.1.3 and point 5.2.3, final two sentences). Guidelines D-VI, 7.2.1 also sets out the procedure whereby the requirements of Rule 82(1) EPC may be most conveniently met in a purely written procedure. The subsequent procedure for issuing an interlocutory decision according to Article 101(3)(a) and 106(2) EPC is set out in Guidelines D-VI, 7.2.2 (March 2022 ed.
• Note, failure to pay the fee under Rule 82 probably leads to revocation of the patent in its entirity.

• The Board remits and reimburses the appeal fee. " Faced with a procedurally incorrect decision to revoke the patent in its entirety, the proprietor had no choice but to file an appeal if it wished to preserve any rights in the matter whatsoever, even to the granted and unopposed claims. Under these circumstances, the Board deems it equitable to reimburse the appeal fee."

• The Board remits for further protection, as I understand it because the description has to be adapted.

EPO 

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

T 0682/22 - Interlocutory revision and Art. 12 RPBA

Key points

•  This is an appeal against a refusal decision. The applicant files amended claims as sole request in appeal. The amendments make the claim undoubtedly novel over a prior right under Art. 54(3) EPC.
• The Board is of the view that interlocutory revision should have been granted.
• " Under Article 109(1) EPC, if the department whose decision is contested considers the appeal to be admissible and well founded, it shall rectify its decision. In the context of Article 109(1) EPC, an appeal is to be considered "well founded" if the main request submitted with the appeal includes amendments which clearly overcome the objections on which the decision relies, such that the examining division could reasonably be expected to recognise this and thus rectify its decision (cf. T 691/18, Reasons 2). " 
• The Board then adds a remark that I consider to be a major clarification: " The board, to avoid misunderstandings, also notes that in the context of Article 109(1) EPC, an "admissible appeal" is not to be conflated with any admittance considerations whatsoever as regards newly filed claim requests." 
• Hence, admissibility under Article 12 RPBA plays no role in interlocutory revision! (it seems).
• Strictly speaking, the admissibility of the amended claims could play a role under the "well-founded" prong of the test (as it does for appeal), but I think the Board would then have made that clear. 
• " It is established case law of the Boards of Appeal that other objections which arise in the current request but which were not the subject of the contested decision cannot preclude the application of Article 109(1) EPC (cf. T 691/18, Reasons 2, citing T 139/87, and Reasons 4; T 1060/13, Reasons 4.1). Thus, even if the amendments raise "new" objections not previously discussed, interlocutory revision must be allowed since the main purpose of this legal instrument is to shorten the appeal proceedings to the benefit of procedural expediency and economy and to avoid unnecessary workload for the Boards of Appeal in the interest of both the appellant and the EPO (see e.g. T 1060/13, Reasons 4.1)." 
• " Nonetheless, some passages of those Guidelines are not consistent with those conclusions. [The Board] considers it appropriate to point out that there are (still) some significant inconsistencies between the current Guidelines and the established case law as to the interpretation of Article 109(1) EPC. More specifically, according to those Guidelines (see e.g. chapter E-XII, section 7.4.2, 6th paragraph), "[i]f amendments made to the independent claims clearly do not meet the requirements of Art. 123(2), interlocutory revision is not granted, but the division sends the file to the boards of appeal. If there are doubts as to whether the amendments meet the requirements of Art. 123(2) or the amendments clearly meet the requirements of Art. 123(2), the division checks whether the amended claims overcome the ground(s) for refusal"." 
• " Moreover, in arriving at a decision on granting interlocutory revision, according to those Guidelines (cf. E-XII, section 7.4.2, 5th paragraph), the examiner is supposed to take into account all the grounds mentioned in the original decision, including the main or supporting arguments already raised in previous objections to patentability to which the applicant has had an opportunity to respond and to which reference is made in the grounds of refusal (e.g. objections mentioned in previous communications, during personal consultation or at oral proceedings). Conversely, [*] on the basis of the established case law, interlocutory revision must be granted if the amendments clearly overcome the grounds for refusal, even if further new objections arise, i.e. irrespective of whether new objections under Article 123(2) EPC [arise ?] or whether previous objections referenced in the appealed decision were raised by the first-instance department." 
• * = perhaps to be understood as "The Board, however, believes that on the basis of the established case law, interlocutory revision" ...  
• The part in italics may pertain to the remark in the refusal decision that: "It is also underlined that the novelty objections based on document D2 is abandoned, since D2 seems not to disclosed [sic] the sending from MeNB to SeNB of the CSG status."
• " the present board does not follow the conclusions drawn in case T 2445/11. The fact that the first-instance proceedings must be "repeated" is a consequence of the very fact that the examining division decided to refuse an application on specific grounds - and not on others - and that these specific grounds are overcome with the appeal. In such a situation and in line with the established case law, Article 109(1) EPC obliges the examining division to rectify its decision and continue examination of the application." 
• " 2.4.5 Hence, the established case law (see point 2.4.2 above) and the current Guidelines are inconsistent with each other."
• " As to the present case, it is apparent to the board that, in view of the statements made by the examining division (cf. point 2.2.2 above), the addition of at least feature (d) (taken from former claims 5 and 18) to the independent claims clearly overcomes all the objections raised in the appealed decision." 
• The Board indeed does not consider the admissibility of the amended claims under, say, Art. 12(6) RPBA. Possibly the Board is of the view that Art.12 RPBA is *not to be considered under Art.109. That would be quite an interesting development because then you could get amendments "in" with the Statement of grounds that are inadmissible under Art.12 RPBA. [* - edit 03.01.2024.]
• As a comment, this may be quite an important development for the practice of appeals against refusal decisions, especially where the main request is amended by adding a feature to address novelty or inventive step objections. 

EPO 

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

T 0267/18 - The term therapeutic agent is unclear

Key points

• The present decision deals with clarity of the term 'therapeutic agent', but first provides a useful summary of the rules for admissibility of amended claims filed during oral proceedings before the OD.
•  " Auxiliary Request 1 was filed and admitted during the oral proceedings in Opposition (see decision under appeal item 3.3.1). The amendments required no undue evaluation and complied with the requirements of Rule 80 EPC. Since the opposition division departed from its provisional opinion set out in the annex to the summons and finding on the novelty of the main request during the oral proceedings and concluded that the patent could not be maintained as granted, the filing of an auxiliary request, which intended to overcome the novelty objection, seemed justified as the subject of the proceedings had surprisingly changed for the patentee at a late stage of the proceedings." 
• " In principle, a decision taken by a department of first instance in the exercise of its discretion may be overruled by a Board of Appeal only if it is concluded that the department exercised its discretion in accordance with the wrong principles, without taking the right principles into account or in an arbitrarily or unreasonable way, thereby exceeding the proper limits of its discretion (see Case Law of the Boards of Appeal of the EPO, 9th edition, 2019, in the following "Case Law", V.A.3.5.1.b), and in particular decision G 7/93, OJ EPO 1994, 775, reasons 2.6)." 
• "  In exercising its discretion, the division had first to consider the reasons for filing the request at such a late stage in the proceedings, the allowability of the late-filed amendments, on a prima facie basis, and whether the parties and the opposition division could reasonably be expected to familiarise themselves with the proposed amendments in the time available. Since the amendments introduced in claim 1 of the auxiliary request 1 were filed in reaction to a change of the opposition division's opinion regarding novelty, were intended to overcome a novelty objection, did not require any further extensive assessment for both the opposition division and the opponent, and were "prima facie" allowable, they were admitted." 
• italics added. A pertinent question may be whether "the time available" is simply the time scheduled for the oral proceedings before the opposition division or something else.
• " Hence the board fails to see why the opposition division had exercised its discretion according to the wrong principles or in an unreasonable way." 
• " For this reason, it will not overrule the way in which the first instance has exercised its discretion. Furthermore, since the auxiliary request 1 was admitted by the opposition division in the proper exercise of its discretion and was decided upon by the opposition division, the board fails to see a legal basis for disregarding this request (see also Case Law, supra, V.A.3.5.4). It follows that since the aim of appeal proceedings is to review the decision under appeal in a judicial manner (Article 12(2) RPBA 2020), auxiliary request 1, the only request now on file, forms part of the appeal proceedings." 
• The duty of the Board to review decisions to admit a case amendment was also acknowledged in T 0960/15.
• However, the amendment is found to be unclear. " Since the term "therapeutic agent" is open to interpretation or ambiguous, claim 1 lacks clarity within the meaning of Article 84 EPC."

• " Although a skilled person is able in most cases to decide whether a certain amount of a specifically defined product has a therapeutic effect or not (see decision T 151/01 of 9 February 2006, reasons 2.1), the "therapeutic agent" used in claim 1 defines far more than a specific class of compounds in a specific quantity having a therapeutic effect for a disease. It defines any known or yet unknown biologically active compound capable of treating or alleviating at least one disease state or condition. It is not limited to agents that are approved by a competent regulatory authority and/or are on a publicly available list of therapeutics. Hence, the respondent's argument that the skilled person would be able to determine from a list of approved therapeutic products whether any agent is a therapeutic agent or not, is not decisive in resolving the present clarity issue." 

•  The claim is directed to a delivery vehicle for a medicament, as I understand it, and reads: "1. A fully intact eubacterial minicell derived from a eubacterial parent cell, wherein the minicell comprises biologically active compound which is a therapeutic agent and displays an antibody or antibody derivative directed to a surface antigen of a cell for cell- or tissue-specific targeting of said eubacterial minicell, wherein the biologically active compound and the antibody or antibody derivative are exogenous to the parent cell and distinct from each other."

   

EPO 

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

J 8/20 - Invention by AI

Key points

• An application was refused because the applicant, a natural person, wished to designate an Artificial Intelligence engine as the inventor. The applicant appeals in this case, which is known as the "DABUS" case. As an auxiliary request, "an amended designation of the inventor (EPO Form 1002) [was filed] stating that no person was identified as inventor as "the invention was conceived autonomously by DABUS", and that the appellant had derived the right to the European patent "by virtue of being the owner and creator of DABUS"."
• The Legal Board: "According to Article 81 EPC "[t]he European patent application shall designate the inventor" (first sentence); where the applicant is not the inventor or is not the sole inventor "[t]he designation shall contain a statement indicating the origin of the right to the European patent" (second sentence)."
• "Article 81, second sentence, EPC does not require a generic explanation as to why an applicant, who is not the inventor, is entitled to file a European patent application. The provision is more specific: it refers to the "origin of the right to the European patent". In this way, by its very wording, Article 81 EPC establishes a link to Article 60 EPC, where the right to a European patent is mentioned and provided for."
• "Under Article 60(1), first sentence, EPC, "[t]he right to a European patent shall belong to the inventor or his successor in title"."
• "The main request is not allowable because the designation of the inventor does not comply with Article 81, first sentence, EPC. Under the EPC the designated inventor has to be a person with legal capacity. "
• As a comment, the Legal Board refers to "a person with legal capacity", but this phrase perhaps does not imply an additional requirement. I would expect that any human can be designated as the inventor without an additional requirement for legal capacity.
•  The Legal Board adds: "Article 60(1) EPC vests the rights to the European patent in the inventor; thus, it postulates a person with legal capacity."
• "The purpose of the provisions dealing with the inventor and its designation is primarily to confer and to protect rights of the inventor (J 8/82, Reasons, points 12-13), to facilitate the enforcement of potential compensation claims provided under domestic law, and to identify a legal basis for entitlement to the application (on this see also the EPO President's comments, points 5-9). Designating a machine without legal capacity can serve neither of these purposes."
• "In summary, the main request does not comply with the EPC, because a machine is not an inventor within the meaning of the EPC. For this reason alone it is not allowable. "
• Then, somewhat surprisingly: "The auxiliary request relies on the argument that Article 81, first sentence, EPC does not apply where the application does not relate to a human-made invention. The Board agrees with this [argument of the applicant]. " "The provisions concerning the designation were drafted to confer specific rights on the inventor. It is arguable that where no human inventor can be identified, then the ratio legis of Article 81, first sentence, EPC does not apply."
• The auxiliary request is rejected for failure to comply with Art.81 second sentence, which requires "a statement indicating the origin of the right to the European patent".
• The Board is of the view that in the auxiliary request, "inventor and applicant differ".
• The Legal Board does not explain this. Arguably, there is no inventor in the sense of Art. 81 first sentence, and the case of an undefined value and a defined value seems to differ from the normal case of two defined and unequal values. 
• " According to the statement accompanying the auxiliary request, the appellant has derived the right to the European patent as owner and creator of the machine. This statement does not bring the appellant within the scope of Article 60(1) EPC. Indeed, it does not refer to a legal situation or transaction which would have made him successor in title of an inventor within the meaning of the EPC. For this reason, the auxiliary request does not comply with Article 81, second sentence, EPC in conjunction with Article 60(1) EPC, and is not allowable."
• The Legal Board explains this no further in this r.4.4.2.
However, the Legal Board explained that "Both the concepts of inventor and successor in title [in Art. 60(1) EPC are notions of the EPC; they must be interpreted uniformly and autonomously. While the concept of inventor does not require any support from domestic legislation, the concept of successor in title implies an interaction with national law. Indeed, the EPC has not established a comprehensive, self-sufficient legal order and private law. This does not mean that Article 60(1) EPC constitutes a pure reference to national legislation devoid of any content. "Successor in title" has an ordinary meaning under Article 31(1) of the Vienna Convention on the Law of Treaties (1969) ("VCLT"): it refers to a situation where a pre-existing right goes from one subject (the legal predecessor; see also Article 55(1)(a) EPC) into the sphere of another (the legal successor, Article 60(1) EPC). National law governs the question of whether the transfer is valid or has occurred by operation of a contract, inheritance or other rules of law. Since the EPC is silent on the matter with the exception of employment relationships, a national court seized with the issue will identify the applicable rules according to their domestic conflict of laws-provisions"
• The Legal Board: "it is arguable that AI-generated inventions too are patentable under Article 52(1) EPC. If national courts were to follow this interpretation, the scope of Article 52(1) EPC and Article 60(1) EPC would not be coextensive: there would be inventions patentable under Article 52(1) EPC, for which no right to a patent is provided under Article 60(1) EPC."
• " The Board is not aware of any case law which would prevent the user or the owner of a device involved in an inventive activity to designate himself as inventor under European patent law. The EPC, in turn, does not prevent the applicant from providing information in the application which is not relevant for carrying out the invention [but providing information as to the conception of the invention by the AI system DABUS]"
  

EPO J 8/20 - J 0008/20

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

T 0755/16 - Late filed objection is late filed

Key points

•  The Board, in the headnote: " A request not to admit a certain document, this request having been filed for the first time during oral proceedings before the board, may constitute an amendment of the appeal case the admittance of which is governed by Article 13(2) RPBA 2020 "
  
• The Board in the decision: " The patent proprietor objected to the admittance of A018 neither in its reply to the grounds of appeal nor in its subsequent letters. The request not to admit A018 thus represented an amendment to the patent proprietor's case." 
• The word 'may'  in the headnote seems to soften the Board's actual reasoning a bit.
• The Board follows the trend of e.g. T 0847/20 r.3.1 and T 2619/17, though is the first to put it in a headnote, as far as I know.
• Treating the objection as a request is perhaps useful, but it is not the case that document A018 is to be admitted automatically if the other party does not request to hold it inadmissible, in my view.  
• As a comment, case law may in due course require that admissibility objections are timely, specific, and reasoned; without limiting the power of the Boards to hold case amendments inadmissible ex officio. (see here)

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

R 0009/21 - Effect of refused correction of minutes

Key points

• The petitioner had requested a correction of the minutes of the oral proceedings before the Board. The Board refused the correction (blog post here). 
• The Enlarged Board: " It has to be noted that a request for correction of the minutes was refused by the Board. The Enlarged Board has to rely on the minutes as they stand." 
• The petition is rejected as clearly inadmissible.

EPO 

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

T 2776/19 - OD was right to hold request inadmissible

Key points

• In this opposition appeal, the Board does not admit a request held inadmissible by the OD. The OD held the request inadmissible because it was filed during the oral proceedings and was considered to be late-filed.
• The Board: " The board is not able to see an undue exercise of discretion in the way the opposition division handled the case. Therefore, following the principle laid down in decision G7/93, point 2.6, and applied, for instance, in T28/10, point 2.1, a principle according to which the exercise of discretion by the first instance should only be overturned by the board in case wrong criteria were applied or the discretion was exercised unreasonably, the board upholds the opposition division's decision and does not admit the seventh auxiliary request into the proceedings " 
• The patentee argued that the OD's decision was incorrect because "the Opposition Division has not examined whether these amendments are prima facie suited to overcome the objections" and |" Moreover, "in case the opinion [of the opposition division] changes, the proprietor shall be given the opportunity to react"." 
• The Board: "Whether the patentee's view is convincing that "clear allowability" is a sufficient criterion for admitting a late-filed claims request into first-instance proceedings can remain an open question. In this case "clear allowability" had been disputed by the opponents raising various objections, including objections of lack of novelty and of inventive step." 
• In my view, it's unfortunate that there is no clearly established case law on this point.
• Perhaps more importantly, the Board: " the fact that the opposition division changes its view on certain technical aspects between its preliminary opinion provided in the communication annexed to the summons to oral proceedings and its opinion formed during the debate taking place during the oral proceedings, so that the opposition division's view becomes less favourable to the patentee, does not mean that the patentee automatically has the right to file a new claims request during oral proceedings. Indeed, since the objections raised by the opponents and the documentary evidence on which these objections were based, remained essentially unchanged since the beginning of the opposition proceedings, the change of view of the opposition division did not correspond to an unforeseeable or unknown situation for the patentee." 
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EPO 

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

T 3020/19 - Opponent should attack all granted dependent claims

Key points

•  An auxiliary request filed during the oral proceedings before the Board is admitted.
• The Board takes the view that there is no case amendment under Art. 13(2) RPBA if there is no "geänderte Sachlage bzw. keine Neugewichtung des Verfahrensgegenstands".
• The higher-ranking request had five independent claims 1-5. In the AR at issue, only independent claim 3 is maintained. That claim 3 (new claim 1) in turn was based on dependent claim 7 as granted.
• The original granted dependent claim 7 was not attacked in the Notice of opposition (in substance), nor (in substance) with the opponent's appeal reply brief, even though at that time it was already independent claim 3 of an auxiliary request.
• " Somit kann die Kammer in der Stellung des Hilfsantrags IV in der mündlichen Verhandlung mit Rückgriff auf einen im bisherigen Verfahren nie angegriffenen Gegenstand kein geändertes Beschwerdevorbringen erkennen, das im Sinne von Artikel 13 (2) VOBK 2020 nur ausnahmsweise bei Vorliegen außergewöhnlicher Umstände in das Beschwerdeverfahren zugelassen werden kann." 
• The new substantive attacks against the new claim 1 / former claim 3 are not admitted.
• " Eine erstmalige materialrechtliche Diskussion in der mündlichen Verhandlung im Beschwerdeverfahren in Bezug auf den Gegenstand des Anspruchs 1 des Hilfsantrags IV wurde von der Kammer nicht in das Verfahren zugelassen " 
• The new attack is based on document E5 which was already in the file. Still, the attack is not admitted.
• The Board notes that the opponent had directed the opposition against claims 1-13, claims 2-13 being dependent claims. However, substantive attacks were presented only against independent claim 1 and dependent claims 2-6 and 10-13.
• " Insbesondere fehlte es also bereits im Einspruchsschriftsatz an einer substantiierten Argumentation zu einer mangelnden Patentfähigkeit des erteilten Anspruchs 7 (und des von Anspruch 7 abhängigen Anspruchs 8). Auch in ihrer Erwiderung auf das Einreichen von Hilfsanträgen I und II mit ebenfalls jeweils nur 13 Ansprüchen im Einspruchsverfahren (die noch den erteilten abhängigen Anspruch 7 enthielten) ging die Einsprechende nicht auf die Merkmale des erteilten Anspruchs 7 ein." 
• "  eine unzumutbare "Explosion des Prüfstoffs" wie von der Beschwerdegegnerin [opponent] behauptet kann die Kammer nicht erkennen, da die zusätzlichen unabhängigen Ansprüche lediglich Merkmale der erteilten Ansprüche aufgreifen." 

EPO T 3020/19

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