Visser online update

Key points

• I'm pleased to announce that the September online update of Visser's Annotated EPC is now available  at Kluwer IP Law -  https://www.kluweriplaw.com/book-toc?title=Visser%27s%20Annotated%20European%20Patent%20Convention%202022%20Edition
• The legal cut-off date is 01.09.2022 

T 0456/19 - Biological control composition

Key points

•  Claim 4  is directed to: A biological control composition comprising:
  
  - at least one population of arthropod biological control agents [ claims 5: of the species the species Ambyseius swirskii - wiki],
  
  - a nutrient source comprising astigmatid mite eggs, characterized in that said nutrient source does not contain larvae, nymphs and adult astigmatid mites,
  
  - optionally, a support and/or dissemination substrate."
• The claims are held to lack an inventive step.
• The case is to some degree similar to Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948) (link), about a patent with claims directed to a mixture of naturally occurring (non-modified) bacteria.

EPO 

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

T 2964/18 - An illustrative example

Key points

•  In this post, I will walk through the decision to show how admissibility issues affect the outcome. The Board decides on 6 admissibility issues. 
• For the main request, the Board first decides on claim interpretation.
• The OD decided to maintain the patent in amended form. The opponent appeals. The Board then finds claim 1 to be not novel over D17 (claims as maintained by OD).
• AR-1 filed with the appeal reply brief of respondent/patentee is not admitted. This request was filed as AR-3 before the OD; the OD did not arrive at that request.
• "The board notes that the mere fact that auxiliary request 1 was formally filed during the opposition proceedings does not render it automatically part of the appeal case since its admittance had not been examined by the opposition division (T 0319/18, reasons, point 2.2)." 
• The Board decides that the request was not substantiated:  "The very general statement on page 10 of the reply to the appeal expressing that the auxiliary requests aimed to "further distance the claimed subject matter from the cited prior art in order to address allegations of lack of novelty and lack of inventive step" cannot be seen as an explanation of the technical significance of the amendment carried out in claim 1 of auxiliary request 1. Neither the board nor the appellant are put in a position to understand why the feature added to claim 1 would overcome the objections raised against claim 1 of the main request. Thus, auxiliary request 1 has not been substantiated." 
• " The fact that the appellant had not raised any objection against the (not yet filed) auxiliary requests has no bearing on this requirement. Thus, the statement on page 10 of the reply referred to above does not comply with the requirement for the respondent to present its complete case." 
• " Indeed, it is not immediately apparent which technical contribution the feature added to claim 1 of auxiliary request 1 would have brought over, inter alia, the disclosure of document D17. Requests which are not self-explanatory are considered to be submitted only on the date of their substantiation (see T 0217/10, reasons, point 5)." 
• The request was not substantiated and is not admitted.
• In AR-2, the Board finds use claim 11 to lack an inventive step. " there was no need for the board to take a decision on the admittance of this novelty objection of the appellant."  
• Requests 2A and 2B, filed after summons for oral proceedings in appeal, are not admitted.
• " The respondent argued that the amendments to the main request in auxiliary requests 2a and 2b consisted only in the deletion of claims." 
• " the deletion of both independent claims 1 and 12 of the main request did change the respondent's case to such an extent that new issues had to be discussed which the opponent could not be expected to be familiar with. It is not the task of an opponent to speculate about what amendments a patentee might make at a very late stage of the proceedings and to prepare pre-emptively for all of them (T 0248/13, reasons, point 4.5).' 
• " the board is of the view that the deletion of claims inevitably results in an amendment of the respondent's case. In fact, this deletion implies that it is requested that the patent be maintained in a form different than previously requested, with legal consequences for the patent's validity and scope. The board cannot see how this deletion could not be regarded as an amendment of the requests filed at the outset of the appeal proceedings. In the board's view, the respondent's case is amended if the claims are changed; it is not necessary that in consequence of these changes also the subject of the proceedings is changed. If the amendment of the claims does not lead to a different discussion on the merits, this will be a circumstance which the competent board may consider when, inter alia, exercising the discretion under Article 13(2) RPBA 2020.' 
• Turning to AR-3, the patentee objects to the admissibility of the attack based on D7. However, the attack was included on page 36 of the Statement of grounds and is hence admissible.
• AR-3 is found to lack an inventive step.
• AR-4 is admitted. No substantiation was required for the claim amendments involving deleting claims.
• The appellant had raised inventive step objections to the corresponding claims in the SoG, based on newly filed documents D25 and A027. However, these documents are not admitted.
• " for the reasons stated above, D25 and A027, and any objections based on them, have not been admitted into the proceedings. It follows that all objections based on these documents, inter alia, the above-mentioned inventive-step objections against claim 11 of auxiliary request 4, must remain unconsidered."
• The new inventive step objection, raised during the oral proceedings, is not admitted.
• " the board holds that in the current case, the number of auxiliary requests (17) filed with the reply to the appeal is not excessive, especially in view of the numerous inventive-step objections raised by the appellant in the statement of grounds of appeal. In fact, all D25, A027, D2, D7, D11, D12 and D19 had been indicated by the appellant as documents possibly representing the closest prior art for the claimed subject-matter. [] As a consequence, the board concludes that no exceptional circumstances exist which would justify raising the above-mentioned inventive-step objections only at the oral proceedings. " 
• AR-4 is found to be sufficiently disclosed. " None of the appellant's objections against the claims of auxiliary request 4 is admissible and convincing."
• The case is remitted with an order to maintain in amended form based on AR-4.

EPO 

The link to the decision is provided after the jump.

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T 0776/17 - Should have adjourned

Key points

•  The OD admitted a document filed by the opponent one month before the oral proceedings and then refuses a request for adjournment of the oral proceedings of the patentee.
• "As set out above, D18 was filed one month before the oral proceedings before the opposition division. Together with the filing of D18, the respondent [opponent] raised a novelty objection based on this document. Only during oral proceedings did the respondent also raise an inventive-step objection based on D18 as the closest prior art together with the assertion that no effect had been shown to be present "
• "Not providing the appellant [patentee] with sufficient time to react to this attack by granting its request to adjourn the oral proceedings represents a violation of the appellant's right to be heard within the meaning of Article 113(1) EPC. As set out above, the inventive-step attack based on D18 as the closest prior art comprised the assertion that no effect had been shown to be present. It is thus absolutely credible to the board that the appellant would have needed time to react, and thus the oral proceedings should have been adjourned. Since admittance of the inventive-step attack based on D18 led to the rejection of auxiliary request 2 [], the violation of the appellant's right to be heard constitutes a substantial procedural violation."
• "For the sake of completeness, the board notes that the conclusion made here that a substantial procedural violation occurred in relation to the opposition division's admittance of D18 is not in contradiction to the board's conclusion above [that] the opposition division applied the right principle[s] in a reasonable way [when it decided to admit D18]. The procedural violation does not arise due to the admittance of D18 but due to the fact that after this admittance, oral proceedings were not adjourned."
• "The opposition division's finding of lack of inventive step based on D18 as the closest prior art is tainted with a violation of the right to be heard under Article 113(1) EPC (see 25.1 above), and a causal link exists between the violation and the final decision since this objection was the sole reason for the opposition division that the second auxiliary request was not allowable, thus amounting to a substantial procedural violation. Since the appellant did not have time to file auxiliary request 3 before the opposition division, it was necessary to lodge an appeal. Under these circumstances, the board considers it equitable that the appeal fee be reimbursed in full in accordance with Rule 103(1)(a) EPC."
• Usually, a substantial procedural violation is also a ground for remittal, but a remittal is not discussed in the decision. 
• I just highlight that it is key for parties to actually request an adjournment of the oral proceedings during the oral proceedings before the OD once the OD decides to admit a submission of the opposing and a party feels insufficiently prepared to deal with it during the oral proceedings and wishes to preserve the issue for appeal. If you don't request an adjournment, you essentially forfeit the argument that you didn't have sufficient time in the first instance proceedings, possibly also for getting your response admitted in appeal under Art. 12(4) RPBA. So it seems safe to predict we will see this more often in the future. Of course, the risk for the opponent is that the OD will actually grant the adjournment and that the patent will be in force for a few more months even if ultimately invalid.
• The Board, when deciding to admit AR-3: "Contrary to the respondent's view, the appellant could not have been expected to react to the objection by filing the appropriate set of claims to overcome the objection during the oral proceedings before the opposition division. The new objection raised complex new issues to which the appellant could not be expected to respond on the spot during the oral proceedings (see also point 26 below). Thus, the appellant could only submit the third auxiliary request with the statement of grounds of appeal."

EPO 

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

T 0017/22 - At least one Communication

Key points

•  In this case, the Euro-PCT application, with the EPO as ISA, was refused after two notifications were issued: the Rule 161 Communication and "a communication under Rule 137(4) EPC headed "Invitation pursuant to Rule 137(4) and Article 94(3) EPC", accompanied by an annex raising an objection under Article 123(2) EPC".
• "The decision was based on the ground under Article 123(2) EPC and on lack of novelty, lack of inventive step and lack of clarity."
• The Board: "According to Article 94(3) EPC, if the examination reveals that the application or the invention to which it relates does not meet the requirements of the EPC, the examining division shall invite the applicant, as often as necessary, to file his observations and, subject to Article 123(1) EPC, to amend the application."
• "While the expression "as often as necessary" indicates that the examining division has discretion whether to issue more than one communication, at least one substantive communication pursuant to Article 94(3) EPC and Rule 71(1) EPC is required before a decision to refuse the application on such substantive grounds is issued [...]. Indeed, only if a preceding communication pursuant to Article 94(3) EPC sets out the essential legal and factual reasoning to support a finding that a requirement of the EPC has not been met, can a decision based on such a finding be issued without contravening Article 113(1) EPC (see T 305/14, point 2.3 of the reasons)."
• As a comment, I observe that neither Article 94(3) EPC nor Rule 71(1) EPC expressly requires that the Examining Division issues at least one communication. The applicant's right to be heard under Article 113(1) EPC however entails a right to be informed of the grounds for refusal and to be given an appropriate opportunity to address them. In the past, when the EPO's search report was only the search report proper, i.e. without any written opinion (and only stating X or Y for each document to give a hint of whether a novelty or inventive step objection was considered by the Search Division), the first Communication from the Examining Division was indeed the first time the applicant was informed of the objections. Hence, at that time the right to at least one communication from the Examining Division directly followed from Article 113(1) EPC.
• Note that the phrase "as often as necessary" requires some yardstick. 
• The present decision of the Board confirms that the rule that "at least one substantive communication pursuant to Article 94(3) EPC and Rule 71(1) EPC is required before a decision to refuse the application on [] substantive grounds" still applies.
• "A communication under Rules 161(1) and 162 EPC thus * cannot be considered a communication under Article 94(3) EPC, or a communication which would obviate the need for a communication pursuant to Article 94(3) EPC. This is furthermore confirmed by the Guidelines for Examination in the EPO which state that an application may not be refused directly after the reply to a communication under Rule 161(1) EPC (Guidelines C-V, 14)."
• The reason given by the Board is that " an amendment by the applicant's own volition needs to precede the stage of examination. Thus, a reply to the search opinion and any amendments made by the applicant of its own volition should be on file when the substantive examination starts"
• As a comment, it may also be argued that the Rule 161 communication as such does not state reasoned objections. 
• "The "Invitation pursuant to Rule 137(4) EPC and Article 94(3) EPC" can also not be considered a substantive communication under Article 94(3) EPC."
• " The communication under Rule 137(4) EPC, with a period for reply of one month, is, by contrast, of a formal nature. The applicant is merely asked to identify the amendments and to indicate the basis for them in the application as filed, independently of whether these amendments comply with Article 123(2) EPC"
• "The short period of one month specified in Rule 137(4) EPC for a reply is inappropriate for a reply to substantive issues."

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

T 1206/19 - (No) review of decision to admit

Key points

•  The OD decided to admit a prior art document. The patentee requests to Board to reverse this decision. The Board finds that the OD correctly admitted the document into the proceedings.
• "Thus, the board cannot see any reason to "unadmit" a document which had already been admitted by the first-instance department without the latter having committed any substantial procedural violation in that regard (which would normally lead to a direct remittal of the case). "
• The Board then adds that: "At any rate, as held in T 39/93 (cf. Reasons 3.1.1, second paragraph), no valid judgment on the merits of the first-instance's decision could be made if evidence that was admitted by the first-instance department would simply be "unadmitted" by a board (contrary to the conclusions drawn e.g. in T 960/15, Reasons 3 []).  
• The Board in more detail refers to: "contrary to the conclusions drawn e.g. in T 960/15, Reasons 3, applying the test proposed in an obiter dictum of G 7/93, Reasons 2.6, relating to the exercise of discretion under Rule 86(3) EPC 1973 (Rule 137(3) EPC"
• As a comment, the Board's remark regarding T 960/15 appears (somewhat) obiter because the Board reviewed the OD's decision to admit the document and found it to be fine.
• As a further comment, to cite the CLBA V.A.3.4.1.b.: "Although G 7/93 was concerned with a specific situation, namely an examining division's refusal to admit amendments after issuing a communication under R. 51(6) EPC 1973, the boards have applied the criteria established there to their review of other discretionary decisions of the departments of first instance (T 820/14, see also T 858/17). For instance, the same approach has been taken to reviewing opposition division decisions on the admission of late-filed submissions (T 1209/05, T 1652/08, T 902/09, T 1253/09, T 544/12, T 1882/13).”

EPO 

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

T 0803/17 - Appellate review of admissibility of opposition

Key points

•  The Notice of opposition was filed stating the name of the opponent without the legal form (without mentioning Ltd.). A request for correction is filed and allowed by the OD, and the OD takes a separate interlocutory decision that the opposition is admissible (link). The admissibility of the opposition is no further discussed in the final decision rejecting the opposition.
• The interlocutory decision is issued as a "Communication pursuant to Article 113" and is not signed and only stamped "for the opposition division".
• The objection of the proprietor is that there are two companies at the given address, namely Calibre Search Ltd. and Calibre Search (Manchester) Ltd. and that it would be unclear which one was the opponent.
• The interlocutory decision did not allow a separate appeal, such that it can be appealed with the final decision (Article 106(2) EPC).
• This case also illustrates that a document not being labelled as a decision can still be a decision in the sense of Article 106 EPC.
• The OD rejects the opposition. The opponent appeals (against the final decision).
• The respondent disputes the admissibility of the opposition.
• The opponent argues that the respondent can not object to the admissibility of the opposition.
• The Board: "In any case, as the Opposition Division did not allow a separate appeal under Article 106(2) EPC on the decision on the admissibility of the opposition contained in the communication dated 15 April 2016, that decision could only be appealed together with the Opposition Division's final decision. Hence, [...] it follows from this link that the Opposition Division's decision on the admissibility of the opposition and the underlying reasoning is to be treated as an issue which is part of the Opposition Division's final decision."
• The prohibition of information in peius does not apply because it does not apply to the individual grounds for the decision. 
• The Board: "Under the principle of the prohibition of reformatio in peius it is unlawful to worsen the position of the appellant because of its own appeal. The principle of the prohibition of reformatio in peius does, however, not apply separately to each point or issue decided (Case Law of the Boards of Appeal, 10th edition 2022, V.A.3.1.1). The yardstick for determining whether the position of an appellant, because of its own appeal, is worsened in a way which is incompatible with the principle of the prohibition of reformatio in peius is the order of the decision under appeal, in particular the order's legal effect on the appellant (see T 1437/15, Reasons 3.2.2, with reference to G 9/92, Reasons 14 and 16)."
• " If an opposition is considered inadmissible in the appeal proceedings, an appellant whose opposition was rejected in the decision under appeal as unallowable would not be in a worse position than if it had not appealed, as in both cases the patent would be maintained as granted. The legal reasons leading to this result, including whether the opposition is rejected as inadmissible or unallowable, do not fall within the scope of the principle of the prohibition of reformatio in peius (see T 384/08, Reasons 2 and 3, first sentence)."
• "In the present case, the admissibility of the opposition can therefore be considered"
• I note that the Board does not have to decide on the question of whether, if an interlocutory decision holding the opposition admissible and allowing a separate appeal, is not appealed by the patentee, the patentee can bring up the admissibility question in an appeal procedure regarding the final decision. 

EPO 

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

T 2320/16 - (II) Inventive step chemical compound

 Key points

• This is a post from stock; the decision was issued 24.03.2021, well before referral G 2/21 was made. 
• In this decision, the Board also deals with inventive step. Claim 1 is a 'pure' chemical compound claim (directed to a Marush group of chemical compounds as such).
• “According to the respondent [patentee], the objective technical problem was the provision of further kinase inhibitors for the treatment of inter alia cancer.”
• “It is undisputed that the patent comprises examples falling within the scope of claim 1 ...  It is also undisputed that the patent ... lacks any biological activity data for compounds falling within the scope of contested claim 1.” The patent contains other biological activity data.
• "It was not disputed by the [opponent] that the compounds tested in [the declarations D7 and D23 filed by the patentee in the course of the proceedings] exhibited biological activity as kinase inhibitors."
• "The respondent [patentee] submitted that the biological data disclosed in D7 and D23 showed that a reasonable and representative structural selection of the claimed compounds displayed a kinase inhibitory effect. Claim 1 encompassed a relatively precise structural definition of a specific pharmacophore to which the stated biological activity could be attributed, and was a reasonable extrapolation of these examples and biological data, based on structure-activity relationship (SAR) analysis for the pharmacophore identified. In the absence of any evidence to the contrary, the board can only agree".
• " It follows from the foregoing that the objective technical problem is as formulated by the respondent [patentee], namely the provision of further kinase inhibitors for the treatment of inter alia cancer."
• The claims are held to be inventive.
  
  
• As a comment, this decision illustrates that the problem-solution approach, at least in the field of chemistry, is focused on the effect. Even though the claim at issue is directed to the (class of) molecules as such and hence is not limited to any particular use, the Board's conclusion that the subject matter is inventive is based entirely on the biological activity observed when the compound is used in a particular way (the treatment of cancer, or more precisely used as a kinase inhibitor).
• Fully in line with established case law, the Board analyses the credibility of the technical effect over the whole scope of the claim in terms of chemical composition (under the Markush formula), but not over the whole scope of the protection in terms of possible uses of the molecule. In other words, a technical effect in the context of one use of the compound is sufficient for acknowledging inventive step of a product claim which covers every use of the molecule. 
• The basis of this approach to inventive step of claims directed to a chemical compound (or a class of chemical compounds) appears to be the " Kongorot" judgment of the German Reichsgericht of 20.03.1889, as confirmed by BGH 27.02.1969 X ZB 11/68 Disiloxan; see also Bruchhausen in GRUR 1989, 153. 
• As a question to readers, are there any decisions of the Boards expressly addressing this matter?

T 2320/16

T 0689/19 - (III) Intervention and res judicata

Key points

•  This is the second appeal in this opposition case. In T 0950/13, the Board remitted the case. 
• "When justifying the remittal to the opposition division, the board drew attention to the fact that the decision then under appeal dealt solely with the grounds of added matter and lack of sufficiency of disclosure, but had not decided on other grounds for opposition such as inventive step (point 6). It remitted the case to the department of first instance for further prosecution (order)." 
• Multiple parties intervene in the proceedings under Article 105 EPC.
• " All the interventions were filed after decision T 950/13 had been issued following an appeal by the patent proprietor against the decision of the opposition division dated 1 February 2013 revoking European patent no. 1 610 780. Decision T 950/13 remitted the present case to the opposition division for further prosecution of outstanding issues raised by the opposition filed on 21 January 2011. " 
•  " In their notices of intervention and on appeal, the appellants [itnerveners] argued that the medical use claimed in the main request was not sufficiently disclosed. They asked that this ground be reconsidered, and argued that the application did not disclose a plausible concept of treatment but a mere allegation without proof that dasatinib treats the same cancers as imatinib. " 
• The Board does not admit these objections.
•  The Board: " According to the established case law of the boards of appeal, res judicata is a generally accepted principle which means that a matter which has been judicially determined in a final manner between parties by a tribunal of competent jurisdiction cannot become the subject of subsequent proceedings between the same parties or their successors" 
• "Hence a board's decision is an absolute bar to subsequent proceedings on the same matter between the same parties (or their successors). The order and the reasons for the decision determine the extent to which the decision is final (T 460/95, OJ EPO 1998, 587, point 2 of the Reasons). The "same matter" refers to all issues of fact and law which have been finally settled (T 694/01, OJ EPO 2003, 250, point 2.10 of the Reasons; T 167/93, OJ EPO 1997, 229, point 2.5 of the Reasons; see also T 843/91, OJ EPO 1994, 832, headnote and point 3.4.2 of the Reasons; T 153/93, point 2 of the Reasons; T 308/14, catchword and point 1.3)."
• In T694/01, the Board had remitted with an order specifying the claims.  T167/93 r.2.5 states "any generally recognized principle of estoppel by rem judicatam for the Contracting States is of extremely narrow scope". For the decisions cited as "see also", T 843/91 deals with a remittal specifying the claims in the order. T 153/93, however, indeed says that "The previous finding of the Board of Appeal that Claims 1 to 5 as amended in the course of oral proceedings were novel, were clear and were inventive, are therefore res judicata. Furthermore, the findings of fact i.e. the clarity of the term "normal background lawn" as well as the construction of the disclosure of DE-A-2 924 861 in its entirety, are findings of fact that were part of that decision and are likewise binding upon the parties in all subsequent proceedings before the EPO, including its judicial arm, the Boards of Appeal" but again the previous decision T761/90 had an order specifying the allowable claims.
• In T 308/14, the earlier appeal decision was indeed to remit for further prosecution, i.e. not with an order to maintain the patent with certain claims. However, in that decision, it was held that: 'This decision constituted res judicata and thus was binding on the opposition division in the subsequently resumed opposition proceedings (Article 111(2) EPC)." So in that decision, the binding effect under Article 111(2) EPC and res judicata were seen as one and the same.
• However, as held in T 0449/15, "The principle of res iudicata and that of the binding effect of the ratio decidendi pursuant to Article 111(2) EPC 1973 are not mutually exclusive, but complement one another. " 
• The Board then takes a deep dive and gives an interesting analysis of the concepts of res judicata and binding effect. Extensive internal citations are omitted in the following.
• " The principle of res judicata and that of the binding effect pursuant to Article 111(2) EPC are not identical, but complementary. The binding effect of the ratio decidendi pursuant to Article 111(2) EPC is limited to proceedings regarding the same application or patent following a remittal of the case after a (first) decision of a board of appeal. The department dealing with the case in the subsequently resumed proceedings and the board dealing with a possible second appeal arising from these proceedings are bound by the ratio decidendi of the first decision. This binding effect extends to matter which is not finally settled (res judicata), but encompassed by the ratio decidendi "  
• " On the other hand, it only applies "in so far as the facts are the same" []  The principle of res judicata is not limited to a situation of remittal for further prosecution but also applies in such a situation. Matter which has become res judicata is not open for reconsideration following remittal. Since this principle applies to all issues of fact which have been finally settled, it precludes a change of facts as contemplated by Article 111(2) EPC [] New facts, evidence or arguments seeking to cast doubt upon settled issues of fact cannot be considered. "
• " The nature of opposition and opposition appeal proceedings therefore does not support the view that a matter finally settled by an appeal decision remitting the case to the opposition division for further prosecution only binds the parties to the appeal proceedings and does not prejudice an intervener that only becomes a party to the opposition proceedings subsequent to the remittal of the case. The result of applying the principle of res judicata depending on the party status in the appeal proceedings leading to remittal would be absurd. The adjudged matter had to be accepted by the initial parties, and the opposition division had no power to re-open such matter in respect of those parties, whereas interveners would be allowed to disregard the final findings of the decision remitting the case to the opposition division and start opposition proceedings anew. However, in opposition proceedings it is not possible to take separate decisions for different parties on the form of the patent to be maintained."  
It is also not possible to conceptually separate the opposition proceedings into two different parts, the first one being the original opposition and the second one opposition proceedings including the interveners. A European patent can only be the subject of one common opposition procedure []. The filing of oppositions by different opponents or interveners does not lead to separate opposition proceedings for each party, not even conceptually.
• " In view of the above, the board considered whether the object and purpose of Article 105(1) EPC might justify and constitute an exception to both the principle of res judicata and the binding effect under Article 111(2) EPC." 
The board therefore agrees with decision T 694/01 that there "is nothing in the EPC to suggest that the intervention of an assumed infringer opens a new stage of proceedings which invalidates binding results of the proceedings to date" (T 694/01 []).
• In T 694/01, the Board had in the first appeal decided on the wording of the claims and remitted for maintenance of the patent in amended form with a description to be adapted, and the interveners intervened only at that stage.
• " In the case at hand, the grounds of opposition of added matter and sufficiency of disclosure have been finally determined in decision T 950/13. These grounds are therefore not open to an intervention and can be considered neither by the opposition division nor by the board on appeal. As set out above, due to the principle of res judicata, it is not possible to change the facts underlying the decision T 950/13 even if this change is acceptable in view of the ratio decidendi." 
  
  
• As a comment, the effect of this decision seems to be that each finding of fact and conclusion of law by the Board is res judicata, and hence binding after a remittal, even if a party could successfully invoke the exception expressly foreseen by the legislator in Article 111(2) EPC. In other words, does this line of case law on res iudicata make the exception of Article 111(2) EPC a dead letter?

EPO 

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

T 1854/16 - (II) Should have been filed after R.116 date

Key points

• The proprietor files amended claims one month before the oral proceedings before the OD. When should the opponent file additional prior art in response to it?
• Not in appeal, according to the Board.
• The Board observed that the auxiliary request at issue is based on claim 2 as granted.
• "Since the subject-matter of independent claim 1 of auxiliary request I'' is identical to that of claim 2 of the patent, this subject-matter was relevant from the beginning of the opposition proceedings. Hence, documents against this combination should have been filed already during the opposition period. At the very latest prior to oral proceedings before the Opposition Division - when the proprietor filed this request one month in advance of the oral proceedings - should the opponent have filed any additional prior art, the admission of which would then have been at the discretion of the Opposition Division."
• As a comment, the opponent was hence expected to file the prior art after the date set under Rule 116(1) EPC.
• As a comment, it is unclear to me whether the Board's view is that holding the new prior art inadmissible would be permitted under Art. 113(1) EPC or not. 
• The additional prior art is not admitted under Art. 12(4)  RPBA 2007.

EPO 

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

T 1854/16 - Applying Rule 99(2) EPC to individual grounds

Key points

•  Both the patentee and opponent appeal in this opposition appeal.
• "In the disputed decision, the Opposition Division concluded that the opposition grounds under Article 100(a) EPC in combination with Articles 52(2)(c) and 53(c) EPC against the patent as granted were unfounded"
• "The opponent did not contest this part of the decision during appeal proceedings."
• "Hence, the Board has no power to consider this part of the decision under appeal."
• As a comment, the  Board does not indicate the legal basis. It does mention Rule 99(2) in a further paragraph of the decision; see below.
• 
  
• "In the disputed decision, the Opposition Division concluded that the opposition grounds under Articles 100(c) EPC, 100(b) EPC, and 100(a) in combination with Articles 52(1) and 54 EPC (lack of novelty) against the patent as granted were unfounded In the disputed decision, the Opposition Division concluded that the opposition grounds under Articles 100(c) EPC, 100(b) EPC, and 100(a) in combination with Articles 52(1) and 54 EPC (lack of novelty) against the patent as granted were unfounded "
• "With the statement of grounds, the opponent explicitly maintained the corresponding objections, but only provided a copy of its arguments in its notice of opposition []. No explanation was given as to why the decision of the Opposition Division in this regards was wrong."
• " Since - contrary to Rule 99(2) EPC - no reasons are provided for setting aside the findings of the Opposition Division with regard to these aspects, these opposition grounds are not admissibly raised in the appeal. The Board has no power to review the Opposition Division's findings on these points."
• The Board considers the opponent's submission regarding inventive step, i.e. the opponent's appeal is not inadmissible. 
• As a comment, Rule 99(2) EPC is about the admissibility of the appeal. The Board applies this rule so as to provide for the partial (in)admissibility of the appeal* without a discretion to hear later submissions on the matter as envisaged by Art. 13 RPBA. Established case law, however, is that there is no concept of partial admissibility of an appeal. See e.g. T 1320/19 or T1679/21: “Zum einen kennt das EPÜ und die dazu ergangene Rechtsprechung das Konzept einer teilweisen Unzulässigkeit nicht. Sofern ein Einwand gegen die angefochtene Entscheidung in einer der Regel 99(2) EPÜ entsprechenden Weise vorgetragen wurde, ist die gesamte Beschwerde zulässig."
• As a comment, and in connection with the * above, Rule 99 is cited by the Board in connection with the patentee's main request, but the opponent's appeal concerns only Auxiliary Request 1'' (the set of claims held allowable by the OD). So the provision seems to be cited against the opponent as the respondent, if I understand the case correctly. 
• The fact that the opponent also files an appeal does not make that it must address claim requests held unallowable by the OD already in its statement of ground, it seems to me.
• As a comment, this decision is remarkable in firstly in citing Rule 99(2) for individual grounds of opposition, and secondly for possibly applying it against the opponent in its capacity as respondent. 

EPO T 1854/16 

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

T 0689/19 - (II) Intervention and Portuguese arbitration and nullity

Key points

• The question is whether the interventions are admissible.
• The patentee had initiated "arbitration proceedings under Portuguese Law No. 62/2011 of 12 December 2011" against the interveners.
• These are the mandatory "arbitration" proceedings for pharma patent cases under Portuguese law.
• It seems that this kind of mandatory arbitration procedure is of historical interest only. "The 2018 amendment to Law 62/2011 removed the mandatory arbitration requirement for disputes in connection with pharmaceutical patent infringements, subjecting them to the jurisdiction of the Intellectual Property Court." (link); idem Global Patent Litigation, Portugal, para. 200.
• "It has not been contested that Articles 2 and 3 No. 1 of Law No. 62/2011 confer on arbitration tribunals exclusive jurisdiction in disputes, including requests for preliminary injunctions, arising from industrial property rights related to so-called reference medicines and generic medicines "
• "The dispute is about whether these proceedings, in view of their subject and nature, qualify as "infringement proceedings" within the meaning of Article 105 EPC.
•  "Consequently, an autonomous interpretation of what constitutes "infringement proceedings" should avoid interfering with national legislation by adopting a definition that is tailored to some, but not all, national systems. Moreover, the legislative intent has to be taken into account."
• " The purpose of Article 105 EPC is to avoid parallel proceedings (infringement proceedings, nullity proceedings or declaratory proceedings for non-infringement) before national courts of the contracting states while centralised opposition and opposition appeal proceedings are still pending. This ensures efficient use of the judicial system and avoids contradictory decisions (see G 4/91, points 3 and 4 of the Reasons; G 1/94, OJ EPO 1994, 787, point 7 of the Reasons)."
• Note (added 29.12.2022: it is interesting that nullity proceedings before national courts are listed because Art. 105 refers only to infringement and non-infringement proceedings).
• " In the board's opinion, it does not matter whether these proceedings are set off in the present case by a request for a marketing authorisation either. What matters is that the exclusive rights conferred by a European patent are invoked in these proceedings and their enforcement is sought. Indeed, "infringement" means contravention of the rights conferred by a patent on its owner, which are rights to exclude (prevent) third parties from making use of the subject-matter of a patent without the authorisation of the patent proprietor. The board therefore concurs with the definition given in decision T 1713/11 that "proceedings for infringement" within the meaning of Article 105(1)(a) EPC are (national) proceedings "meant to establish whether a third party is commercially active in an area that falls within the patentee's right to exclude" (T 1713/11, point 2.6 of the Reasons)."
• The interventions are admitted.
  
  
• See also T0223/11 concerning the predecessor administrative Portuguese proceedings. 
• EPO 

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

T 1971/16 - Party as of right's objections disregarded

Key points

•  The patentee and opponent 2 both appeal. Opponent 1 does not appeal.
• Auxiliary request 2 is the set of claims allowed by the OD.
• Opponent 1 as respondent had submitted objections to AR-2 with its reply to the appeal.
• The Board does not admit these objections: "As was also not disputed by the parties, Opponent 1, as respondent, may request that the patent proprietor's appeal be dismissed, but may no longer challenge the maintenance of the patent as amended according to the interlocutory decision (auxiliary request 2). For this reason, the objections and arguments directed against the maintained version are considered inadmissible and are therefore not taken into account in the appeal proceedings."
• The Board then considers the objections of opponent 2 and does not find them to be convincing.
  
  
• As a comment, I don't recall having seen this approach before where objections are personal in the sense that an opponent may rely only on its own objections. 
• cf. T 1675/14 for the first instance proceedings.
• 
  

EPO 

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

T 0173/19 - The Board remits for inventive step

Key points

• This case concerns an opposition appeal. "Since the patent proprietor has convincingly demonstrated the incorrectness of the appealed decision as far as the alleged lack of novelty of the subject-matter of claim 1 of the main request with respect to D7 is concerned, and the opponents have not convincingly demonstrated that any of D1, D3 and D3' deprives the subject-matter of claim 1 of the main request of novelty, the appealed decision cannot be upheld and should be set aside."
• "The Board is aware that, according to Article 11 RPBA 2020 a remittal for further prosecution should only be undertaken exceptionally, when special reasons apply."
• "Noting that the opposition division has not addressed the issue of inventive step of the subject-matter claimed in the main request the Board cannot come to a decision regarding this patentability requirement by reviewing the decision under appeal in a judicial manner as set out in Article 12(2) RPBA 2020."
• "Moreover, although the patent proprietor has indicated its preference for dealing with the issue of inventive step at the oral proceedings before the Board, both opponents have expressed themselves in favour of a remittal referring to the complexity of the case and to the need for the parties to re-assess the case in view of the Board's conclusions on novelty."
• "Against this background, after considering all the relevant circumstances of the case at hand, the Board, noting that Article 11 RPBA 2020 cannot be seen as limiting the discretionary power of the Board provided by Article 111(1) EPC, considers it appropriate to remit the case to the opposition division for further prosecution."
• As a comment, the Board may of course mean that no provision in the RPBA can be seen as limiting any of the Board's discretionary powers under the EPC (which then should then logically apply equally to Article 12 or 13) or that the provision's wording "The Board shall not remit a case" should be understood as not limiting. 

EPO 

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

J 0013/21 - RE for EP entry with FP

Key points

•  The applicant requests the re-establishment of rights for entry into the European phase with further processing.
• " EPO Form 1010 ("Payment of fees and expenses") was annexed indicating bank transfer as the mode of payment and the payment of fees including one fee for re-establishment of rights and fees for further processing (except the fee for further processing for the failure to file the written request for examination).
The Receiving Section "expressed its preliminary view that the request for re-establishment of rights was inadmissible because five re-establishment fees were due and only one was paid. In response to this communication, the applicant, in a letter dated 18 May 2020, submitted further reasons for the admissibility of the request, requested correction of a transcription error in the fee calculation sheet (Form 1010) under Rule 139 EPC and paid four additional re-establishment fees."
• The Receiving Section rejects the request.
• In appeal, the applicant requests a correction of the fee calculation sheet. 
• The Legal Board: "In accordance with Rule 139, first sentence, EPC, only errors in documents filed with the EPO may be corrected. Consequently, an error in a bank transfer order cannot be corrected under Rule 139 EPC because it is not an error in a document filed with the EPO but a document filed with a bank. The requested correction of Form 1010 (whether allowable or not) would not remedy the non-payment, which was not caused by the indications in Form 1010 but by the transfer order given to the bank." 
• More importantly, the appellant challenged the Receiving Section's view that five RE fees would be due.
• The Legal Board, turning to the precedent: " In J 26/95, the Legal Board of Appeal was dealing with a case where the applicant had failed to reply to a communication pursuant to Article 96(2) and Rule 51(2) EPC 1973. This led to the application being deemed to be withdrawn. The applicant had also failed to pay a renewal fee in due time. The applicant submitted that only one fee was due in connection with its requests for re-establishment in respect of both time limits missed since both time limits had not been complied with for the same reason (serious financial difficulties). However, the Board held that where time limits expiring independently of one another have been missed by the applicant, each resulting in the application being deemed withdrawn, a request for re-establishment had to be filed in respect of each unobserved time limit. Consequently, a fee for re-establishment had to be paid for each request. It was irrelevant whether the requests for re-establishment were based on the same or different grounds."
• The Legal Board, turning to the present case: "In the Board's view, the individual acts required under Rule 159(1) EPC do not form a unitary procedural step but are legally independent requirements subject to independent time limits although some of them may coincide in a particular case. The legal consequences and possible remedies of not fulfilling the requirements of Rule 159(1) EPC are not identical. The legal consequence provided in Rule 160 EPC (application deemed to be withdrawn) does not apply to all of these requirements. In contrast to some other requirements listed in Rule 159(1) EPC, non-payment of the third renewal fee within the time limit provided for in Rule 159(1)(g) EPC does not lead to an immediate loss of right since the fee can still be paid within a further period of six months. On the other hand, the remedy of further processing is not available with respect to this requirement."
• " It follows from the above that in the current case the appellant had to pay more than one re-establishment fee. However, only one re-establishment fee was paid in due time. The remaining re-establishment requests are not deemed to have been filed since the required fees were not paid within two months from the removal of the cause of non-compliance (Rule 136(1) EPC), "

• As a comment, the Board here does not say that five RE requests were necessary. The reasoning seems to only distinguish between the payment of the renewal fee with a surcharge on the one hand and the other acts with further processing on the other hand. See also  T1823/16.

•  

EPO 

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

T 1307/17 - Assignment of priority

Key points

•  This decision was taken 16.11.2021 (published 10.03.2022). 
• The patent at issue was granted on a divisional application of a Euro-PCT application claiming the priority of a national French patent application. The applicants of the priority application and the PCT application were not the same.
• The Board, in machine translation: "  The priority of application FR 1057603 is validly claimed.  Documents I11 to I18 are admissible. [...] The applicants had raised their objections to the validity of the priority before the filing of exhibits I11 to I18. They did not submit any additional arguments in response. The Board, in the absence of any counter-argument taking into account the new evidence and explanations, is satisfied that these show that Alstom Technology Ltd was the successor in title within the meaning of Article 87(1) EPC on the date of filing of the first application [note: perhaps the parent application? ]. The Respondent's explanations as summarized in the Statement of Facts and Conclusions make it possible to establish the flawless chain of transfers and agreements." 
• The file at the EPO does not include the PCT Request form (neither in the EPO file for the parent application). The PCT Request form can be found at WIPO and mentions two applicants, not being " Alstom Technology Ltd". The priority document shows yet another legal entity as the applicant. 
• On the PCT Request Form, the applicants are ALSTOM Grid SAS and another company. ALSTOM Grid SAS is not visible as an applicant in the file for FR 1057603.
• As a comment, Article L614-14, para 3, of the French IP Code provides that, in translation: " The French patent application or the French patent and the priority right for the filing of a European patent application cannot be transferred independently of each other." 
• However, whether the EPO has to apply French national law on this matter seems to be an open question as of yet. Moreover, I don't know if the French provision is supposed to apply to Euro-PCT applications as well.

EPO 

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

J 0008/21 - No proper cross-check at 1000+ attorney firm

Key points

•  The PCT application was filed by a USA law firm 5 days after the expiry of the priority year.
• " the internal procedural rules used in the law firm were as follows: "Each paralegal is responsible for tracking deadlines for their patent matters and requesting the docketing department to de-docket each deadline after the desired actions (if any) for responding to the deadline have been taken. A daily reminder is also sent from [the firm's] docketing department to each paralegal, reminding the paralegal of daily deadlines. As an additional cross check, before de-docketing a docketed deadline, the procedures require that the paralegal assigned to a patent matter ensure that it is proper to de-docket a deadline. If unsure whether it is proper to de-docket a deadline, the paralegal should contact either the supervisory attorney(s) for the patent matter and/or the client (e.g., the Applicant) to obtain their approval to de-docket the deadline."
• The facts: "The paralegal in charge of the application had been reminded by the docketing system again on the final day about the deadline for filing the PCT application and hence received an independent reminder from the system to avoid that the due date was overlooked or missing in the backup docket. The paralegal had made her first mistake by wrongly converting the client instructions into a "NO filing required". The due date was still docketed in the docketing system. To remove such a date from the system - so the appellant alleged - approval from a supervisor/attorney was required. Here, the paralegal had made her second mistake in not contacting a supervising attorney or the applicant. The deadline was removed from the docketing system [note the passive voice; I understand by one and the same paralegal] , and no further patent application was filed before the one-year deadline."
• 
  
• The Board: " the described procedure does not amount to a cross-check independent of the person responsible for monitoring time limits because the paralegal decides whether a second person becomes involved or not. If the de-docketing of a deadline by the paralegal and the paralegal's subsequent decision not to contact a supervisor are wrong, the system does not ensure that a second person will notice this mistake at a point in time when it can still be corrected."
• The request for restoration of priority is refused.
• The name of the law firm can be found in the decision. According to Wikipedia, it has 1000+ attorneys.
  
  
• The applicant tried some creative arguments. "the appellant argued that the case law of the boards on "due care" had been developed decades ago and was too strict in that it did not reflect the technological and economic circumstances in which law firms organised themselves today. Since that case law had been developed, the volume of patent applications and renewal fees to be managed had multiplied, and office management had become computerised. Thus, it had become disproportionate to require parties or law firms to hire and assign additional employees for performing cross-checks." The Board: "This line of argument is not convincing either. While technological circumstances have indeed changed, missing deadlines can have the same grave legal and economic consequences for clients as before. Hence, changes in technological circumstances eliminate neither the need to require nor the proportionality of requiring large law firms to provide for an independent cross-check by a second person. The Board also considers it feasible for large law firms to use IT when implementing such an independent cross-check, thus using the changes in technological circumstances to their advantage."

EPO 

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

T 1008/19 - No withdrawal appeal after decision is announced

Key points

• The appellant / applicant "stated by letter that the appeal was withdrawn" after the "the board had announced its decision to dismiss the appeal and closed the oral proceedings" (but before the decision was issued in writing).
• The Board: "the board's decision became effective on the day of the oral proceedings at which the decision was announced. On that day, the appeal proceedings were terminated []. Given that by virtue of the board's decision the refusal became final and no appeal lies from decisions of the boards, the appellant's submission made after the announcement of the board's decision is without any legal effect" (note, subject to a petition for review).
• "a statement of withdrawal of appeal made by the (sole) appellant after the final decision of the board has been announced at oral proceedings does not relieve the board of its duty to issue and notify to the appellant the decision in writing setting out the reasons for the decision (T 1033/04 [])"
• " Since the withdrawal is without any legal effect and the written decision has to be issued, the appellant is not entitled to the reimbursement of the appeal fee at 25% under Rule 103(4)(b) EPC'
• 
  

EPO 

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

T 1526/17 - Medical method or operating a medical device

Key points

• In this appeal against a refusal, claim 1 is directed to "a method for operating a medical navigation system". The Board finds the claim to be directed to a medical method (treatment by surgery).
• Claim 1 reads: "A method for operating a medical navigation system comprising a stationary marker device (8) and an electronic device (1) which is rigidly attached to the bone (6) and comprises a video camera (4), for calculating a first point (P1) of the mechanical axis (A) of a bone (6), the mechanical axis (A) being a straight line running through the first point (P1) and a second point (P2), by: - calculating the first (P1) of the two points as the centre of rotation when the bone (6) is pivoted in two rotational dimensions about the first point (P1), the centre of rotation being calculated from an output signal of the camera (4) which captures the stationary marker device (8)."
• Hence, the video camera is rigidly attached to the bone
• The Board: "Claim 1 is directed to a method for operating a medical navigation system. The medical navigation system comprises a stationary marker device and an electronic device which is rigidly attached to the bone. Hence, its operation is not limited to mere data processing or calculation steps. The possibility that the bone is moved with the attached electronic device is not excluded from the claimed method by the wording of claim 1."
• "The board agrees with the examining division[] that the output signal of the camera can only be analysed to calculate the first point if the camera assumes different positions during bone movement. Hence, the movement of the bone with the attached electronic device and the associated data acquisition are indispensable requirements for calculating the first point, even when the calculation involves some approximation (last full paragraph on page 4) and may be carried out after the movement is completed. Hence, said movement is to be considered an integral part of the claimed method."
• "As a consequence, the claimed method comprises the step of pivoting the bone with the electronic device attached to it to produce the data for calculating point P1"
• "The board agrees with the examining division that pivoting the exposed bone involves substantial health risks for the patient and has to be considered a surgical step."
• "According to claim 1 the electronic device "is rigidly attached to the bone". This wording can be understood either as describing the position of the electronic device before the claimed method begins, or as referring to an attaching step comprised in said method. In view of dependent claim 6, which can only be understood as defining the step of attaching the electronic device in a specific direction, claim 1 has to be interpreted in the second way, i.e. as comprising the step of attaching the electronic device to the bone."
• " In this respect it is immaterial that the description (page 11, second paragraph) states that the electronic device is to be attached to the bone "beforehand" and that the surgical steps "are carried out before the methods described above are applied". Not only does the same paragraph explicitly state further on that the surgical steps are "preferably" not part of the present invention, but most importantly the statements in the description relating to preferred embodiments cannot limit the scope of the claims. The board considers attaching the electronic device to the bone to be a surgical step. This has not been disputed."
• " It follows that claim 1 relates to a method of treating the human body by surgery, which is excluded from patentability pursuant to Article 53(c) EPC." 
• 
  

   

EPO 

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

T 2197/16 - No appellate review of cost apportionment

Key points

•  "The opponent's appeal is against the opposition division's decision rejecting the opposition to European patent No. 2 296 858 ("the patent") and ordering the patent proprietor to pay 100% of the costs of the oral proceedings scheduled for 23 February 2016 to the opponent under Article 104(1) EPC. With its notice of appeal dated 14 September 2016, the appellant (opponent) appealed against the decision of the opposition division, except in so far as it relates to costs."
• "In its reply dated 3 April 2017, the respondent (patent proprietor) requested, inter alia, that the decision on costs be included in the subject of the appeal and that the discussion on this matter be reopened."
• The Board considers the OD's decision on the costs to be outside the scope of the appeal.
• 
  
• "The meaning of the generally-recognised procedural principle of free party disposition is that the appeal cannot extend to issues that, in view of the notice of appeal, the appellant themselves did not wish to be a subject of the appeal, nor can the extent of the rights be decided beyond the extent requested (see also decision T 689/09, point 1.7 of the Reasons)."
• "In the case in hand, the notice of appeal clearly shows that the appellant did not appeal against the opposition division's decision on the apportionment of costs. Nor does the statement of grounds of appeal refer to the issue of the apportionment of costs. Therefore the opposition division's decision in this respect is not the subject of the present appeal."
• "In view of the above, the issue of the apportionment of costs is a legal issue which may not be dealt with and decided on in the appeal proceedings, since it is not the subject of the present appeal. For that reason alone, the respondent's requests regarding the decision on the apportionment of costs are not admissible.'
• "the general considerations of [decisions T 753/92 and T 762/96 ] are applicable here mutatis mutandis since, if the respondent had lodged an appeal against the opposition division's decision on apportionment of costs, the appeal, with the apportionment of costs as its sole subject, would have been inadmissible under Article 106(3) and Rule 97(1) EPC. The respondent is only a party to the proceedings under Article 107, second sentence, EPC, and does not have the right to file a "cross-appeal" without limit of time and, unlike the rights the respondent would have as appellant, its requests are therefore subject to restrictions (see also decision G 9/92, OJ EPO 1994, 875, point 16 of the Reasons)."
• As a comment, the provision of Rule 97(1) "The apportionment of costs of opposition proceedings cannot be the sole subject of an appeal" is simply a choice of the legislator to limit the right to appeal and must be respected.

EPO 

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

T 3024/19 - New attacks in appeal

Key points

• This is a rather straightforward opposition appeal case, except that it is (still) one of the first published decisions to apply the new 'first level of convergence' of the RPBA 2020. 
• The statement of grounds of the opponent contained new objections. The statement of grounds was filed 26.02.2020 so Art. 12 RPBA 2020 applies in its entirety.
• " The objections raised in items 4, 5.3 to 5.7, 6.1 and 6.2 in the statement setting out the grounds of appeal are not directed to facts, objections, arguments and evidence on which the decision under appeal was based, as required by Article Article 12(2) RPBA 2020. Moreover, it has neither been submitted nor demonstrated that these objections were admissibly raised and maintained in the proceedings before the opposition division. The new objections in appeal thus constitute amendments of the appellant's case in the sense of Article 12(4), first paragraph, RPBA 2020, which may be admitted only at the discretion of the Board, whereby reasons should be provided for submitting the amendments in appeal (Article 12(4) 2020, second paragraph)." 
• " The appellant [opponent] argued in the statement setting out the grounds of appeal (section 1) that it had been impossible for them to react appropriately to the filing of the first auxiliary request in opposition (now the main request) since that request had not been filed until the day before the date set under Rule 116(1) EPC."
• " The Board observes that the request was filed on 18 July 2019 and thus two months in advance of the oral proceedings, which took place before the opposition division on 19 September 2019."
• As a comment, it is not clear to me if this means that the opponent should have filed a letter after the Rule 116 date before the OD. Point 1.4.3. of the decision suggest that the attacks should have been presented during the oral proceedings. 
• " Further, as indicated below, the amendments were either taken from granted claims, rather than from the description (see point 1.4.1), or the possibility of raising the objections newly raised in appeal was apparently specifically addressed already during the oral proceedings before the opposition division (see point 1.4.2). Thus, the Board finds that the appellant had reasons to raise those objections already during opposition proceedings." 
• " It is apparent that the objections of lack of sufficiency of disclosure raised by the appellant [] concern features and combination of features that were already present in the granted claims." 
• " Under these circumstances the new objections of lack of sufficiency of disclosure raised in appeal could have been raised before the opposition division in view of the corresponding granted claims. In view of that[,] the date at which the first auxiliary request was filed in the first instance proceedings does not justify the filing of these objections for the first time in the appeal procedure." 
• So it is important to attack all claims as granted and perhaps their combinations as well, already before the OD.
• " As to the other objections raised in appeal[]  it is apparent that at the oral proceedings before the opposition division the opponent did not object to the then first auxiliary request (present main request) under Rule 80 or Article 84 EPC [] and did not maintain their novelty objection against claim 1 of the first auxiliary request over document D10 []  while having the possibility to do so." 
• "The Board therefore does not see any reason why it was not possible for the appellant to raise the objections at the beginning of the opposition proceedings or at the latest at the oral proceedings before the opposition division."
• As a  comment, the new objections could also have been held inadmissible under Art.12(6)(s.2), as it seems that the Board in effect concludes that the new objections should have been filed before the OD (though the Board does not say so).
As a further comment, I'm surprised that the Board does not expressly apply the factors specified in the Art.12(4)(s.5): " The Board shall exercise its discretion in view of, inter alia, (i) the complexity of the amendment, (ii) the suitability of the amendment to address the issues which led to the decision under appeal, (iii) and the need for procedural economy." [roman numerals added]. The fifth sentence uses "shall", not "may" .
• "  In view of the above, the Board finds it appropriate to make use of its discretion pursuant to Article 12(4), first paragraph, second sentence, RPBA 2020 by not admitting into the proceedings the objections" 
• 
  

EPO 

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

T 1520/19 - The description must state a technical problem

Key points

•  In this case, the application does not comply with Rule 42(1)(c) EPC which requires that the description shall " disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, and state any advantageous effects of the invention with reference to the background art".
• The question is, what is the Article of the EPC that can be used as ground for refusal.
• The Board: " The factual situation can be summarized as follows: it is clear what the claimed invention is and how it can be implemented. However, the skilled person cannot understand from the application or its common knowledge whether the claimed invention solves a technical problem, and which one. The Examining Division refused the application pursuant to Articles 83 and 84 EPC. The Board does not find this to be correct in this case." 
• " According to the requirement of Article 83 EPC that the invention be sufficiently disclosed, the skilled person must be able to carry out the alleged invention. This is the case here for the reasons provided above" 
• " The requirement for the claims in Article 84 EPC is that they define the matter for which protection is sought and that they be clear and supported by the description. These requirements are satisfied: the claimed set of features defines the invention as the description does, so this definition of the invention is supported by the description. It is irrelevant in this regard whether the claimed invention solves a technical problem, or which one." 
• " According to T 26/81 (headnote, last sentence, and reasons 9, esp. second and last sentence), the requirement that the invention should be disclosed in such terms that the technical problem and its solution can be understood (now in Rule 42(1)(c) EPC) cannot be set up as a separate formal criterion independent of inventiveness." 
• " Established case law holds that if a technical effect is not present, i.e. if a technical problem is not solved, then inventive step is to be denied. This is also consistent with the statement in T 26/81 (reasons 9) that, if the subject-matter of of an independent claim, for which there is sufficient disclosure, is judged as being inventive, it must always be possible to derive a technical problem from the application." 
• " In the present case, the application relates to an allegedly improved [] fingerprint sensor [of a particular type]. This undoubtably has the character of an invention in the sense of Article 52 EPC. However, it does not solve any technical problem in respect of a standard [] fingerprint sensor [of that type], so inventive step is to be denied under Article 56 EPC." 

EPO 

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

T 0909/14 - Upgrading user accounts

Key points

• This is an appeal against a refusal decision. "The invention concerns a web service enabling the creation, storage and sharing of documents (see published application page 1, lines 6 to 19). Such services are known from the prior art. The key idea is to allow new (prospective) users of the service to access only part of the available functionality in order to reduce resources consumed (page 1, line 30 to page 2, line 13).  Claim 1 of the main request recites a method for creating and upgrading user accounts. The service's full users, having an account of the first type, may create their own documents and edit documents shared by others. By contrast, a prospective user, joining the service in response to an invitation from an existing user, gets an account of a second type not allowing him to create his own documents, but only to edit shared documents (page 12, lines 8 to 31)."
• "The main point of dispute in this appeal is whether discriminating between full users and prospective users with limited functionality is the solution to the technical problem of saving resources, as argued by the appellant (see section X, above), or a non-technical requirement that could be envisaged by the business person and thus part of the problem given to the skilled person under the COMVIK approach (see T 641/00 - Two identities/COMVIK) as argued by the division."
• "Decision T 1463/11 - Universal merchant platform/CardinalCommerce, further refining the COMVIK approach, set out that in the assessment of inventive step, circumstances under which inventions are developed in the real world have to be ignored to a certain extent. It introduced the concept of the notional business person who may formulate business requirements to be implemented but will not include in them any technical matter. The notional business person is a legal fiction representing a shorthand for a separation of business considerations from technical ones. Using this legal fiction is the price paid for an objective assessment; a real inventor does not hold such considerations separately from one another "
• "Under the CardinalCommerce approach, the test used in deciding on technicality of a feature is whether the notional business person could have come up with it. This boils down to determining whether there would have been at least one way to devise it without technical considerations. If so, it does not have technical character and may form part of the requirement specification regardless of what alternative ways of arriving at it were disclosed in the application or were conceivable."
• "In the present case, the Board judges that providing limited functionality for some users, such as not enabling the creation of documents, is a business decision which need not be based on technical considerations. There are apparent business reasons for doing it, for example charging the full user a higher subscription fee than the prospective user."
• The present decision is interesting because G 1/19 does not refer to T 1463/11 though it did refer to the follow-up decision T 0817/16. G 1/19 stated that "It was argued in the course of these referral proceedings that a simulation is of a technical nature and has technical effects if the relevant skilled person is a technically skilled person in the field of the simulated system or process (see e.g. the comments of the President of the EPO, points 23 to 25). This argument is partly based on T 817/16 (see Reasons, point 3.12), which relies on the (technically) skilled person in order to distinguish between technical and non-technical features. This approach may be suitable in some cases but may prove difficult in others where the skilled person for the simulation is different from that for the system represented by the model underlying the simulation. " 
• " Concerning "simulating" the full user interface [as specified in the claims], the Board judges that including in the user interface a feature which is useless without an account upgrade, for example an empty document container, relates to the presentation of information and is not based on any technical considerations. The appellant's argument attempting to prove that this part of the solution derives technical character from effects produced when the user operates the upgraded user interface is not convincing. In addition to being speculative, it is a typical example of the "broken technical chain fallacy" in the sense of T 1670/07 - Shopping with mobile device/NOKIA, reason 11."
• The appeal was filed in 2014; the Board's first action was a preliminary opinion in 2020. The appeal procedure took 8 years. I don't know what the average is for Board 3.5.01. The prospect of having the patent application pending for 8 more years may of course precisely be the reason for filing the appeal, especially for this kind of software invention. In a way, the backlog at Board 3.5.01 may sustain itself. 

EPO T 0909/14

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