T 0424/21 - First medical use claims revisited

Key points

• In this opposition appeal, claim 5 reads:  "The antibody or Fc fusion protein according to any one of claims 1-[] for use as a medicament." 
• The Board gives a tutorial on first medical use claims, i.e. claims reciting "for use as a medicament".
• " Claim 5 is formulated in the form of a first medical use ("for use as a medicament") according to Article 54(4) EPC ("for use in a method referred to in Article 53(c)"). In view of the above finding with regard to the sufficient disclosure of the antibody and Fc fusion protein as such, it remains to be analysed whether those compounds are suitable for use as a medicament."
• " The patent shows that the PGLALA mutations can be introduced into known therapeutic antibodies having a human IgG1 Fc region and that an antibody of this kind provides relevant medical effects such as reduced Fc receptor affinity and reduced effector function, known to be useful in several therapeutic contexts " 
• " the only remaining question is whether claim 5 should be restricted to these particular therapies."  
• "The case law of the boards of appeal concerning the question of sufficiency of disclosure of a first medical use is not very extensive " 
• The Board observes that it is irrelevant that in this case, the compound (antibody) of claim 1 is also novel.
• " In decision G 5/83, Reasons 15, the Enlarged Board of Appeal stated: "Thus the inventor of a 'first medical indication' can obtain purpose-limited product protection for a known substance or composition, without having to restrict himself to the substance or composition when in a form technically adapted to a specified therapeutic purpose. The appropriate protection for him is, therefore, in its broadest form, a purpose-limited product claim. No problem arises over its susceptibility of industrial application, within the meaning of Article 57 EPC." The board interprets this statement to mean that the Enlarged Board, although not commenting explicitly on Article 83 EPC, also saw no general issue of sufficiency of disclosure for a broad first medical use claim and did not see the need for the inventor to "restrict himself ... to a specified therapeutic purpose"." 
• " Before decision G 5/83, decision T 128/82 had followed the same line of thinking: "If an inventor is granted absolute protection in respect of a new chemical compound for use in therapy, the principle of equal treatment would require that an inventor who for the first time makes a known compound available for therapy should be correspondingly rewarded for his service with a purpose-limited substance claim under [Article 54(4) EPC 2000] to cover the whole field of therapy"
• The reasoning indeed appears to be " Argumentum a maiori ad minus", with the tacit observation that a product claim covering all possible uses of the product, even uses still to be invented, is considered to be sufficiently disclosed by an enabling disclosure of the preparation method.
• " With regard to Article 84 EPC, [T 128/82 ] stated [in r.12]: "The mere fact that there are [no] instructions concerning all and any possible specific therapeutic applications does not justify limiting the scope to the therapeutic application actually mentioned. This would not be in accord with the general practice of the European Patent Office concerning therapeutically active compounds" []. Thus, although Article 83 EPC is not mentioned, this decision does not require a limitation to a specific therapeutic use either." 
• " This board cannot derive any requirement from the EPC whereby a patent would have to show that a compound is suitable for each and every disease in order for a first medical use to be sufficiently disclosed. Instead, it is sufficient to show that the compound is suitable for at least one particular medical use, as is the case in the patent at issue" 
• T 128/82 further states that: " the practice of the European Patent Office hitherto has shown that substance and medical preparation claims for therapeutically active compounds not limited to specific indications are allowed, even though as a rule only certain specific activities are stipulated." "As a general rule the usual practice as it relates to new compounds should be followed [for first medical use claims]."
• Hence, the EPO's practice was (and is) to allow compound [and composition] claims for new (and inventive) compounds (and compositions), also if it concerns new therapeutically active compounds, even though generally only certain specific activities are disclosed in the description. These compound claims are not limited to specific uses (or medical indications). 
• The same Board 3.3.04 briefly touched on the same point recently in T 0419/16:  "  A logical consequence of the availability of purpose-limited substance protection for a first medical use is that the disclosure of a single therapeutic use of a compound is both sufficient to meet the requirements of Article 83 EPC and to serve as a basis for such a claim in the sense of Articles 87(1) EPC and Article 123(2) EPC, respectively." It may be added that a single inventive therapeutic use of a compound is also sufficient to meet the requirement of inventive step of such a first medical use claim. 

EPO 

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

Scaling down to weekly posts

Key points

• I will post here weekly for the time being, as I have a book to edit in my spare time. 
• Posts are scheduled for Mondays.

T 1108/20 - Closed-circuit e-commerce entity

Key points

• The title of the application in this appeal is "METHOD AND STRUCTURE FOR SIMPLIFIED CODING OF DISPLAY PAGES FOR OPERATING A CLOSED CIRCUIT E-COMMERCE"
  
• Claim 1 begins with:  "A method for connecting and operating a closed circuit e-commerce entity comprising at least one shopping terminal, at least one provider and at least one entity center" 
• The Board, however, finds claim 1 to be inventive. The decision may illustrate that non-technical features do not contribute to inventive step under the Comvik approach, but there is, strictly speaking, no penalty for specifying non-technical features under the Comvik approach either if the claim additionally recites non-obvious technical features.
• Claim 1 specifies that "said shopping terminal including a touch screen, a CPU and a second memory is connected with said building server via an interface including a CPU and a first memory"
• The Board: "the board considers that the "CPU" mentioned in distinguishing feature (ii) can only be interpreted as relating to an additional CPU, i.e. in addition to the regular CPU that each server - including the server disclosed in document D2 - possesses. The same applies analogously to the "memory" mentioned in distinguishing feature (iii)."
• "The objective technical problem is how to support a large number of kiosks without overwhelming the server. This problem is solved by distinguishing features (ii) and (iii), since adding a CPU and a memory for processing kiosk requests at the interface reduces the load on the server CPU. However, neither this problem nor its solution are disclosed or hinted at in the prior art at hand."
• "Therefore the board concludes that the subject-matter of claim 1 involves an inventive step."
  
  
• As to the description: "The board notes that the [allowed set of claims] basically corresponds to the claims originally published and that the description as published supports these claims. Hence there is no need to adapt the description to the present claims in order to meet the requirements of Article 84 EPC in the present case." (italics added)
  
  

EPO 

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

T 1436/18 - (II) Legitimate reaction to appealed decision

Key points

• The Board admits AR-6 filed with the appeal, under Art. 12(4) RPBA 2007.
• The Board essentially finds AR-6 to be a legitimate reaction to a point that became clear only in the written decision of the OD.
• In AR-6, the product claims were cancelled; only the method claim was maintained (corresponding to claim 6 as granted).
• "Claim 6 as granted was objected to and discussed between the parties since the beginning of the opposition proceedings. The decision under appeal deals with both the device claim and the method claim as granted. Even if claim 6 during oral proceedings mainly was discussed in amended form [...], the reasoning in the impugned decision for novelty and inventive step of the method claim is solely based on features of granted claim 6 "
• "the board follows the argumentation of the appellant 1 (patent proprietor) that the course of the proceedings gave the impression that claim 6 as granted was not considered new by the opposition division. As the main request was rejected for lack of novelty of claim 1 over E6, claim 6 as granted was not further discussed in connection with the main request. However as the preliminary opinion of the opposition division likewise was negative for claim 6 in view of E6, there was no motivation for the patent proprietor to file an auxiliary request according to AR6 during the first instance oral proceedings. AR6 is thus a legitimate reaction to the decision of the first instance from which it became clear for the first time that claim 6 as granted was considered new by the opposition division."

EPO 

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

T 1436/18 - No circumventing of Art. 12(4) RPBA 2007

Key points

• The Board, on the admissibility of auxiliary requests 2 to 5: 

  2.4.1 AR2 to AR5 are not literally, but in their gist (as explained below) identical to auxiliary request 5 (AR2), auxiliary request 7 (AR3, AR4) and auxiliary request 8 (AR5) which were withdrawn during oral proceedings [before the OD]. "

• "It is therefore not apparent why the auxiliary requests 5, 7 and 8 were not maintained pending during the opposition proceedings, or, alternatively, why AR2 to AR5 were not filed in the first instance proceedings, in order to be decided by the opposition division. In fact, it appears that the appellant 1 (proprietor), by filing AR2 to AR5 in appeal, seeks to circumvent the withdrawal of the similar auxiliary requests 5, 7 and 8 filed in opposition proceedings."

• " The board concludes that these minor amendments in AR2 to AR5 on file compared to the withdrawn requests are only of formal nature and do not justify the resubmission of subject-matter that could have been presented in the first instance and was not."

•  The requests are not admitted under Art. 12(4) RPBA 2007

• The Board, however, admitted AR-6 filed with the appeal and found those claims to be allowable.

EPO 

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

J 0007/21 - Co-applicants file divisional application

Key points

• A divisional application was filed in 2019. One of the co-applicants of the divisional application, was not the same as indicated in the Register for the parent application. The parent application was withdrawn the day after the filing of the divisional application. 
• The decision is anonymised, and all parties are referred to as "N.N." which makes the decision difficult to follow.
• The applicant argues that "N.N. was an applicant of the divisional application as N.N. had merged into N.N. as of 1 January 2018. Copies of the documents demonstrating the merger were submitted in the form of a confirmatory deed of merger dated 20 March 2018. It was requested that the application at issue be treated as a divisional application."
• "The appellants provided a confirmatory deed of merger dated 28 March 2018 (D2), which states that N.N. [new applicant] is a public institution serving scientific, cultural and professional purposes created pursuant to Decree No. 2017-596, issued by the French Ministry of Education on 21 April 2017, by merging N.N. [old applicant] and N.N. [another French university ?]."
• The Board: "In view of the above, it is therefore established that from 1 January 2018 N.N. became the universal successor in law of N.N.."
• "The board comes to the [...] conclusion that Rule 22(3) EPC does not apply in the context of universal succession, "
• "The board concludes that the notion of "transfer" in Rule 22 EPC should be interpreted as not covering universal successions, meaning that none of the requirements laid down in Rule 22 EPC for the registration of transfers is applicable. In the latter case, the effect of the change in ownership of the patent application is immediate and there is no need to postpone it to a later date on which the documents establishing that change have been provided to the EPO."
• "In view of the above, the board considers that as of 1 January 2018 N.N. automatically became the universal successor and owner of the patents and patent applications owned by N.N., including the jointly owned European patent application No. [X]  (the parent application), there being no need to request registration of the transfer, file documentary evidence and pay the fee. Therefore, the [divisional application], filed by the joint applicants N.N., on 17 September 2019 was filed by the same co-applicants as the parent application and meets the requirements of Article 36(1) EPC [sic]."
• "the application at issue must be treated as a divisional application of the earlier European patent application [], which was still pending on the filing date."
• As a comment, it is indeed established case law that acquiring the property of a European patent or patent application by way of universal succession, is neither subject to the requirement of Rule 22 that a fee must be paid for registering a transfer nor to the rule that a transfer is effective vis-à-vis the EPO only once the requirements for a valid request under Rule 22 EPC are fulfilled. As held in T 15/01, hn. II: " [Rule 22(3) EPC 2000] does not apply in the context of universal successions in law. The universal successor of a patent applicant or patentee automatically acquires party status in proceedings pending before the European Patent Office".
• The Board states that: "The board comes to the same conclusion that Rule 22(3) EPC does not apply in the context of universal succession, but not for the same reasons as those submitted by the applicant.". I understand that the Board considers universal succession to be a species of the genus "transfer of assets" (contrary to an argument of the applicant), but not a species of the genus "transfer in the sense of Rule 22 EPC".
• Rule 36(1) stipulates that "the applicant" may file a divisional application. The term applicant refers to the applicant of the (pending) parent application. Uncontested in the present decision is the rule that joint applicants can only file a divisional application acting jointly.
• Interestingly, a divisional application is apparently not published as long as it is not dealt with as a divisional application. 

EPO 

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

T 2785/17 - Sufficiency of a compound claim

Key points

• Claim 1 is directed to a class of chemical compounds, purely defined in terms of the chemical formula ("A compound of formula (II) ...". 
• The Board, notes, under inventive step, that "[t]he patent states that the compounds of claim 1 of the main request are useful as proteasome inhibitors (paragraph [0002] of the patent). Proteasomes are protein complexes which degrade intracellular proteins by proteolysis, a chemical reaction that breaks peptide bonds (paragraph [0004] of the patent)."
• Turning to sufficiency, "[t]he appellant [opponent] objected to sufficiency of disclosure of the compounds of claim 1 of the main request. It argued that the subject-matter of the claim was not disclosed in a sufficiently clear and complete manner to be carried out by a person skilled in the art across the whole scope of the claim. The appellant essentially submitted that there was no limitation on the number or type of substituents allowed in claim 1 of the main request and that the compounds encompassed by the claim would not necessarily have any physical or chemical properties in common, i.e. the properties to be used as boronic ester prodrugs to treat cancer. "
• "The board does not agree. As submitted by the respondent, the technical effect relating to the pharmaceutical activity is not incorporated in the claims of the main request, and thus whether the claimed compounds achieve this effect should not be examined under Article 83 EPC but rather Article 56 EPC."
• As a comment, see G 2/03 r.2.5.2:  " If an effect is expressed in a claim, there is lack of sufficient disclosure [if there is a lack of reproducibility of the claimed invention]. Otherwise, ie if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step (T 939/92 []). "
• "Consequently, the board concludes that the invention underlying the subject-matter of claim 1 of the main request is sufficiently disclosed within the meaning of Article 83 EPC."
• The Board also concludes that claim 1 involves an inventive step. 

EPO 

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

T 2300/18 - Considering the broad scope of claim 1

Key points

•  "In the decision under appeal, the opposition division found that D1 was not only the closest prior art for the subject-matter of claim 1 but that it was also the only suitable starting point to be used in the context of the problem-solution-approach."
• " The Board does not agree with this finding. As a general rule, the claimed invention must be non-obvious having regard to the prior art, which can only be understood to mean any prior art (see e.g. T261/19, Reasons 2.5, citing T1742/12, points 6.3 and 6.6 of the reasons and T967/97, point 3.2 of the reasons). Considering the broad scope of claim 1, the Board sees no reason as to why D8 or D9 should not represent a suitable starting point for considering inventive step, whether it be the absolute "closest" prior art in some sense, or not. The term "closest prior art" is simply a label given to the prior art from which the inventive step analysis is started."
• " Starting the inventive step analysis from prior art which is (possibly) further away from the claimed invention (e.g. by having less features in common), can merely be expected to make it more difficult to arrive at the claimed subject-matter without involving an inventive step. In order to be allowable, the claim must therefore define subject-matter involving an inventive step also when considering D8 or D9 as the closest prior art starting point."
• "During the oral proceedings before the Board, the Board furthermore concluded that the ground for opposition under Article 100(a) and 56 EPC did prejudice maintenance of the patent (according to the now withdrawn main request) when starting from D9 as the closest prior art (for further details, see the minutes of the oral proceedings before the Board), and notably without reference to any further prior art document. Since the main request was found not to be allowable, the contested decision to reject the opposition has to be set aside."
  
• "Whether inventive step would also have been lacking when starting from D1 or D8 as being the closest prior art was not decided. The Board's decision to remit the case (see below) should not be understood such that only D9 might now be considered as the closest prior art when considering inventive step."
• "D8 and D9 were filed late in the proceedings before the opposition division. Both documents were admitted into the proceedings by the opposition division" The Board does not overrule this decision.
• Auxiliary Requests 6 to 9, filed with the appeal reply brief of the patentee as respondent, are admitted. "At the start of the oral proceedings the Chairman stated that the Board could see no reason for excluding any of the auxiliary requests and made reference to its preliminary opinion (see item 4.1), whereby in particular "convergence" of the subject-matter in the auxiliary requests and the possible lack of procedural economy resulting therefrom were not factors to be considered when applying Article 12(4) RPBA 2007. "
• The Board remits the case, noting that there are no objections under Art. 123(2) and Art. 84 for auxiliary request 6.  "The added feature common to auxiliary requests 6 to 9 (i.e. the discontinuous portions) however raises questions to which the opposition division had no opportunity to give its opinion. The appellant had additionally cited further prior art (see e.g. its submission of 4 December 2019 in relation to the sixth auxiliary request) which it considered relevant in this regard."

EPO 

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

T 0929/18 - Refusal without prior art search

Key points

• This is an appeal against a refusal decision.
• The invention is about "mobile location data sharing". The filing date is in 2009; the search report was established in 2009; the first Communication was issued in 2012; next action: summons oral proceedings in 2017, refusal decision in 2017. The Board's preliminary opinion was negative. 
• The search report did not cite any documents but rather stated that "the technical aspects identified in the present application are considered part of common general knowledge" (link). 
• The Board: "The appellant's request that a patent be granted on the basis of the main request, or one of the first to third auxiliary requests, cannot be allowed because no patent can be granted without a prior art search (Article 52(1) in combination with Article 92 and Rule 61(1)EPC)."
• The independent claims as filed indeed seem to broadly specify location sharing in a group by a mobile phone [user device] for a limited time, i.e. with instructions to share the information for a limited time and to stop sharing the information thereafter. 
• I note that in 2009, the previous version of Rule 63 applied, and Rule 137(5), second sentence, accordingly does not apply to the present application. However, as the searched claims recited technical means, such as a user device and an output interface, no declaration under R.63 is issued; instead, a search report not citing any document is established (OJ 2007, p.592; T1411/08; T1242/04 r.9.2)
• "The examining division refused the application for lack of inventive step without referring to any document. Essentially, they considered that the technical character of independent [method] claim 5 resided solely in the implementation of an administrative scheme on a notoriously known electronic data processing system"
• I note that the claims as pending at the time of the refusal decision were significantly amended compared to the claims pending at the time of the search.
• "The Board does not see a problem with the practice of referring to notorious knowledge in such cases; it has the obvious benefit of avoiding the need to prove facts that are self-evident or indisputably well known."
• "According to the Boards' jurisprudence (see e.g. T 1242/04 [...]), it is possible to raise an objection of lack of inventive step without documentary prior art if the technical features of the invention are notorious, i.e. so well known that it cannot reasonably be contested that they are prior art."
• "Claim 5 refers to mobile user devices in a "peer-to-peer" data sharing group."
• " In its communication accompanying the summons to oral proceedings, the Board had misgivings about the peer-to-peer aspect of the invention. Firstly it did not appear to be part of the inventive concept in the sense that it contributed to the problem that the application set out to solve. It also rather appeared from the way in which the application presented the invention that "peer-to-peer" was part of the background framework or at least technically irrelevant." 
• "At the oral proceedings, the appellant argued that the application did not describe the claimed aspects of peer-to-peer networking as known, and moreover that limiting the time period during which the devices shared data was particularly advantageous in mobile peer-to-peer networks."
• "The Board considers that, taken together, the features of the mobile device, peer-to-peer, group data and address arrangement and the relay or router [...] define details of an electronic communication architecture that cannot be dissected into non-technical and technical parts. "
• "Although the Board still has doubts about the significance of the peer-to-peer feature it would be unfair to judge such issues without proper prior art. This would be to put the cart before the horse by putting the substantive examination before the search (see e.g. T 1515/07 []). Indeed, a search may reveal prior art which puts the invention in a perspective that is different from what was originally set out in the application."
• " Also, there has been a lot of development in mobile communication networks since the filing date of the application. Thus, what is self-evident now might not have been so in 2009. Therefore, the Board judges that a search is necessary."

EPO 

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

T 0351/19 - (II) Not obliged to examine the dependent claims

Key points

• In this appeal against a refusal decision, " The additional features of claim 1 of the first auxiliary request are taken from original claims 5, 6 and 7."
• The Board: "Formally, the dependent claims were addressed in the contested decision[...]. However, where an independent claim falls, the Examining Division is not obliged to examine the dependent claims, and where it chooses to comment on them, such comments may often be brief and somewhat incomplete,"
• "this appears to be the case here. For example, claim 6 is dismissed as defining only "further non-technical aspects", whereas in fact it defines inter alia the use of a beacon device, an identifier of a beacon device and [....] , all of which must be considered to be technical features."
• "If the first auxiliary request were admitted into the proceedings it would require the Board either to perform, for the first time, a detailed examination of this subject-matter or to remit the case to the Examining Division for further prosecution under Article 111(1) EPC, neither of which would be a procedurally efficient course of action."
• As a comment, many other patent offices require Examiners to specifically discuss all dependent claims. Such patent offices, on the other hand, typically do not permit the filing of auxiliary requests. 
• As a further comment, the EPO requires payment of (steep) claim fees in case of more than 15 claims. However, as observed by the Board, the EPO's current practice is that "where an independent claim falls, the Examining Division is not obliged to examine the dependent claims, and where it chooses to comment on them, such comments may often be brief and somewhat incomplete". 

EPO 

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

T 2136/19 - Computer-implemented, so no medical method

Key points

• In T 0944/15 of 2021, Board 3.4.01 found a computer-implemented method to be  an unallowable medical method under Article 53(c) EPC.
• The Board: " Claim 1 of the main request is directed to a data processing method "to be executed by a computer". All the method steps recited in claim 1 are explicitly defined as being carried out at or by a digital processor of a computer. These steps are limited to receiving some data at the processor (for example, receiving image data such as data defining an x-ray image) and to determining, by the processor, some data on the basis of other data (for example, calculating directional distances on the basis of position data)." 
• " The Board acknowledges that the three-dimensional position data may well be acquired by palpating the patient's anatomy, thus by a step of a surgical nature; however, by virtue of the amendment above, the step of acquiring the position data itself is not part of the claimed method." 
• " claim 1 does not recite any method step defining or encompassing a physical activity or action that constitutes a method step for treatment of a human or animal body by surgery or therapy (G 1/07, points 3.2.5 and 4.1 of the Reasons). The same applies to the dependent claims. The claimed method is strictly limited to a purely "passive" data processing method which is carried out entirely and exclusively within a computer without causing any effect on the patient's body as a result." 
• " It is irrelevant that the claimed method may be performed after or even iteratively during a surgical intervention on the body, as described in the description. In any event, there would be no functional link between the claimed method and any effects of a surgical or therapeutic nature that would occur during this intervention. Therefore, in the absence of such a functional link, the claimed method as such does not qualify as a method for treatment of the human or animal body within the meaning of Article 53(c) EPC (with regard to the requirement of a "functional link", see G 1/07, point 4.3.2 of the Reasons)." 
• " It follows that the subject-matter of claims 1-10 of the main request does not fall under the exception to patentability of Article 53(c) EPC. The same applies to the subject-matter of independent claim 11, which relates to a computer program directed to the method of claim 1, to a program storage medium on which this program is stored and to a computer running or configured with this program." 
• The application has the title: "METHOD FOR ASSISTING THE POSITIONING OF A MEDICAL STRUCTURE ON THE BASIS OF TWO-DIMENSIONAL IMAGE DATA"
  
• To cite the Board in T 944/15: " in the light of the disclosure of the invention, the skilled person cannot conceive of the invention without the steps of initiating the monitoring [of the patient during radiation therapy] and using the result [in the therapy, e.g. stopping the radiation exposure], which create a functional link to the method of treatment.”

EPO 

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

T 0629/19 - Allegedly forced by the OD

Key points

•  "According to the minutes of the oral proceedings before the Opposition Division [] the opponent withdrew a previously raised objection of lack of inventive step in view of the combination of D3a and D26. [...] "
• "The opponent's argument that it was forced by the Opposition Division to withdraw the objection is an unsubstantiated assertion. The opponent could and should have maintained the objection if it had wished to obtain an appealable decision on the matter. For these reasons, in accordance with Article 12(4) RPBA 2007, the Board does not admit the objection on the basis of D3a in combination with D26 into the appeal proceedings."

EPO 

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

T 2146/19 - Rule 137(5), second sentence and Euro-PCT

Key points

• The Board sets aside a refusal decision based on Rule 137(5) EPC for lack of sufficient reasoning by the Examining Division.
• The Examining Division did not state whether the first or second sentence of Rule 137(5) was the legal basis. The Board assumes that it was the second sentence, which states that "Nor may [the amended claims] relate to subject-matter not searched in accordance with Rule 62a or Rule 63."
• The case at hand is a Euro-PCT application with the EPO acting as ISA. The EPO as ISA had limited the search under Article 17(2)(a) and (b) PCT ("the description, the claims, or the drawings, fail to comply with the prescribed requirements to such an extent that a meaningful search could not be carried out").
• The applicant argues that a limitation under Article 17(2)(b) PCT is not a limitation under Rule 62a or Rule 63 EPC.
• The Board: "This question may require further discussion, but can remain open for the present case."
• The Board: "Even if the examining division were to be convinced that a procedure corresponding to Rule 62a/63 EPC had been carried out during the international phase, this, in any case, does not release the examining division from substantiating this view in the decision and from replying to the arguments put forward by the applicant. In addition, the decision should also have explained and justified the deficiencies mentioned in Rules 62a(1)/63(1) EPC that make a meaningful search impossible."
• The refusal decision did not identify these deficiencies and the decision is set aside. The case is remitted.
• As a comment, there are hence no ratio decidendi about how Rule 137(5), second sentence, works for Euro-PCT applications. It seems the literature is also silent about this.
• Addendum 07.02.203: GL 2023 C-IV.7.3 clarifies that in case of  subject-matter not searched by the EPO as ISA, "Rule 137(5), second sentence, cannot be invoked in that context"
• Addendum 29.12.2022: R.164(3) appears to imply that R.137(5)(s.2) applies in case of a search or search incident under Rule 164(1) or (2). Moreover, Rule 164(2) refers to an invention that "was not searched by the European Patent Office in its capacity as [(S)ISA]" but does not state explicitly that the reason for the invention not being searched must be a lack of unity of invention under Art.17(3) PCT. The wording of R.164(2) seems to permit its application in the case of a non-search or partial search under Article 17(2) PCT.

EPO 

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

T 0464/20 - Should contest witness testimony in first instance

Key points

• The OD revoked the patent as not novel over the alleged public prior use "toasted deli sandwich bag". The patentee tries to reverse the OD's findings of fact. The evidence comprises a sample of the bag, a witness declaration, and the (minutes) of the witness hearing before the OD. Finally, there is a document "Confirmation from Keystone Distribution to Mr. Longstaffe about monthly deliveries of the "WRIN 02135042 TDS Bag" to McDonald's, Linwood".
• The following quotations of the Board use machine translation.
• The alleged fact is that " the bags were supplied by Smith Anderson Packaging Limited to Keystone Distribution UK Ltd. and from Keystone to McDonalds" (before the priority date)
• The patentee tries to contest the credibility of the witness Mr. Longstaffe.
• "The opposition division saw no reason to doubt the credibility of the witness Longstaffe because he had denied the question of economic or personal interest. Mr Longstaffe is the managing director of Smith Anderson Packaging Limited, which manufactured the prior-use bags. However, it does not follow from this that Mr Longstaffe had a personal economic interest in the outcome of the opposition proceedings"
• 
  
• "The appellant [patentee] argued that the opposition division's assessment was unjustified, that the credibility of the witness Longstaffe was not objectionable because, contrary to his testimony (minutes of the hearing of witnesses, page 1: "No, I don't believe so .") he had a special personal and economic interest in the outcome of the proceedings. This is shown by the fact that Mr. Longstaffe's statements that McDonald's was the largest customer of the Smith Anderson company, which Mr. Longstaffe was the managing director of (witness hearing record, page 12, last paragraph: "Almost 50% of our business is with McDonald's") [...] If the patent in suit is maintained, the Smith Anderson Group faces a possible infringement lawsuit. "
• The Board: " The Board notes that the witness Longstaffe initially denied the question of any economic or personal interest in the outcome of the opposition proceedings. However, his statements did not completely rule out such an interest. However, the board is convinced that the discrepancies highlighted by the appellant do not call into question the credibility of the witness, so that the reliability of the entire testimony should be called into question and should not be taken into account as a whole." 

• The patentee argues that because the alleged prior use involved 72,000 field test bags, more written evidence should have been filed.
• The Board, in translation: " The evidence of the testimony thus has the same value as any other evidence referred to in Article 117(1) EPC. The probative value of the testimony of the witness Longstaffe is therefore not devalued by a missing document or a missing piece of evidence, contrary to the view of the [appellant]." 
• As a comment, based on the machine translation, I understand that the patentee complains about the lack of supporting written evidence; not about any discrepancy between an actually filed document and the testimony. In my view, that has little to do with Article 117(1) EPC not prescribing a hierarchy of evidence.
• The Board does not admit an objection against the evidence. "1 In the statement of grounds of appeal, the appellant stated that doubts arose as to the credibility of Mr. Longstaffe's statements, since he was unable to give an exact time when he was appointed CEO in 2007 when questioning witnesses. On the other hand, he was able to determine delivery dates and quantities for a single product from Smith Anderson's entire product portfolio in 2007 to the day (reasons of appeal, point III.4 b)).
  In this respect, the appellant formally criticized the opposition division's assessment of the evidence, but in the end, it aimed for a factual statement by the witness. The board agrees with the respondent (Response of Appeal, points 3 to 5) that the contested decision was not based on this objection. Thus, the admission of this submission is at the discretion of the Board under Article 12 (4) RPBA 2020.
  The Board agrees with the Respondent that the Appellant could and should have asked the witness during the taking of evidence by hearing the witness why he could not remember the exact day when he was appointed CEO if that question had been relevant to her. This objection by the appellant relates to facts that could have been clearly clarified in the opposition proceedings as a suspicion during the taking of evidence by questioning the witness. The objection could also not be followed up without further ado, since the witness would have had to be questioned or would have to be questioned.
  Even during the subsequent discussion of the result of the taking of evidence in the oral hearing before the opposition division, the credibility of the witness was not called into question on the basis of this fact.
  Therefore, the Board sees no reason, in exercising its discretion under Article 12 (4) RPBA 2020, to consider this objection in the proceedings, as requested by the Respondent."
• As a comment,  this decision suggests that you must raise any and all objections against witness testimony during the first instance proceedings. Alternatively, a party may allege a violation of the right to be heard, i.e. allege that it was given an insufficient opportunity to comment on the testimony. In the case at hand, the witness hearing took place on the same day as the oral proceedings before the OD. 
  " The Board is of the opinion that the testimony as a whole is to be regarded as very clear and detailed with regard to the issues relevant to the decision and that it provides a consistent and complete picture with regard to the public prior use to be proven. The opposition division did not err in linking the assessment of the evidence to its conviction. The alleged inconsistencies and lack of connection cited by the complainant are not considered sufficient to undermine the probative value of the witness testimony.

• The board is thus not convinced that the opposition division's assessment of the evidence was incorrect. Therefore, the board shares the opinion of the opposition division in the decision under appeal that on the basis of the witness statements, D1, D1.3 and D1.6, the alleged public prior use of the "toasted deli sandwich" bag is sufficiently proven.

• Consequently, it forms part of the state of the art under Article 54(2) EPC with the features listed in the minutes of the taking of evidence by visual inspection of D1." 

• 
  

EPO 

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

T 0882/17 - Reformatio in peius and admissibility of opposition

Key points

•  "In their reply to the notice of opposition, the proprietors had submitted that there were doubts as to the identity of the opponent and that the opposition was thus inadmissible. The opponent had then filed a request for correction of the opponent's name under Rule 139 EPC. With a communication pursuant to Article 113(1) EPC dated 15 April 2016, the Opposition Division informed the parties that "the request for a correction of the name of the opponent under Rule 139 EPC dated 25.03.15 is hereby accepted and the notice of opposition is admissible", and gave reasons for this decision. The opponent's name was then corrected. In its [interlocutory decision to maintain the patent in amended form], the Opposition Division did not refer to the issue of the admissibility of the opposition." 
• The opponent appeals (only). "The respondents (proprietors) requested that the appeal be found inadmissible, that the opposition be found inadmissible, or that the appeal be dismissed." 
• The Board also states that: "The respondents requested that the opposition be found inadmissible and the patent be maintained as granted." 
• As a comment, in the particular context of the present case, there is a subtle difference between finding the opposition to be inadmissible and maintaining the patent as granted because rejecting the appeal of the opponent causes the patent to be maintained in amended form.
• 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 Board: "if the Board considered the opposition inadmissible, set aside the decision under appeal and maintained the patent as granted, the solely-appealing opponent would be in a worse position than if it had not appealed. Thus the question arises whether the principle of the prohibition of reformatio in peius prohibits such a result." 
• The patentee argues that "Decision G 1/99 should be applied by analogy to allow for an exception to the principle of the prohibition of reformatio in peius." 
• The Board: "The exception recognised in G 1/99 is limited to claim amendments made during the appeal proceedings which extend the scope of the patent in comparison to the version maintained by the Opposition Division. Such broadening claim amendments are only permitted under very strict conditions.
• The Board: " Clearly, invoking the inadmissibility of the opposition has nothing to do with a claim amendment made in reaction to an objection which has been submitted by the opponent or the Board during the appeal proceedings within the meaning of G 1/99. Generally speaking, invoking the inadmissibility of the opposition is not the only possible way for a patent proprietor to avoid revocation of a patent due to an opponent's appeal either. G 1/99 thus concerns an entirely different situation from the present case and can therefore, contrary to the respondents' view, not be applied by analogy." 
• "it thus seems that a patent proprietor who did not appeal an interlocutory decision by the Opposition Division [to maintain the patent in amended form] is barred from raising the inadmissibility of the opposition as a mere respondent in order to achieve the maintenance of the patent as granted. If the opponent is the sole appellant, G 9/92, G 4/92 and G 1/99 do not seem to allow account to be taken of the inadmissibility of the opposition in a way which leads to this result." 
• " This matter has, however, been assessed differently in several decisions by technical boards of appeal. The leading decision in this regard is T 1178/04 (OJ 2/2008, 80). It is stated therein that the admissibility of the opposition is an indispensable procedural requirement which must be examined ex officio in the appeal proceedings and which is not subject to the principle of the prohibition of reformatio in peius (Reasons 18-36). " 
• T 1178/04 more precisely concerned the purported transfer of an opposition, not the admissibility of the opposition. Nevertheless, the Board was clear in that decision that "the principle of no reformatio in peius is of no application" in both situations.
• The entrusted Board in that decision found the purported transfer of the opposition to be invalid and set aside the decision under appeal entirely. The Board observed that the OD, after the remittal, would not be bound by the previous decision.
•  " The Board in T 1178/04, Reasons 19, [...]  stated that, after remittal and rehearing of the case, the opponent "may find itself in a worse position than if it had not appealed".
• T 1178/04 adds that admissibility of the opposition (instead of transfer opposition) was reviewed in a few earlier decisions, even though the opponent was the only appellant: "See, for example, Decisions T 199/92, T 960/95 and T 1180/97 (all unpublished in the OJ). It clearly never occurred to the parties or the respective Boards in these cases even to raise the issue of no reformatio in peius." In all those cases, the oppositions were considered to be admissible.
   
• " The present Board disagrees with the approach in T 1178/04 for the following reasons:" 
• " As the Board in T 1178/04 put much emphasis on the origin of the principle of the prohibition of reformatio in peius as applied in the German legal system, the present Board considers it appropriate to address this line of argument in detail." 
• An extensive discussion of German case law follows in the decision.
• " If anything, the opposite can be deduced from German case law, namely that what have been termed indispensable procedural requirements are not generally exempt from this principle. The Board considers the more recent case law of the Federal Court of Justice on this matter both more authoritative (see J 14/19, Reasons 6.10) and more convincing than the legal literature referred to in T 1178/04." 
• J 14/19 r.6.10 is indeed about the status of legal commentaries.
• " Numerous decisions of the Boards of Appeal have stated that the admissibility of the opposition is an indispensable procedural requirement (T 646/13, Reasons 1.2: "established case law"). However, even if it is assumed that the admissibility of the opposition qualifies as an indispensable procedural requirement which can and must be examined at all stages of the appeal proceedings ex officio (i.e. even if none of the parties raises an objection in this regard), it does not follow from this qualification that the principle of the prohibition of reformatio in peius would not be applicable. [] In the Board's view, the latter does in particular not follow from G 3/97 and G 4/97, Reasons 6. " 
• " Moreover, in G 7/91 and G 8/91 the Enlarged Board held that the appeal proceedings are regarded as terminated by virtue of the withdrawal of the sole appellant's appeal in so far as the substantive issues settled by the contested decision at first instance are concerned (Reasons 12)." [...] "if the admissibility of the opposition were not subject to the principle of the prohibition of reformatio in peius, an opponent as the sole appellant against an interlocutory decision could still withdraw its appeal whenever this objection is considered successful by a board, for example during the oral proceedings before a board. This would, firstly, be at odds with the statement in G 9/92 and G 4/93, Reasons 12, that "the concept that it should be possible for a sole appellant to be compelled as a result of opposing requests to withdraw its appeal" is absent from the EPC. Secondly, the appeal proceedings would then be terminated and the Board could anyway no longer order maintenance of the patent as granted due to the inadmissibility of the opposition. In other words, the Board could then no longer do anything about the inadmissibility of the opposition, and the interlocutory decision under appeal, lacking this procedural requirement, would become final. Both of these considerations speak against the inadmissibility of the opposition not being subject to the principle of the prohibition of reformatio in peius."
• I note that it is possible for a Board to announce a decision and then immediately close the oral proceedings, without announcing preceding conclusions. So in practice, it is not always true that: "an opponent as the sole appellant against an interlocutory decision could still withdraw its appeal whenever this objection is considered successful by a board". 
• " As stated before, if the opponent is the sole appellant against an interlocutory decision maintaining a patent in amended form, the Board is prohibited from ordering maintenance of the patent as granted due to the inadmissibility of the opposition. This does, however, not answer the question of whether the Board then may not assess the admissibility of the opposition at all, whether it may only assess it in the context of the admissibility of the opponent's appeal, or whether that assessment may only be carried out in the context of the allowability of the appeal. None of these options would contravene the principle of the prohibition of reformatio in peius.' 
• " the admissibility of an opposition is to be assessed in the context of the allowability of the appeal. [...] Under this approach, an opponent's (admissible) appeal against the interlocutory decision of an Opposition Division maintaining the patent in amended form is dismissed as unallowable if the Board finds the opposition inadmissible." 
• Turning to the admissibility of the opposition: "In conclusion, the Opposition Division's decision to correct the opponent's name under Rule 139 EPC was correct, as well as its decision to consider the opposition admissible. The identity of the opponent could be established on the basis of the information in the notice of opposition." 
• The claims at issue are found to be allowable.
• The appeal is dismissed.

EPO 

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

T 0071/21 - (No) correction of payment method

Key points

• The decision was published already 14.06.2022.
• The opponent tries to pay the appeal fee with using automatic debiting. However, automatic debiting is not available for opponents; this is expressly excluded in the ADA.
• I guess because the EPO's computer systems are set up to deduct fees from the deposit account associated with the application number, this being the applicant/patentee (the EPO systems seem to use the application number even for granted patents).
• Apparently, Form 1038E permits indicating automatic debiting as the payment method, though the opponent had to identify itself as the applicant.
• The Board in machine translation: " However, the content of Form 1038, which was created electronically on January 11, 2021, nevertheless shows the appellant's order to set up an automatic debiting procedure from the appellant's current account and also states the correct number of the patent in suit under "Applicant's or representative's reference". This initially gives the impression that the EPO's online payment system supports or at least allows the filing of non-system-compliant forms. In fact, however, the form shows that this process, which the online payment system itself does not allow for opponents, could have been brought about by the appellant stating the number of the patent in suit and falsely presenting itself to the system as the "applicant" of the patent in suit."
• The Board rejects the plea based on the protection of legitimate expectations, i.e. the rule that the EPO should warn in case of obvious mistakes if there is still sufficient time for a party to correct them. The Board finds that the error was not evident. " This is because the form does not mention a fee at all, nor has the appeal fee been incorrectly quantified (in fact, none at all), nor has a declaration been made which in its content of the declaration was clearly aimed at debiting an appeal fee from the current account." 
• The Board does not permit a correction under Rule 139 of Form 1038E. " the board comes to the conclusion that a correction of the selected illegal payment method under Rule 139 EPC in the sense of these criteria is not possible in the present case."
  " the appellant's declarations regarding the payment of the appeal fee on Form 1038 (establishment of an automatic debiting procedure) must be checked for a deviation from the underlying true intention regarding the selection of the payment method, and not for a deviation from the general intention of "lodging an effective complaint". "
• " The Board comes to the conclusion that, from an objective point of view, both the notice of appeal and Form 1038, in view of the wording chosen, clearly and unambiguously intend the appellant to pay the appeal fee by means of an automatic debit order or by way of an automatic debit procedure to be paid. The fact that the complainant was not entitled to this debiting procedure as a payment method and that she therefore chose an unsuitable method has no influence on the objectively recognizable clarity of this original intention." .
• As a comment, note that this seems to indicate that a correction of the indication of the payment method is not a priori excluded. 
• Re-establishment is, of course, not available.
• The appeal is dismissed.

EPO 

The link to the decision is provided after the jump.

T 0351/19 - The Comvik appraoch summarized

Key points

•  The Baord, in the headnote: " According to the Comvik approach the non-technical features of a claim may be incorporated into a goal to be achieved in a non-technical field. Subsequently, the approach invokes what might be described as the legal fiction that this goal, including the claimed non-technical features, would be presented to the skilled person, who would be charged with the task of technically implementing a solution which would achieve the stated goal. The question whether the skilled person would "arrive" at the non-technical features does not therefore arise, as these features have been made known to the skilled person, as part of the goal to be achieved. The relevant question for the assessment of inventive step is whether it would be obvious for the skilled person to implement a technical solution corresponding to the claimed subject-matter".
• The headnote seems to provide a useful and concise summary of the Comvik approach. 
  
  
  

EPO 

The link to the decision is provided after the jump.

T 1215/20 - 3GPP document

Key points

• This is an examination appeal. The Board seems to remit the case to the Examining Division to decide again on whether D1 was public at the relevant date or not.
• D1 is " 3GPP TSG RAN WG2 #64, R2-086821, November 2008." The priority date is in February 2009.
• The applicant argues that: " the meeting on 10 to 14 November 2008 was an internal meeting of the 3GPP cannot be considered public as only participants of the 3GPP standardization committee were attending" 
• The Board: " the decision under appeal does not address the applicant's arguments in this respect (and there was also no communication issued in that regard). It follows that the examining division did not respect the appellant's right to be heard as to the matter of public availability of document D1." 
• Turning to the merits of the case, the Board observes the following: " the examining division could and should have explained how it assessed the public availability of document D1. The board takes note of the specific indications compiled in the valid version of the Guidelines for Examination (cf. Guidelines G-IV, 7.6 "Standards and standard preparatory documents" in the applicable version of November 2019), and the available case law on the public availability of technical standards, such as T 1469/10, Reasons 2.3 (relating to 3GPP standards: "... the respective dates ('timestamps') indicated on the 3GPP document lists reliably correspond to the dates on which a certain document was uploaded to the 3GPP file server and thus was available on the server to be accessed by the public ..."), or e.g. T 2239/15 (see Catchword). Besides, if the examining division retrieved the 3GPP document from one of the EPO's in-house databases mentioned in the Guidelines, rather than from the Internet, such databases would usually record the specific date in which the document was downloaded from a 3GPP server." 
• To cite the Guidelines: " While documents in the EPO's in-house databases are regarded as being available to the public" - this must probably be understood in the context of the paragraph.

EPO 

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