T 0702/20 - A neural network is (as such) a non-technical feature

Key points

• Board 3.5.06 in the headnote: "A neural network defines a class of mathematical functions which, as such, is excluded matter. As for other "non-technical" matter, it can therefore only be considered for the assessment of inventive step when used to solve a technical problem, e.g. when trained with specific data for a specific technical task."
• Obviously, this headnote concerns computer-implemented neural networks. Claim 1 is reproduced below. It defines a software product. 
• Inventive step is the critical issue. 
• The Board, on the Comvik approach: "following the so-called Comvik approach (T 641/00), it is made sure that only features contributing to the technical character of the invention are considered for the assessment of, in particular, inventive step (cf. G 1/19, reasons 30 (F), cited from T 154/04). In particular, "non-technical" features, understood in this context as features which, on their own, would fall within a field excluded from patentability Article 52(2) EPC (see, e.g., T 1294/16, reasons 35), can only be considered for this assessment if they contribute to solving a technical problem (see also T 1924/17, reasons 15 to 19)."
• As an aside, the Board recalls that "Even technical features may be ignored with regard to inventive step if they do not contribute towards solving a technical problem (see G 1/19, reasons 33)."
• The claimed neural network has a new structure because the claim recites that "the hierarchical neural network [is] formed by loose couplings between the nodes in accordance with a sparse parity-check matrix of a [low-density parity-check code]".
• The Board: "A neural network is composed of nodes, called "neu­rons", linked to each other by edges transmitting the output of one neuron to the input of another. Each neu­ron implements a parameterized mathematical function, typically a weighted addition of its inputs followed by a nonlinear operator (e.g. a threshold, [...]); the parameters are called weights."
• "In principle, it is possible, if cumbersome, to replace the inputs to each neuron by the mathematical functions implemented by the nodes of the previous layer and write down the mathematical function that the network implements as a whole, i.e. the output as a function of the input. "
• The Board: "The proposed network structure [...] defines a class of mathematical functions (see above points 7 and 8), which, as such, is excluded matter. As for other "non-technical" matter, it can therefore only be considered for the assessment of inventive step when used to solve a technical problem".
  
  
• "The Appellant argued that the proposed modification in the neural network structure, in comparison with stan­dard fully-connected networks, would reduce the amount of resources required, in particular storage, and that this should be recognized as a technical effect, following G 1/19, reasons 85."
• "The Board notes that, while the storage and computatio­nal requirements are indeed reduced in comparison with the fully-connected network, this does not in and by itself translate to a technical effect, for the simple reason that the modified network is different and will not learn in the same way. So it requires less storage, but it does not do the same thing. For instance, a one-neuron neural network requires the least storage, but it will not be able to learn any complex data relation­ship. The proposed comparison is therefore incomplete, as it only focuses on the computational requirements, and insufficient to establish a technical effect."
• The Board here seems to imply that reduced storage and computational requirements without reduced performance would be valid technical effects and would cause the claim feature of "loose couplings between the nodes in accordance with a sparse parity-check matrix" to be considered for inventive step.
• The Board's reasoning that a technical effect can only be acknowledged if an advantage is obtained without simultaneous disadvantages seems unusual to me. Cf., e.g, GL G-VII, 10.1: "if [a] worsening is accompanied by an unexpected technical advantage, an inventive step might be present".
• The Board concludes that "The claim as a whole specifies abstract computer-implemented mathematical operations on unspecified data, namely that of defining a class of approximating functions (the network with its structure), solving a (complex) system of (non-linear) equations to obtain the parameters of the functions (the learning of the weights), and using it to compute outputs for new inputs. Its subject matter cannot be said to solve any technical problem, and thus it does not go beyond a mathematical method, in the sense of Article 52(2) EPC, implemented on a computer."
• "For the sake of completeness, the Board also notes the following: even if, as the Appellant argued, general methods for machine learning, and neural networks in particular, were to be considered as matter not excluded under Article 52(2) EPC, it would remain questionable whether the proposed loose connectivity scheme actually provides a benefit beyond the mere reduction of storage requirements, for instance a "good" trade-off between computational requirements and learning capability."
• This issue ( 'remains questionable') seems highly fact-specific and will likely turn on the evidence. There may also be an aspect of 'plausibility'.
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• The Board: "whether a claimed invention is patentable [i.e., inventive] or not can often be decided by focusing on the tech­ni­cal problems it solves, and by means of which combina­tion of features, be they technical or not, and by answering the question of whether this combination of features is obvious"
• This observation is very interesting but sheds a different light on the headnote: all (distinguishing) features can only be considered for the assessment of inventive step when used to solve a technical problem. This observation also seems to shed a different light on the Board's reasoning, cited above, starting with "even if, as the Appellant argued ...". Whether or not general methods for machine learning, and neural networks in particular, are to be considered as matter excluded under Article 52(2) EPC, is irrelevant, the only question is whether the problem of "reduction of storage requirements" (possibly: while maintaining good learning capability)  is a technical problem and whether the claimed solution solves that problem and does so in an obvious way. 
  
  
• As a comment, I don't know if there is a clear hint or teaching in the prior art to reduce the memory and computational requirements of a neural network by "loose couplings between the nodes in accordance with a sparse parity-check matrix of a [low-density parity-check code]". According to Wikipedia, "in information theory, a low-density parity-check (LDPC) code is a linear error correcting code, a method of transmitting a message over a noisy transmission channel", which does not immediately seems to pertain to neural networks (duly noting that IT is not my technical field). 

Claim 1 of the main request defines:

A hierarchical neural network apparatus (1) implemented on a computer comprising

a weight learning unit (20) to learn weights between a plurality of nodes in a hierarchical neural network, the hierarchical neural network being formed by loose couplings between the nodes in accordance with a sparse parity-check matrix of an error correcting code, wherein the error correcting code is a LDPC code, spatially-coupled code or pseudo-cyclic code, and comprising an input layer, intermediate layer and output layer, each of the layers comprising nodes; and

a discriminating processor (21) to solve a classification problem or a regression problem using the hierarchical neural network whose weights between the nodes coupled are updated by weight values learned by the weight learning unit (20)

or comprising

a weight pre-learning unit (22) to learn weights between a plurality of nodes in a deep neural network, the deep neural network being formed by loose couplings between the nodes in accordance with a sparse parity-check matrix of an error correcting code, wherein the error correcting code is a LDPC code, spatially-coupled code or pseudo-cyclic code, and comprising an input layer, a plurality of intermediate layers and an output layer, each of the layers comprising nodes; and

a discriminating processor (21) to solve a classification problem or a regression problem using the deep neural network whose weights between the nodes coupled are updated by weight values learned by the weight pre-learning unit (22)

and

a weight adjuster (23) to perform supervised learning to adjust the weights learned by the weight pre-learning unit (22) by supervised learning; and wherein

the weights are learned by the weight pre-learning unit (22) by performing unsupervised learning; and

the weights between the nodes coupled are updated by weight values adjusted by the weight adjuster (23).

EPO 

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

J 0013/19 - Appeal fee and further processing under Rule 70a(2)

Key points

• The EPO's practice is that if you do not file a timely response under Rule 70a(2) EPC, you have to pay two further processing fees, namely also for the missing indication of the intention to proceed further under Rule 70(2).
• A European patent attorney decided to bring the matter to the Boards. The Board's preliminary opinion was to confirm established practice, based on J 26/95. 
• The attorney started by requesting a decision under Rule 112(2) in reply to the Notice of loss of rights and, on an auxiliary basis,  requested a refund of one of the two paid further processing fees.
• The Examining Division refused these requests with a separately appealable interlocutory decision taken by a formalities officer on behalf of the Examining Division.
• The applicant then appeals. The applicant however pays the appeal fee at the reduced rate, though it is not entitled to the reduction. 
• The appellant did not request a correction of the debit order.
• The appeal is rejected as deemed to not have been filed.
• The appeal fee is refunded.
• The applicant hence got a preliminary opinion of the Board on the matter for free, in the sense of incurring no official fees. 
• A further interesting aspect is that the grant proceedings continued in parallel with the appeal because the appeal concerns only the refund of a fee. By the same token, when the application was deemed to be withdrawn, the appeal continued. 

EPO 

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

T 1473/19 - (II) Art. 69 for Art. 123(2) ?

Key points

• The Board in this decision departs from established case law and concludes that:  "Article 69 EPC in conjunction with Article 1 of the Protocol thereto can and should be relied on when interpreting claims and determining the claimed subject-matter in proceedings before the EPO, including for the purpose of assessing compliance with Article 123(2) EPC"
• See e.g. T 1646/12, "The board stressed that Art. 69(1) EPC concerned only the extent of protection, which in turn was relevant only for the purposes of Art. 123(3) EPC and in national infringement proceedings. A general requirement that claims be interpreted with the help of the description could not be derived from Art. 69(1) EPC." (CLBA II.A.6.3.2)
• At the outset, it must be noted that the Protocol, as amended by the EPC 2000, includes Article 2, which states that "For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims." However, according to established case law, a disclosure in the prior art of an equivalent does not anticipate a claim (is not novelty-destroying)*. The headnote of the present decision accordingly refers to Article 1 of the Protocol only.
• * - i.e. the argument that a claim which specifies "A" is not novel because the prior art discloses A* and A* is an equivalent of A and is hence included under the scope of protection of the claim under Art. 2 Protocol is invalid under established case law. 
• The present Board: "There is, however, also a significant body of case law according to which the description and the drawings should only be used to interpret claim features which are ambiguous; unambiguous terms in the claims should be interpreted without taking the description and the drawings into account (see, for example, T 197/10, Reasons 2.3 and T 1514/14, Reasons 12). It has also been stated that, for the purposes of assessing compliance with Article 123(2) EPC, the description and the drawings should not even be consulted in the case of ambiguous claim features (see T 1127/16, to which the appellant referred, Reasons 2.6.1)."
• "There are different views in the case law of the technical boards of appeal on the extent to which Article 69 EPC and the Protocol on the Interpretation of Article 69 EPC ("the Protocol") should be applied when interpreting patent claims. While these provisions have in some decisions been considered to be generally applicable, other decisions restrict their application in proceedings before the EPO to determining the extent of protection under Article 123(3) EPC [].  A leading decision in favour of the latter approach is T 1279/04."
• "In the present Board's view, Article 69 EPC and the Protocol are the only provisions in the EPC containing rules for the interpretation of patent claims. Article 84, first sentence, EPC does not contain any such rules. Rather, the rationale underlying both the specific requirements under Article 84, second sentence, EPC []  and the general requirement under Article 84, first sentence, EPC []  is to enable a clear delimitation of the extent of protection. In other words, claims must satisfy the requirements under Article 84 EPC so that they can fulfil their purpose of enabling the protection conferred by the patent to be determined under Article 69 EPC (cf. G 2/88, Reasons 2.5). Article 84 EPC, however, says nothing about how to interpret patent claims. At most, it defines the standard to be applied when assessing clarity."
• " the main rationale underlying T 1279/04, Reasons 3, seems to be that there is a difference between the subject-matter of a patent claim, which is determined in proceedings before the EPO and assessed under Articles 54(2), 56, 83 and 123(2) EPC, and its extent of protection, which is assessed under Article 123(3) EPC and in national infringement proceedings. While, as explained hereafter, the present Board acknowledges a difference, it does not consider this difference a convincing reason not to apply Article 69 EPC and the Protocol when determining the claimed subject-matter in proceedings before the EPO."
• "the Board notes that determining a patent claim's subject matter, i.e. establishing the meaning of the claimed features, is not distinguishable from interpreting that claim and its features. Understood this way, it is always necessary to interpret a patent claim in the proceedings before the EPO."
• This observation seems entirely correct.
• "The extent of protection of a patent claim can be understood as the (infinite) set of embodiments which infringe that claim. This set can conceptually be divided into two distinct subsets, the first formed by embodiments which infringe the claim by realising the elements specified in the claim (i.e. the claimed features), and the second formed by embodiments which infringe the claim by equivalent means (i.e., in the words of Article 2 of the Protocol, by an element equivalent to an element specified in the claims). The first subset of a patent claim's extent of protection is directly defined by its subject-matter."
• "When assessing whether an embodiment falls under the first subset of a patent claim's extent of protection, it is assessed whether that embodiment can be subsumed under the claimed features. To this end, the claimed features must be interpreted - and the claimed subject-matter thereby determined - in accordance with the rule on how "to interpret the claims" given in Article 69(1) EPC in conjunction with Article 1 of the Protocol. Interpreting the claimed features for the purposes of establishing the first part of a patent claim's extent of protection is thus not different from interpreting and determining the claimed subject-matter for the purposes of assessing compliance with Articles 54, 56, 83 and 123(2) EPC. Accordingly, national courts apply the rules for the interpretation of claims in Article 69 EPC and the Protocol [*] in both infringement and revocation proceedings as a matter of course."
• As a comment, it is not clear to me if the Board here (*) also meant to refer to Article 2 Protocol.
• " Assessing whether a certain embodiment falls under the second part of a patent claim's extent of protection, i.e. the part concerning equivalents under Article 69(1) EPC in conjunction with Article 2 of the Protocol, is a second step in the determination of the extent of protection which follows claim interpretation. It mainly consists in assessing whether a feature of an allegedly infringing embodiment is equivalent to an element specified in the claims, i.e. to one of the features defining the claimed subject-matter. As the "invention" in Articles 54, 56 and 83 EPC (see T 92/21, Reasons 3.2, last sentence) and, with regard to claim amendments, also the "subject-matter" under Article 123(2) EPC (see G 2/10, Reasons 4.5.2, last paragraph) refer to the claimed subject-matter only, equivalents are not to be taken into account when compliance with these provisions is assessed."
• " Under Article 123(3) EPC too, it is mainly "the technical subject-matter of the claims" before and after the amendment which is considered (see G 2/88, Reasons 4.1), although equivalents may theoretically play a role under this provision as it refers to the extent of protection (see T 1360/13, Reasons 4.13; see, however, also T 81/03, Reasons 3.7). In conclusion, equivalents are the part of the extent of protection which is indeed primarily relevant for infringement proceedings."
• The Board continues with further explanations regarding the role of the description and drawings when interpreting the claims. I can recommend reading the entire reasoning of the Board.
  
  
• In the course of the appeal, "an expert linguistic opinion on the wording of claim 1 as granted" was filed. The Board: "[in] view of the parties' various submissions on linguistic matters in the present case, the Board further points out that claim interpretation is overall a question of law which must as such ultimately be answered by the deciding body, and not by linguistic or technical experts. It does, however, involve the appraisal of linguistic and technical facts (see T 1776/18, Reasons 4.5.5), which may be supported by evidence submitted by the parties."
• Note 10.03.2023: emphasis added. The reference to the "appraisal of ... technical facts " also means that arguments regarding claim interpretations based on technical factual allegations can be inadmissible if the factual allegations are submitted late under Art. 114. However, arguments pertaining to the claim interpretation, which are not based on new (linguistic or) technical facts, are arguably purely legal arguments in view of the Board's remark and hence arguably always admissible. 
• 
  
• No role for translated claims
  "In line with Article 70(1) EPC a patent claim must be interpreted in its authentic text, which is the text of the patent in the language of the proceedings. Moreover, the material which can and must be taken into account for claim interpretation under Article 69 EPC - in addition to the claims themselves (in their authentic text) - is limited to the description and the drawings. Therefore, in the present case the German and French translations of claim 1 cannot be relied upon for its interpretation. At most, it is possible to deduce from these translations how the translators responsible for them understood the English version of claim 1."
   

EPO 

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

T 1473/19 - (I) Killed by a lacking comma

Key points

• The currently prevailing view is that the EPO applies Article 69 only in the context of Article 123(3).
•  In the case at hand, the Board has to decide on whether the following feature has basis under Article 123(2): "said body having a free inner bore holding a capacitive data link". The opponent/appellant argues that this feature means that the body has a free inner bore and this bore holds a capacitive data link (in which case the feature lacks basis). Thus interpretation is referred to as interpretation (a).
  The patentee argues that it means that "the body has a free inner bore and, additionally, the body holds a capacitive data link" (interpretation (b)). So the question is, what is holding the capacitive data liking, the inner bore or the body?
• The Board: "Grammatically, the contentious expression is constructed as a series of noun groups ("said body", "a free inner bore", "a capacitive data link") separated by present participles ("having", "holding"). In the absence of any comma and any coordinating conjunction separating the various terms, the person skilled in the art, on a plain reading of this expression, would simply consider the subject governing each present participle to be the noun group immediately preceding it, following the usual rule that modifiers are generally placed next to the word they modify. In this way, the person skilled in the art would arrive at the construction that the body has a free inner bore and that this bore holds a capacitive data link: hence, interpretation (a) defended by the appellant [opponent]." 
• " Interpretation (a) is technically sensible and plausible. " 
• " Referring to Article 69 EPC, the respondent [patentee] argued that the description had to be used to interpret the claims. Reading claim 1 in the context of the description, in which a free inner bore in the rotary joint body is only disclosed for accommodating a patient and in which it is the body which holds a capacitive data link (paragraph [0024]), the person skilled in the art would, according to the respondent, necessarily reject interpretation (a) and instead adopt interpretation (b)." 
• This raises the question if Article 69 EPC can be used under Article 123(2) EPC.
• The Board, after an extensive legal analysis, concludes that  "the description and the drawings should indeed be taken into account when interpreting claim 1".
• I will summarize the Board's legal analysis in a separate post.
• However, this legal analysis is obiter because the Board "disagrees with the [patentee's] conclusion that doing so would lead to rejecting interpretation (a) [invoked by the opponent] and adopting interpretation (b) instead". 
• "The mere fact that the contested claim feature as understood in accordance with interpretation (a) is not disclosed in the description or drawings does not speak against this interpretation. Neither the description nor the drawings exclude the presence of a (further) capacitive data link positioned in accordance with interpretation (a)." 
• "Moreover, there is no principle of claim interpretation according to which a claim should be interpreted in a manner which makes it compliant with Article 123(2) EPC. 
• "Furthermore, contrary to the description and the drawings, the application as filed is not referred to in Article 69(1), second sentence, EPC either." 
• As a comment, this could be an indication that Article 69 is not directed to the assessment under Article 123(2).
• "The mere mention, by way of example, of an embodiment which comprises a capacitive data link not arranged in accordance with interpretation (a) is not a sufficient reason to apply interpretation (b) instead of interpretation (a)." 
• "It is common ground that the description as filed does not disclose a rotating joint body having a free inner bore, wherein this bore holds a capacitive data link." 
• "Consequently, claim 1 as interpreted by the Board in accordance with interpretation (a) presents the person skilled in the art with new information which extends beyond the content of the application as filed. The requirement of Article 123(2) EPC is therefore not met." 
  
  
• The patented tries a correction of error under Rule 139 to recite in the claim: "said body having a free inner bore, said body holding a capacitive data link" 
  
• "Due to the additional comma and noun group "said body", the corrected expression contains two distinct participial phrases which both describe the body. It is common ground that the person skilled in the art would understand this [corrected] expression in line with interpretation (b) above."
• However, the Board concludes that Rule 139 EPC is not applicable to correct claim 1 of the patent as granted. The Board's reasoning seems convoluted on this point, but the Board's conclusion seems correct because the scope of protection of the patent as granted is defined by the Decision to grant (in turn referring to the Druckexemplar), which is issued by the EPO and which could be corrected under Rule 140 except for G 1/10 excluding this; Rule 139, on the other hand, applies only to documents filed with the EPO, i.e. submitted by a party, and hence not to decisions of the EPO, such as a Decision to grant. 
• I note that clerical errors in the granted claims can be corrected in opposition, together with a substantive amendment, see e.g. T 1111/19. I note that upon further consideration, such a correction might not be a correction under Rule 139 stricto sensu (indeed, G 1/10 r.13 does not refer to R.139). 
• As the present Board notes:  "The Enlarged Board also stated in G 1/10, Reasons 13, that it is always open to a patent proprietor to seek to amend its patent during opposition proceedings and that such an amendment could remove a perceived error. However, it was also stressed by the Enlarged Board that such an amendment must satisfy all the legal requirements for amendments, including those of Article 123 EPC."
• The amendment is also submitted as an auxiliary request. "By bringing the disputed expression of claim 1 into line with interpretation (b), the limitation defined in claim 1 as granted that the free inner bore holds a capacitive link, as interpreted by the Board as discussed in section 4. above, has been removed. The protection conferred by claim 1 as granted has thus been extended in all of auxiliary requests 1 to 3. These auxiliary requests therefore do not meet the requirement of Article 123(3) EPC."
• The patent is revoked.

EPO 

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

T 2475/18 - Art. 123(3) and Art. 69

Key points

• The OD found the main request to violate Art. 123(3) (machine translation): " According to the opposition division and the respondent (opponent), the wording as granted requires that the receiving device locks in place and then cannot be rotated back, but can still be rotated in the other direction []. However, claim 1 of the main request also includes embodiments in which, once it has been locked, it is no longer possible to rotate the receiving device at all."  
• The Board, in machine translation: The Board disagrees. According to G2/88, the first step in examining Article 123(3) EPC is to determine the scope of protection of the patent under Article 69(1) EPC before amendment. Accordingly, established case law of the EPO Board of Appeal (see [CLBA 9th ed.] II.A.6.2) emphasizes that Article 69(1) EPC relates to the scope of protection of the patent which, with regard to Article 123(3) EPC is relevant. This in turn means that - contrary to the opinion of the respondent (opponent) - the description and the figures are to be used to interpret the granted patent claims. Since the examination of Article 123(3) EPC is therefore a matter of interpreting the scope of protection and not, as in T 0030/17 mentioned by the respondent, of determining the claimed subject-matter, contrary to the respondent's view, no contradiction arises other decisions of the Boards of Appeal.
• Turning to the facts of the case: " If feature 1.9 is now read in conjunction with feature 1.6, the granted claim in the light of the description - just like the claim wording of the main request - leaves open whether the receiving device can be rotated further after locking (feature 1.8) in one direction of rotation or not." 
• " Consequently, both embodiments which now fall under the wording of claim 1 of the main request, i.e. a receiving device which can still be rotated in one direction of rotation after locking or a receiving device which is completely blocked after locking, were already included within the scope of protection of the granted claim." 
• G 2/88, in what could be the relevant part of the reasons, provides:  "When considering whether a proposed amendment to the claims is such as to extend the protection conferred, a first step must be to determine the extent of protection which is conferred by the patent before the amendment: it is necessary to be quite clear as to what is the protection conferred by the patent without amendment, before one can decide whether a proposed amendment is such as to extend it. Determination of the extent of protection has to be carried out in accordance with Article 69(1) EPC and its Protocol, which provides a guide to the manner in which the technical features of the claim are to be interpreted. " 

EPO 

The link to the decision is provided after the jump.

T 0652/20 - Modifed novelty attack not admitted

Key points

• The opponent cited Example 12 of document E3 as novelty destroying before the OD. In appeal, the opponent argues that Example 12 of document E3 is novelty destroying. The Board does not admit the attack.
• " In its statement setting out the grounds of appeal, the appellant - opponent raised a lack of novelty objection versus the composition of example 12 of E3 based on the argument that chitin contained therein would represent a sebum-absorbing powder having a sebum uptake of 35 mL/100 g or more [as specified in the claim]" 
• " During the first instance proceedings the [opponent] relied exclusively on fibroin as sebum-absorbing powder in its objection of lack of novelty over example 12 of E3. Fibroin was consequently the sole component considered as potential sebum-absorbing agent in the impugned decision. Hence, the lack of novelty reasoning of the [opponent] based on chitin as sebum-absorbing powder was provided for the first time in the entire proceedings with its statement setting out the grounds of appeal." 
• " During the oral proceedings, the [opponent] explained that this argument was not new. According to the [opponent], its objection of lack of novelty raised during the first instance proceedings concerned the whole composite material containing fibroin and chitin. These two components only differed in the mechanism by which sebum uptake occurred. Merely a new item of evidence substantiating the achievement of the claimed sebum-uptake parameter (A9) had been provided in reply to the decision of the opposition division pointing out the lack of evidence therefore" .
• The Board does not admit the modified attack under Art. 12(4) RPBA.
• " The new lack of novelty reasoning of the [opponent] raises an entirely new discussion regarding the physico-chemical properties of chitin. It does therefore not address the reasoning of the first instance decision as such but merely the conclusion thereof, namely that the composition of example 12 of E3 did not anticipate the subject-matter of granted claim 1. This opinion of the opposition division had furthermore already been expressed in the annex to the summons to oral proceedings in opposition.
• Moreover this new discussion regarding the physico-chemical properties of chitin would introduce complexity, in particular regarding the question of whether chitin has indeed a sebum-uptake according to claim 1, and would hence be against procedural economy." 
• The new documents supporting the attack are not admitted either.
• 
  

EPO 

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

T 2941/18 - Request for correction designation of party

Key points

•  The opponent requested a correction of the designation of the opponent because the former name of the opponent had been used, even after a merger of companies (more precisely: the name of the former opponent, after a transfer of opposition by universal succession because of a merger).
The Board, in translation: 1.2 In addition, the correction requested by opponent 5 under Rule 139, first sentence, EPC is to be granted since the conditions defined in point 37 of the reasons of decision G 1/12 (OJ EPO 2014, A114) are met. It can be seen from documents A1 to A3 that the real intention of the parties involved was to file the appeal and carry out the subsequent procedural steps on behalf of the universal successor. In addition, opponent 5 filed its request for correction by letter dated March 12, 2020, i.e. immediately after the incorrect designation of opponent 5 had been criticized by the patent proprietor."
" Since a request for correction of the opponent's designation in opposition proceedings is to be granted under Rule 139, first sentence, EPC if it complies with the principles set out in G 1/12 (see T 1755/14, point 4.1 of the Reasons) and an allowable correction under Rule 139 EPC is retroactive (G 1/12, point 37 of the Reasons), all procedural acts of Opponent 5 since the merger of Nilit Plastics Europe GmbH with Celanese Sales Germany GmbH are deemed to have been carried out on behalf of Celanese Sales Germany GmbH. ... Consequently, Opponent 5's name is to be corrected to "Celanese Sales Germany GmbH" and Opponent 5's appeal is admissible."

EPO 

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

T 1924/15 - Review of evidence in appeal

Key points

• The PCT application was filed in 2004 and granted in 2010. An opposition was filed in 2011, so the opposition including the appeal took 11 years in this case. The appeal took 7 years. 
• The opposition was based on alleged public prior use. 
• "The Opposition Division heard witnesses and considered written evidence, and came to the conclusion that the opponent had proved their case. They have given clear reasons why they were persuaded of the public prior use (appealed decision, section 4.3, in particular page 14, third and fourth paragraphs)."
• "On appeal, the proprietor has not shown that the Opposition Division was not entitled to reach the conclusion it did. The Board, therefore, concurs with the Opposition Division's position: the drawings, delivery slips, invoices, torch sample, and witness testimonies provide enough evidence to establish the public prior use of the PB50.1-H torch."
• The Board does however review in depth whether (the evidence of) the public prior use discloses all features of the claim. 

EPO 

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

T 2378/13 (II) - The inventive step attacks get their day in court

Key points

•  This is the follow-up to R 5/19, which was the 9th successful petition for review.
• In the first decision, the Board had reasoned that the opponent as the appellant had submitted with its statement of grounds (in translation) " a variety of different arguments against the inventive step of [operative claim 1]. However, none of these arguments are based on the generally accepted problem-solution approach for assessing inventive step. Consequently, the complainant's allegations concerning the inventive step in writing are disregarded in this decision. During the oral proceedings, before the board, the [opponent] made attacks using the problem-solution approach, which the board acknowledged." The board only considered inventive step starting from D6 and found that claim 1 was inventive. 
• The statement of grounds of the opponent included three inventive step attacks which appear, each individually, to state the distinguishing feature and the objective technical problem (e.g. the attack on p.24 starting from D13); for each attack, detailed comments were given on the (adverse) reasoning in the impugned decision of the opposition division.  
• The Board, after the remittal from the Enlarged Board, considers the inventive step attacks and concludes that the claims are inventive (only a dependent claim was further amended to address a clarity issue). The Board's reasoning seems fairly detailed, but it is not my technical field. This time, however, multiple inventive step attacks in parallel are considered and discussed by the Board.
• The OD had taken a decision to maintain the patent in amended form while the petition for review was pending (and the B2 publication was published). The Board expressly sets aside that decision.
• The Board, in machine translation:  "Neither in Article 112a nor in Rule 108 or in its other provisions does the EPC contain an express statement as to whether decisions of the opposition division which took effect in the period between the adoption of the board of appeal decision and the adoption of the review decision of the Enlarged Board of Appeal automatically become effective as a result of the reversal of the Board of Appeal decision and the resumption of the appeal proceedings become ineffective or whether this requires an express reversal of these decisions. However, as part of the review procedure that has been introduced, it is necessary to interpret the existing procedural rules to the effect that a request is admissible which aims to remove the effect or legal appearance of a decision already given by the opposition division which is not in accordance with the final decision of the opposition division Board of Appeal after the reopening of the appeal proceedings. Indeed, it would be contrary to the spirit of a review procedure and to legal certainty if decisions of the opposition division which took effect in the period between the issue of the first Board of Appeal decision and the issue of the review decision of the Enlarged Board of Appeal and which are not consistent with the final Board of Appeal decision in the resumed proceedings actually exist or would even appear to be effective. Ultimately, the purpose of the review process is to ensure effective legal protection and a fair process. This can only be done if there are no decisions of the opposition division based on the decision of the Board of Appeal which have been set aside and which could perpetuate the result of the proceedings before the review proceedings are carried out or at least be suitable for creating a corresponding legal appearance."

EPO 

The link to the decision is provided after the jump

T 0467/20 - Moved through the vessel of the patient

Key points

•  Claim 1 is directed to a system comprising "a first instrument sized [e.g. a catheter] and shaped for introduction into the [blood] vessel of the patient", a similar second instrument, and a computing device configured to "obtain pressure measurements from the first and second instruments while the second instrument is moved longitudinally through the vessel of the patient"
• The Board: "The contested patent relates to a system for assessing the severity of a stenosis in a blood vessel."
• The Board finds the claim to be sufficiently disclosed and inventive.
• Of note, Art. 53(c) is not discussed. Hence, a computer configured to perform calculations on output from a device that by way of surgery is introduced into the body of a patient is not excluded. 
• This decision appears in line with established case law, see e.g. T 2136/19. For a different approach, see T 0944/15.
• The present decision also illustrates the difference in the effect of Article 52(2) and Article 53 on inventive step. Features defining subject-matter excluded under Art. 53(c) can very well contribute to inventive step.
• " it is common ground that D1 does not disclose feature 4.3 of claim 1, whereby the computing unit is further configured to "modify the visual depiction of the vessel to simulate one or more treatment options based on expected results of the one or more treatment options on the pressure differential". " 
• This feature pertains to the presentation of information. 
• " The appellant [opponent] formulated the objective technical problem to be solved starting from D1 as being to facilitate the selection of a treatment method." 
• The Board seems to follow this formulation.
• " The Board first notes that D1 itself does not suggest that the "integrated graphical image output" may be used to simulate various treatment options. Without hindsight, the person skilled in the art proceeding from D1 alone would not implement feature 4.3 without an inventive step." 
• The distinguishing feature is the presentation of information. Interestingly, the Board does not comment on the case law that " A feature defining a presentation of information produces a technical effect if it credibly assists the user in performing a technical task by means of a continued and/or guided human-machine interaction process (T 336/14, T 1802/13 and T 1185/13). " (CLBA 10t hed. I.D.9.12.10.b).
• Implicitly, the method of treatment is a technical method and selecting the right treatment method is (apparently) seen as a technical problem, such that "facilitate the selection of a treatment method" is considered to be a technical problem.

EPO 

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

T 2803/18 - Distinguishing feature held inadmissible

Key points

• This is just a small post to illustrate a practical point: an assertion of the patentee that a claim has a (further) distinguishing feature over a prior art document, can be late-filed and be disregarded as inadmissible.
• "The Board decided, pursuant to Article 13(2) RPBA 2020, not to take into account the appellant's assertion that D2 failed to disclose the feature defining a learning phase."
• "The appellant [patentee] acknowledged that it had not submitted this contention in its reply to the statement of grounds of appeal. Contesting that the feature was disclosed in D2 introduced a new factual element into the proceedings and was consequently considered to constitute an amendment to the respondent's appeal case, indisputably submitted only after the notification of a summons to oral proceedings. The appellant did not argue that exceptional circumstances were present. Absent any exceptional circumstances justified by cogent reasons, the Board exercised its discretion according to Article 13(2) RPBA 2020 not to take this assertion into account."

EPO 

The link to the decision is provided after the jump.

T 1466/19 - A concise notice of appeal

Key points

• The opponent's representative feels adventurous and files a notice of appeal which states neither the name of the appellant, nor the address of the appellant, nor an express request.
• " Rule 99(1) EPC requires the notice of appeal to state the name and address of the appellant (Rule 99(1)(a) EPC) in addition to the decision under appeal (Rule 99(1)(b) EPC), and a request must be made specifying the subject-matter of the appeal (Rule 99(1)(c) EPC)." 
• Is the appeal admissible?
• " Since the notice of appeal was drawn up by a professional representative who had already been involved in the opposition proceedings and had represented the opponent there, it was evident that the same professional representative had also lodged the appeal on behalf of the opponent WABCO Europe BVBA." 
• The opponent had stated the address in the statement of grounds, and hence before any invitation of the Board to do so.
• " The subject-matter of the appeal is, in turn, obvious in the present case, despite the absence of an explicit request: After the opponent as appellant filed an appeal against the decision of the opposition division to uphold the patent, it must be assumed that with its appeal it seeks the revocation of the patent in suit. " 
• The appeal is admissible.

EPO 

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

T 3098/19 - Correction of debit orders

Key points

• The appellant paid the appeal fee by mistake at the reduced rate, at the time that the reduced rate was the same as the (only) fee rate before the introduction of the reduction.
• "the appellant pointed out that it "checked by mistake the wrong appeal fee box in Form 1038 filed with the Notice of Appeal". Thus, the appellant requested that the amount of the appeal fee indicated in the debit order filed with the Notice of appeal be corrected under Rule 139 EPC." 
• " In several decisions the Boards of Appeal acknowledged the applicability of Rule 139 EPC to debit orders (cf. T 317/19, T 2620/18, T 1000/19 and T 444/20). The Board does not see any reasons to deviate from the established case law."  
• " the appellant pointed out in essence that a template had been used for creating the Notice of appeal and that the error in the amount of the appeal fee had not been detected due to the fact that the former amount for the (full) appeal fee was identical with the (then) valid amount of the reduced appeal fee. The Board finds this explanation credible. In that regard, the Board points to decision T 2620/18 (followed for instance also by T 444/20) which concerned very similar circumstances." 
• As to whether the request was made without delay: " the Board would like to point out that the relevant point in time for the question as to whether a request for correction has been filed without delay can only be the date on which the mistake had been discovered by the responsible person. Since the appellant filed the request immediately after having been informed by the EPO about the payment of the reduced appeal fee the Board considers criterion d) of G 1/12, point 37 of the Reasons, as met. " (even if this was in December 2020 whereas the Notice of appeal was filed in November 2019).
• " the correction of the debit order means that the fee payment had been effected in time and that the appeal is deemed to have been filed (cf. also J 8/19, Reasons point 3; T 317/19, Reasons point 3)." 
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EPO 

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

T 1688/20 - Novelty of ranges under the gold standard test

Key points

•  The question is whether the subrange defined in the claim provides for novelty. The prior art disclosure is 55 - 60, and the claimed range is  an angle of 56 degrees or more and 59 degrees or less" 
• "According to the opposition division none of the following criteria were met by the sub-range of claim 1 of the patent as granted with respect to the known broad range of E5:
  (a) the selected sub-range is narrow compared to the known range; (b) the selected sub-range is sufficiently far removed from any specific examples disclosed in the prior art and from the end-points of the known range; (c) the selected range is not an arbitrary specimen of the prior art, i.e. not a mere embodiment of the prior art, but another invention (purposive selection, new technical teaching)."

• "For criterion (c), the Board concurs with the most recent decisions of the Boards of Appeal, including T 261/15, point 2.2.2 of the reasons, according to which this criterion of purposive selection is relevant for the question of inventive step rather than for novelty."

• "with regard to criteria (a) and (b), namely that a claimed sub-range must be "narrow" compared to the known range and "sufficiently far removed" from any specific examples disclosed in the prior art and from the end-points of the known range, the present Board is not convinced that the relative terms "narrow" and "sufficiently far removed" provide objective, solid and consistent criteria for establishing novelty of a selected sub-range. The Board is of the view that these terms are generally open to such a broad interpretation that the decision whether criteria (a) and (b) are met not only depends on the factual circumstances of each case, but could also depend on the subjective perception of the deciding body on which values are to be considered "narrow" or "sufficiently far removed". It follows that there is not always clear guidance on what can unmistakably be held as "narrow" or "sufficiently far removed" in order to fulfil the requirements of criteria (a) and (b)."

• "in order to conclude a lack of novelty there should be in the prior art a direct and unambiguous disclosure, in the sense of the "gold standard", of subject-matter falling within the scope of the claim (see also T 1085/13, Reasons, point 3.6.1).'

• "The Boards have emphasized that the various tests developed for different cases of amendments are only meant to provide an indication of whether an amendment complies with Article 123(2) EPC as interpreted according to the "gold standard" and should not lead to a different result"

• "The present Board derives from the above that the same should hold true for deciding on novelty of the claimed subject-matter with respect to the prior art, i.e. that no test or list of criteria should lead to a different result than when applying the "gold standard" directly, which is the absolute requirement in terms of disclosure.'

•  In light of the above, the Board concludes that in cases where, under application of the "gold standard", it can be established whether the skilled person, using common general knowledge, directly and unambiguously derives a claimed sub-range from a particular disclosed range of the prior art, no supporting test or criteria is necessary to reach a conclusion and thus none of the principles set out in decisions T 198/84 and T 279/89 needs to be applied.

• i.e.: " (a) the selected sub-range is narrow compared to the known range; (b) the selected sub-range is sufficiently far removed from any specific examples disclosed in the prior art and from the end-points of the known range;  (c) the selected range is not an arbitrary specimen of the prior art, i.e. not a mere embodiment of the prior art, but another invention (purposive selection, new technical teaching)." 

•  The appellants [patentee] argued that the angle range disclosed by document E5 is 55 to 60 degrees, so that there is no direct and unambiguous disclosure of feature F of claim 1 according to the patent as granted, in particular of "an angle of 56 degrees or more and 59 degrees or less"."' 

• "The Board thus concludes that, under the application of the "gold standard" the skilled person cannot directly and unambiguously derive from the disclosure of E5 an "angle of 56 degrees or more and 59 degrees or less" as required by claim 1 according to the patent as granted."

• E5 is prior art under Art.54(2) EPC. The Board finds the claim to be also inventive. The Board finds that the selection is not an arbitrary selection: " the Board notes that the technical effects due to the variations of the twist angle are recognisable in view of the comparative examples corresponding to paragraphs [0046] to [0053], tables 10 to 15 and figures 6 and 7. The influence on the coating efficiency and on the paint particle diameter in view of the different values of twist angle and under the same boundary conditions of air pressure and flow rate can be clearly recognised, in particular for air pressures of 0.1 MPa and above, which involve higher flow rates." 

• " The argument of the respondent  [opponent] that the technical effect mentioned in the opposed patent can also be achieved with twist angle values outside the claimed range and that therefore the claimed range is an arbitrary selection, cannot be followed. What is relevant is whether the prior art disclosing the broader range also discloses the presence of such a technical effect, which is here not the case. Even if the patent proprietor were to choose to claim a range of values for the twist angle smaller than the range in which a technical effect might take place, the claimed range still provides a technical effect that has not been disclosed in the prior art and would thus represent a purposive selection." 

• As a comment, the Board does not seem to directly address the argument of the opponent that " the alleged effects of improving the coating efficiency are also achieved by twist angles outside the claimed range such as 55 degrees (as shown in figures 6 and 7 of the patent specification)", bearing in mind that 55 degrees is a disclosed embodiment in E5.

• As a further comment, I doubt if it is correct that "what is relevant is whether the prior art disclosing the broader range also discloses the presence of such a technical effect", other than for 2nd medical and non-medical use claims. If the prior art document discloses an embodiment which inherently provides the technical effect (even if that effect is not expressly described), then the objective technical problem is not achieving that technical effect, in my view.

EPO 

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

T 1109/18 - Auxiliary requests and SoG Patentee

Key points

• Both the opponent and the patentee appeal.
• The OD found the claims of an auxiliary request to be allowable. Some further, lower-ranking, auxiliary requests were pending before the OD, but the OD did not arrive at them.
• Should the patentee comment on those lower-ranking auxiliary requests in its Statement of grounds (and, for that matter, resubmit or present them in appeal in the SoG)?
• The Board in this case finds that this is not necessary. It is sufficient (and necessary) if the patentee introduces those auxiliary requests in its appeal reply brief as respondent.
• The Board: "Not filing the main request already with its own grounds of appeal, but only in reply to the opponents' grounds of appeal, cannot be considered as the abandonment of this claim request. The main request was filed with the reply to the opponents' grounds of appeal and thus in compliance with Article 12(3) RPBA 2020, which explicitly stipulate that the statement of grounds of appeal and the reply are to contain a party's complete appeal case. "
• Note that auxiliary requests that are higher-ranking than the claims held allowable by the OD must be presented in appeal by the patentee with its SoG.
• Note that the opponent accordingly should file a rejoinder to the patentee's appeal reply brief setting out all its objections to all auxiliary requests presented in the patentee's appeal reply brief.

EPO 

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

T 0158/21 - The pre-conversion archive

Key points

• In this case, the applicant files a patent application online, attaching the Word document as a so-called pre-conversion file. The PDF file and the Word document as actually filed, however, belong to different versions of the application. The case is a divisional application, and two divisional applications were filed shortly after each other. 
• The legal basis for the pre-conversion archive is Art. 11 Dec. Pres. OJ 2021 A42: " Technical documents relating to a European or international patent application may in addition be attached to the application in the data format in which they were created, provided the files contain either plain ASCII text or were created with one of the following word processing programs: (a) Microsoft Word 2010 or later ..." However, that notice does not give any indication what this so-called pre-conversion archive can be used for. For PCT applications, reference can be made to Sections 706 and 710 of the Administrative Instructions: " Where it is found that the international application as filed in electronic form is not in fact a complete and accurate copy of the document in the pre-conversion format submitted under paragraph (a), the applicant may, within 30 months from the priority date, request the receiving Office to correct the international application so as to bring it into conformity with the document in the pre-conversion format." Note that: " Where, for the purposes of filing the international application in electronic form, the document making up the international application has been prepared by conversion from a different electronic document format (“pre-conversion format”), the applicant may ... submit, together with the international application, the document in the pre-conversion format," 
• In the case at hand, the PDF  file as uploaded was not prepared from the submitted word document, but from a different version of the word document.
• "The applicant requested in essence that the set of claims annexed to the electronically filed application as pdf-file be replaced by the set of claims contained in the zip-file which was also attached to the electronically filed application. " 
• The Board: " Such a pre-conversion file is foreseen to be attached if the document attached to the application form (in the present case the pdf-file of the claims) has been prepared by conversion from a different electronic document format. The aim of this is to have the original file available in the case of corruption of the document due to the format conversion. Thus, the pre-conversion file is meant to be taken into account only in order to solve problems which are due to the conversion of document formats. In the present case the set of claims contained in the pdf-file did not show any sign of corruption. " 
• " According to Rule 139 EPC, second sentence, the correction must be obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction, if the request for such correction concerns the description, claims or drawings. The Board concurs with the appellant insofar as it appears evident that an error occurred when filing the present application in view of the different reference numbers used for the pdf- and the zip-file. However, it is by no means obvious whether the mistake lay in the filing of an incorrect set of claims as pdf-file or whether the reference numbers themselves were incorrectly chosen." 
• Note that the Board here looks beyond the four corners of the (PDF) description, under Rule 139, second sentence, where it refers to the " different reference numbers used for the pdf- and the zip-file". Moreover, the pdf file "on the screen" does not show the reference numbers; these can instead be inferred from the "original file name"  as shown in the Request for grant form.
• A further procedural twist is that the applicant had filed an earlier appeal, the Examining Division granted interlocutory revision, and then " refused the application again by a second decision". 
• " the Examining Division conceded that it had not taken into account one of the essential arguments put forward by the appellant (cf. impugned decision, point 15 of the Summary of Facts and Submissions). This argument was then dealt with by the Examining Division under points 1.3.4 and 1.9 of the Reasons of the impugned decision. Thus, the Examining Division considered the (first) appeal to be well founded due to the aforementioned procedural violation and set aside its decision refusing the application dated 29 November 2018. This handling of the case is thus in line with Article 109(1) EPC (cf. T 647/93, point 2.6 of the Reasons). Thereafter the Examining Division resumed the proceedings in order to consider the applicant's argument which had not been dealt with in the decision of 29 November 2018 and to give the applicant the opportunity to exercise its right to be heard in particular on that point. Since further examination was required the proceedings were resumed which led ultimately to a second refusal of the application." 
• " In that regard it is noted that resumption of the proceedings does not rule out a subsequent refusal of the application (cf. T919/95, point 2.1 of the Reasons, with further references; also reflected in the Guidelines for Examination, E-XII, 7.4.1)." 
• No request for reimbursement of the appeal fee had been filed in the first appeal, and the examining division hence neither reimbursed the appeal fee nor forwarded a request for reimbursement under (what is now) R.103(6) (see here; the first Notice of appeal and statement of grounds seem unavailable in the online file).
• "[In] the present case the examining division rectified its (first) decision refusing the application in view of the fact that a crucial argument of the appellant had not been taken into account, constituting a violation of the appellant's right to be heard. Thus, the requirements under Rule 103(1)(a) EPC for reimbursement of the appeal fee paid on 8 February 2019 are met and therefore the Board orders reimbursement of that appeal fee." 
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EPO 

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

T 0151/19 - Justification of case amendments as requirement

Key points

•  Article 13(1)(s.4) RPBA 2020 specifies a list of factors to be considered by the Board when deciding whether or not an amendment of a party's appeal case.
• Article 13(1)(s.1) RPBA 2020 however also specifies that such a case amendment is "subject to the party’s justification for its amendment".
• This decision implies that this requirement for justification is a threshold requirement.
• "The appellant's [opponent's] argument that the inventive step objections starting from D1, D2, D3 and D6 were not particularly complex and were filed over two years before the oral proceedings, actually pertains to the criteria for the exercise of discretion by the Board under [the fourth sentence of] Article 13(1) RPBA 2020, once satisfied that there is a reason for the late filing. Thus they do not justify their admittance either." 
• As a comment, the Board implies that the party must indicate a reason for the late filing that is valid in the Board's view, i.e. an objective justification. 
• " With respect to objections starting from D1 and D3 in its letter of 4 May 2020, the appellant aimed to 'preemptively respond to a generic argument' which cannot be considered a justification for the appellant to change its appeal case after having submitted its grounds of appeal." 
• I.e. the opponent specified a reason ("preemptively respond to a generic argument"), the Board found this reason to be not a valid reason and dismissed the attacks as inadmissible without considering the factors listed in the fourth sentence of Art. 13(1).
• As a comment, this decision is in line with T 0099/16 r.2.5.

EPO 

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

T 0874/18 - Discharging burden of proof and counter-proof

Key points

• This decision is about a correction of an error in the specified name of the opponent under Rule 139. The Board also recalls the general principle that:  “Once a party has submitted conclusive proof of its allegations, it has complied with the requirement of the burden of proof. The evidence need not prove the facts with absolute certainty in order to be deemed conclusive; it suffices that it proves that they are highly probable. If a party has discharged its burden of proof, the counterparty seeking to refute the conclusively established facts by way of counter-arguments bears the burden of proving the alleged facts” ( verbatim in CLBA 10th ed. III.G.5.2.1)
• As a comment, the part in italics can be a bit confusing.  The German original is T 1162/07 and differs in the part in italics: " Hat eine Partei ihrer Beweislast genügt, so trägt die Gegenpartei, die die so überzeugend belegten Tatsachen durch Gegenargumente zu entkräften versucht, für diese die Beweislast". "Diese" may refer to "Gegenargumente".
• As a comment, I think that the counterparty has the burden to disprove the alleged facts, i.e. to provide counter-evidence.
• The Notice of opposition was filed with a different name in Form 2300E than in the Notice. The opponent requests a correction of an error under Rule 139, the name in Form 2300E being incorrect.
• G 1/12 requires that the request for correction is filed "without delay".
• The Board: " It is clear that such delay can only start once a party has become aware of its error." 
• Still, the opponent's statement as to when it became aware of the error, is checked for objective evidence: "In view of the above, the Board has no reason to doubt the opponent's submission that it only became aware of the incorrectness of the name indicated on Form 2300E on 13 October 2016, when checking the European Patent Register. The Board thus concludes that the request for correction under Rule 139 EPC was filed without delay." 

EPO 

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

T 1111/19 - Correction of errors and Rule 80

Key points

•  G 1/10 held that Rule 140 is not available for correcting errors in the Druckexemplar after the grant.
• G 1/10 added that "it is always open to a patent proprietor to seek to amend his patent during opposition or limitation proceedings and such an amendment could remove a perceived error. Such an amendment would have to satisfy all the legal requirements for amendments including those of Article 123 EPC.".
• The present decision clarifies that any such amendments must also comply with Rule 80 EPC.
• Hence, a main request wherein only errors were corrected, was not admitted by the Board.
• This is in line with Guidelines H-VI, 2.1.1.1 stating that a correction of an error in opposition will be admitted "if the correction is part of an amendment going beyond the mere removal of an error, namely an amendment occasioned by a ground for opposition".
• The Guidelines add that: "Therefore, if the proprietor files an amended specification fulfilling the requirements of Rule 80, they can additionally request the correction of an obvious error under Rule 139 (see T 657/11). "
• In the present case, the main request consists of only corrections of errors in the patent.
The Board, in machine translation: " The main request was not admitted to the appeal proceedings (Article 13 (1) RPBA 2020). Even if the requirements of Rule 139 EPC were met, none of the corrections made constitute an amendment prompted by a ground for opposition under Article 100 EPC. The changes made in the main request are therefore not in line with Rule 80 EPC, which applies independently of Rule 139 EPC."
• " Corrections under Rule 139 EPC represent a special case of an amendment within the meaning of Article 123 EPC (see G 3/89 and G 11/91, margin no. 1). The Implementing Regulations (see Article 123(1) EPC, first sentence) explain how and under what conditions these amendments are possible. The other provisions to be observed for amendments to the European patent application can be found in Rule 137 EPC, those for amendments to the European patent in Rule 80 EPC. In addition, Rule 139 EPC contains provisions relating to the correction of obvious errors in documents filed with the European Patent Office."
• "Even if Rule 139 EPC applies independently of Rule 80 EPC, this does not mean that the requirement of Rule 80 EPC need not be met. If the two provisions are applied independently of one another, this means for the correction of documents filed with the European Patent Office in opposition or opposition appeal proceedings that both provisions must also be fulfilled independently of one another. Rule 139 EPC does not in itself provide a sufficient legal basis for amending the claims of a European patent."
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The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1195/18 - Filing by reference, losing the original claims

Key points

•  This divisional application was filed by reference, i.e. only a request for grant form was filed (here). 
• Box 26.1 was checked, stating that "that reference replaces the description and any drawings" .
• Box 26.2 was not checked, i.e. the box " the reference to the previously filed application also replaces the claims" was not checked.
• The claims were filed later.
• The Board: " 1. The present divisional application 12 173 914 shares a common description and set of drawings with the earlier application 07 766 892 (see point 26.1 in EPO Form 1001E "request for grant of a European patent" with its explicit reference to the description and drawings of the previously filed application). The originally filed claims do not provide a basis for the present claims of all claim requests. This is not contested by the proprietor. Hence, it is only the description or the drawings that could provide such a basis. "
• As a comment, this is a significant disadvantage of filing by reference. 
• As a further comment, you can also file normally, add the original claims as embodiments to the description, omit claims on filing, and file the claims later.
• See also the parallel case T 1472/19, " Contrary to the allegations of the proprietor, the claims of the earlier filed parent application P1b (EP 07 706 172) cannot serve as a basis in the considerations regarding added subject-matter. This is because the reference to P1b according to Rule 40 (1)(c) EPC was only made with regard to the description and drawings, not with respect to the claims (refer to points 26.1 and 26.2 of the request for grant of a European Patent dated 25.04.2012). 15. The proprietor's view, that the explicit reference in the request for grant to the description and drawings of the parent application did not exclude the claims, is not persuasive. Article 123(2) EPC requires that amendments to a claim must derive directly and unambiguously from the original application documents. This implies that the passages referred to as basis for the amendments must be unambiguously identified in the request for grant as being part of the application." 

EPO 

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