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

https://www.epo.org/law-practice/case-law-appeals/recent/t132378du2.html