T 0956/19 - No interruption of opposition period

Key points

• In edited machine translation: "Appellant I [the patentee] submits in its appeal that the oppositions of Opponents 1 and 2 [] have not been validly filed. In essence, it argues that the oppositions were filed during an interruption of opposition proceedings under Rule 142(1)(b) EPC that was subsequently identified and thus outside an ongoing opposition period. After resuming opposition proceedings, the oppositions should have been filed again within the new opposition period under Rule 142(4) EPC. Since this did not happen, the oppositions were not filed within the time limit and should therefore be rejected as inadmissible."
• The argument is creative but the Board is not convinced. "Because the interruption of proceedings under Rule 142 EPC requires ongoing proceedings before the European Patent Office. Once a European patent has been granted, it is no longer subject to the jurisdiction of the European Patent Office, unless opposition or limitation proceedings are initiated (G 1/10, OJ EPO 2013, 194, reason 6). The legally effective filing of the oppositions of Opponents 1 and 2 on January 17, 2014, the last day of the opposition period under Article 99(1) EPC, was the prerequisite for the pending opposition proceedings and thus also for an interruption of these proceedings."
• "In this respect, the statement in the letter from the Legal Division of the European Patent Office dated October 15, 2014 that the opposition proceedings were interrupted from December 27, 2013, ignores the requirement of pending proceedings. According to the correct opinion, the objection proceedings were only interrupted after the pendency by the legally effective filing of the oppositions."
• "Since the incapacity of other parties to the proceedings [other than the patentee or applicant] does not constitute a reason for an interruption, time limits which apply to these parties to the proceedings are disregarded when Rule 142(4) EPC is applied. Thus, in the case of a subsequently determined interruption, only those legal consequences that arose from the beginning of the interruption until its later determination can be considered irrelevant, which result from missing interrupted time limits that the applicant or patent proprietor or his representative had to meet."
• "Appellant I correctly states that paragraph 4 of Rule 142 EPC - unlike Rule 90(4) EPC 1973 - does not expressly refer to "time limits that apply to the applicant or patent proprietor". However, this was not intended to change the content of the suspension of proceedings before the EPO under Rule 142 EPC (explanatory notes on the revision of the Implementing Regulations, OJ EPO 2003, Special Edition No. 1, page 194: "Rules 90 to 99 EPC have been editorially revised."
• "The above interpretation also coincides with the purpose of the norm. The purpose of the interruption is to prevent a loss of rights or adverse procedural developments as a result of missing a time limit if an applicant or patent proprietor or their representative is prevented from doing so for the reasons specified in Rule 142(1)(a) to (c) EPC (essentially death or incapacity to act). The interruption thus serves to protect the applicant or patent proprietor (T 54/17, Reasons, point 1.5).'
• The oppositions are, therefore, admissible

EPO 

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

T 2303/19 - The optimum format for oral proceedings

Key points

•  "The appellant's reasons for requesting that the oral proceedings take place by videoconference were two-fold. Firstly, this format would facilitate attendance at the hearing by the appellant's in-house counsel. Secondly, it would reduce the risk of any last minute travel disruption which may occur due to the uncertainty surrounding Covid-19 cases."
• "The Board agrees with the respondent that at the relevant time there were no Covid-19 related travel restrictions which would impair the parties' possibilities to attend in person oral proceedings at the EPO premises, and that in person oral proceedings are for now the optimum format as expressed in decision G 1/21.":
• "The Board also considers that the possible attendance of an accompanying person cannot determine the format of the oral proceedings. The Board thus decided that the oral proceedings take place in person."
• 
  

EPO 

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

T 2604/18 - Second insufficiency attack is new ground for opposition ?

Key points

•  The Board does not admit an objection of insufficient disclosure against claims 2 and 3.
• "2.4 In as far as the appellant [opponent] considers the objection of insufficiency of disclosure against claims 2 and 3 to have been raised by analogy against granted claims 9 and 10 in the notice of opposition, the Board considers that the substance of the latter objection was in essence directed against granted method claim 8 and extended only by dependency to claims 9 and 10. [...] The objection raised later against claims 2 and 3, directed to different features than those defined in granted claim 8, would thus be tantamount to the introduction of a new ground for opposition against subject-matter which had not been opposed so far for these specific reasons. The Board of its own motion [*] does not have the power to admit such a late filed ground for opposition (G 9/91, OJ 1993, 408)."
• As a comment, it is remarkable to see G 9/91 (read, presumably, G 10/91 hn.3, i.e. "fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee") applied to a second objection of under Article 100(b) EPC. However, G 10/91 itself is notoriously unclear about what the term "fresh ground for opposition" means.
• The Board's reasoning also seems difficult to reconcile with Art. 12 RPBA 2020, which gives the Board a discretionary power.
• * - the attack was presented by the opponent.

EPO 

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

T 1213/19 - (II) The right to be heard and amended claims

Key points

• I present the following reasoning of the Board without comments, except for a rhetorical question: does the right to be heard under Article 113(1) EPC entail more than a formal opportunity to file amended claims, namely a right to have amended claims which are filed without undue delay and as a serious attempt to address one or more objections considered on their substantive merits?
• The Board: "Article 113(1) EPC enshrines the fundamental right of a party to be heard before a decision is issued against it. Neither this provision nor the principle of party disposition expressed in Article 113(2) EPC [...] give any right to an applicant or patent proprietor in the sense that the EPO is in any way bound to consider a request for amendment put forward by the applicant or patent proprietor (see also G 7/93, Reasons 2.1)."
• The Enlarged Board: " The referring Board of Appeal has indicated its view that Article 113(2) EPC is based on the fundamental right of parties to civil law proceedings to decide the scope of their case. In the Enlarged Board's view, this provision of the EPC does not give any right to an applicant in the sense that the EPO is in any way bound to consider a request for amendment put forward by the applicant. The effect of this provision [= Article 113(2) EPC ]  is merely to forbid the EPO from considering and deciding upon any text of an application other than that "submitted to it, or agreed, by the applicant or proprietor ..."."
• " The right to file amended claims is defined in Article 123(1) EPC in accordance with the Implementing Regulations. These provisions, and not Article 113 EPC, set the conditions for taking amendments to the claims into account." 
• " It follows that the opportunity to present comments does not inevitably extend to having any auxiliary request submitted at any time automatically admitted into the proceedings (see also R 9/11, Reasons 3.2.2); its admittance in the appeal proceedings is subject to the applicable provisions of the Rules of Procedure of the Boards of Appeal, in this case Article 13(2) RPBA 2020."
• " In the current case, the respondent [patentee] had the right and the opportunity to react and present their comments, including by filing amended claims, to the appellant's submissions regarding document D8. However, auxiliary requests 1, 3 and 4 were filed only with the letter dated 22 July 2022, i.e. more than two-and-a-half years after the appellant [opponent] had submitted document D8 and provided detailed argument on why it was of the view that the subject-matter of claim 1 as granted lacked novelty over document D8. Auxiliary request 1A was filed a further two months later. On account of these actions, it is clear that the respondent did not wish to react to the appellant's submissions, but instead chose to wait until after the board had given its preliminary opinion in the communication pursuant to Article 15(1) RPBA 2020 to file the auxiliary requests." 
• " None of these claim amendments can thus be regarded as a timely reaction to the appellant's filing of document D8, as required by the Rules of Procedures of the Boards of Appeal. For this reason alone, the board rejects the respondent's argument that it was not given an opportunity to amend the claims in reaction to the submission of document D8."
• " By choosing not to react until the board had given its preliminary assessment on document D8, the admittance of the auxiliary requests became subject to the stringent limitations of Article 13(2) RPBA 2020. Under the present circumstances, however, the respondent had the possibility and, with more than one-and-a-half years before the summons were issued, sufficient time to react to the appellant's submissions regarding document D8 by filing amended claim requests under the less stringent limitations of Article 13(1) RPBA 2020." 
• " But even after the board's communication was issued, the respondent still had the opportunity to react and amend its appeal case. In fact, point 36 at the end of the communication drew the attention of the parties to the provision of Article 13(2) RPBA 2020, under which a limited exception is provided for amending their appeal cases. At the heart of this provision, based on the principle of Article 123(1) EPC and Rules 81(3) and 100(1) EPC, is the board's discretion to admit such an amendment. The respondent therefore had the right to react to the board's provisional opinion by filing auxiliary requests. It had the opportunity to comment on the admittance of these requests, but there was no certainty that these would be admitted (see R 1/13, Reasons 13.3 and R 6/19, Reasons 5 to 11)." 

EPO 

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

T 2502/19 - The broadest possible or objectively reasonable construction

Key points

• In this examination appeal, the Board raises a clarity objection: " it would not be clear for the skilled reader how the method of claim 1 takes the "reference temperature setting" according to feature (d) into account, other than by merely accepting it as an input to the optimisation calculation".
• The appellant "referred to several paragraphs of the description and highlighted that "the disclosure of the present application is consistent in itself". It emphasised that, by virtue of Rules 42(1) and 43 EPC, any claim construction must necessarily rely on the description. It concluded that claim 1 might be broad but did not lack clarity."
• "The board does not share the appellant's view. Rather, the claims should be taken by themselves, i.e. without relying on the description and drawings, and tested against the broadest possible or objectively reasonable construction which would occur to the skilled reader. This is because Article 84 EPC stipulates that the matter for which protection is sought is defined by the claims. It does not require to rely on any other part of the application documents."
• "For the reasons set out in points 2.1.1 to 2.1.3 above, the board considers that claim 1 of the main request, taken by itself, would indeed not be clear for the skilled reader."
• As a comment, this decision illustrates quite settled case law. Indeed, the Board cites no particular decisions to support the statement "the claims should be taken by themselves, i.e. without relying on the description and drawings, and tested against the broadest possible or objectively reasonable construction which would occur to the skilled reader" (for the examination of clarity).

EPO 

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

T 0699/19 - Novelty of 2nd medical use claims

Key points

• The issue is whether the 2nd medical use claim at issue is novel over D3. D3 is WO 2004/096122 and is a prior right. Incidentally, some European patents were granted in the patent family of D3.
• The Board: "In line with established case law, a disclosure destroys novelty only if its teaching is reproducible, i.e. is disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (see e.g. Case Law of the Boards of Appeal of the European Patent Office, 10th edition 2022, I.C.4.11). A second medical use claim is sufficiently disclosed only if the disclosure in the prior art document [*] makes it credible that the therapeutic effect on which the disclosed treatment relies can be achieved (see decision T 609/02, Reasons 9). Therefore, document D3 is only novelty destroying to the claimed subject-matter if it discloses that an anti-NGF antagonist antibody is indeed suitable for the treatment of osteoarthritis pain." 
• [*] - sufficient disclosure of a patent claim is assessed in view of the application as filed, not in view of "the prior art document", of course. On the other hand, the Board is correct that the principle of enablement applies equally for a claim (under Art.83) and for the validity of prior art documents as "effective disclosure". 
• D3:  "[0036] The methods and compositions of the present invention are useful for the treatment of pain of any etiology, including acute and chronic pain, any pain with an inflammatory component, and any pain in which an opioid analgesic is usually prescribed. Examples of pain include post-surgical pain, post-operative pain (including dental pain), migraine, headache and trigeminal neuralgia, pain associated with burn, wound or kidney stone, pain associated with trauma (including traumatic head injury), neuropathic pain, pain associated with musculo-skeletal disorders such as rheumatoid arthritis, osteoarthritis, cystitis, pancreatitis, inflammatory bowel disease, ankylosing spondylitis, sero-negative (non-rheumatoid) arthropathies, non- articular rheumatism and peri-articular disorders, and pain associated with cancer (including "break-through pain" and pain associated with terminal cancer), peripheral neuropathy and post-herpetic neuralgia." 
•  "Document D3 investigated the effect of an anti-NGF antagonist antibody on post-surgical resting pain based on a local inflammation in a rat animal model. The local inflammation was caused by an incision through skin and fascia in the hind paw of the rat (see Example 1 on pages 54 to 57). The post-surgical pain experienced in this animal model is therefore caused by an injury to soft tissue and an associated inflammation. [] In contrast, osteoarthritis is a chronic disease which affects the joints. " 
• "Document D3 therefore does not contain any experimental evidence for the treatment recited in the claim." 
• "The opponents considered that paragraphs [0007] and [0008] of document D3 disclosed a plausible technical concept for the claimed therapeutic effect." 
• The Board:  "paragraphs [0007] and [0008] of document D3 only disclose a plausible concept for rheumatoid arthritis as a condition associated with inflammation and elevated NGF levels. Unlike the disclosure in document D1 (see points 40. to 43. below), there is no information on osteoarthritis, a disease with an aetiology different from that of rheumatoid arthritis. " 
• " The opponents did not submit any evidence of common general knowledge which would support the notion that the skilled person, taking note of the disclosure in document D3, would accept that osteoarthritis pain could be treated with an anti-NGF antagonist antibody." 
• As a comment, provided that the required level of technical support (plausibility) is the same for enablement of D3 as prior art and D3 as patent application under examination, the case law could be consistent. There could be some tension if "ab initio plausibility" is the threshold for D3 to be effective as prior art and "ab initio implausibility" would be the threshold for D3 as the application from which a European patent is granted (by submitting some post-filed evidence showing that the compound is actually therapeutically effective). 
  
  
• General burden of proof on appellant?
• The Board, on the burden of proof: "[The opponents/appellants] argued that the patent proprietor had not provided any prior art raising reasonable doubts, substantiated by verifiable facts, that the treatment disclosed in document D3 could not be carried out, asserting also that the patent proprietor itself had acknowledged that osteoarthritis had an inflammatory component. However, the opposition division had decided that document D3 did not contain an enabling disclosure of treating osteoarthritis pain with an anti-NGF antagonist antibody. The opponents challenged this finding [as appellants in appeal, it may be added]. It was therefore on the opponents to demonstrate that the opposition division's decision was incorrect, and why; it was not down to the patent proprietor to raise additional doubts.  The opponents did not submit any further evidence or arguments, e.g. to the effect that the skilled person, on the basis of their common general knowledge, would have considered the claimed therapeutic effect plausible at the effective filing date of document D3."
• Here the Board sets the burden of proof (or the burden of persuasion) on the appellants (incidentally being the opponents).  
  
  
• " Consequently, on the basis of the arguments and evidence submitted by the opponents, the board is not persuaded that the opposition division's decision that document D3 did not sufficiently disclose that osteoarthritis pain could be treated with an anti-NGF antagonistic antibody was incorrect. As a consequence, in line with established case law (see point 26. above and decision T 1457/09, Reasons 36), the disclosure in document D3 is not prejudicial to the novelty of the claimed subject-matter (Article 54(3) EPC)." 

EPO 

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

T 1776/18 - (IV) Review of the OD's decision

Key points

• "The patent proprietor filed auxiliary request 4A at the oral proceedings before the Opposition Division, which decided not to admit the request. The patent proprietor requested that this decision be set aside."
• "the request had been filed in direct reaction to the Opposition Division's conclusion that the claim under scrutiny lacked novelty over Example 4 of D6. This objection had been raised for the first time in one of the opponents' submissions filed on the last day fixed under Rule 116(1) EPC. "
• The patentee argues that "[un]nder these circumstances, the Opposition Division had no discretion not to admit the request. The reasoning of T 754/16 was applicable by analogy. According to the cited decision, auxiliary requests filed during oral proceedings in direct response to a reversal of the Opposition Division's preliminary opinion had to be admitted."
• As a  comment, the patentee could also argue that filing the auxiliary request in response to the opponent's new objection (which objection was submitted with the opponent's written submissions before the oral proceedings) is a proper exercise of the patentee's right to be heard under Article 113(1) and that holding the request inadmissible was, therefore, a violation of Article 113(1).
•  "The amendment in claim 1 of auxiliary request 4A contains a feature taken from the description ("wherein said formulation is packaged and sealed in a single or multi-use container"). How the formulation is packaged or suitable containers for the composition were aspects that were never discussed in the opposition proceedings. They came up for the first time with the amendment. 
• "The opponents objected to the admittance of auxiliary request 4A, stating that they had been taken by surprise and that this amendment would require a new and time-consuming search which could only be undertaken if the oral proceedings were adjourned. The opponents further argued that auxiliary request 4A was prima facie not allowable and noted that document D6 had been in the opposition proceedings from the beginning."
• The Board approves of the OD's decision to hold the request inadmissible.
• " As to the patent proprietor's argument that it submitted auxiliary request 4A at the earliest opportunity, the Board notes that the patent proprietor could and should have submitted this claim request already in advance of the oral proceedings before the Opposition Division. Instead, it did so only during the oral proceedings, and even then only after the Opposition Division had found that none of the higher-ranking requests was allowable."
• According to the OD's decision, O1  (Fresenius) argued that claim 1 of then AR-4 lacked novelty over Example 4 of D6. The patentee argued that AR-4A was filed in response to the novelty objection based on D6 made by O5 on 22.01.2018. Although D6 had been filed with the Notice of opposition of O1, there was no novelty objection based on it before 22.01.2018. I understand that this letter of  O5 presents the attack on p.3 where it refers to para. [0304] of D6b which is part of Example 4. The letter was forwarded to the patentee with a communication dated 25.01.2018, deemed notification 04.02.2018. 
• The oral proceedings were held on 22.03.2018. 
• If the Board considers the delay (between 04.02.2018 and 22.03.2018) indeed to be an inexcusable delay, then the Board is of course right that the OD could properly decide to hold the auxiliary request inadmissible. 
• Apparently, the Board also takes issue with the patentee filing the request in the course of the oral proceedings when the higher-ranking requests were held unallowable and not at the beginning. I can imagine that the patentee was reluctant to disrupt the start of the oral proceedings by filing auxiliary requests which would have been superfluous if the OD had allowed a higher-ranking request. 
• The Board also notes that the Opposition Division admitted auxiliary request 4B. The patent proprietor filed this request right after the Opposition Division decided not to admit auxiliary request 4A. The Opposition Division reasoned its decision by explaining that the request was "done in response to the novelty objections based on D6 and that its claims 1 and 2, already present in Auxiliary Request 4 (as claims 5 and 6), do not create unexpected issues" (Reasons for the decision, section II.8).
• "  auxiliary request 4B, which had also been filed during the oral proceedings, was admitted and was found to be allowable." 
• I trust that the  Board and Opposition Divisions will always consider each request on its own merits and will not be tempted to go for an easily allowable lower-ranking request. 

EPO 

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

T 1213/19 - Article 123(1) EPC in conjunction with Rule 81(3)

Key points

• "Since the parties in the present case have not objected as to which provision in the EPC provides a legal basis for the discretion to admit amendments to claims, the present board does not see a need to discuss whether Article 123(1) EPC or also Article 114(2) EPC and/or Rule 116(2) EPC constitute an appropriate legal basis."
• " With a view of deciding the underlying case, the present board concurs with the jurisprudence having found that the first sentence of Article 123(1) EPC in conjunction with Rules 81(3) and 100(1) EPC gives the deciding organ a discretionary power to consider amendments filed in opposition and opposition appeal proceedings (see e.g. R 6/19, Reasons 6 to 11 and T 966/17, Reasons 2.2.1). According to Rule 81(3) EPC, the opportunity for a patent proprietor to amend the description, claims and drawings in opposition proceedings is given only where necessary. Under Rule 100(1) EPC, this provision also applies in opposition appeal proceedings, albeit further subject to the provisions of the Rules of Procedures of the Boards of Appeal, particularly Articles 12 and 13 RPBA."
• The decision was issued in writing on 22.12.2022; i.e. after shortly after decision T 1776/18 was issued in writing on 08.12.2022.
  

EPO T 1213/19

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

T 0974/20 - Annex to SoG, and conditional main request

Key points

•  The opponent submits an Annex with its Statement of ground. The Board does not approve of this.
• " The board is not persuaded by the appellant's [opponent's] argument that both objections were part of the appeal proceedings because they had been raised during opposition proceedings and were maintained in appeal in sections A.2.4.1 and A.3.2 of Annex A to the statement of grounds of appeal. Annex A entitled "Consolidated arguments from Opposition proceedings" may well summarise the objections made during the opposition proceedings by the opponent. However, the arguments in this annex are not automatically part of the opponent's appeal case. An appellant must present its complete case in the statement of grounds of appeal."
• "Therefore, the mere compilation of objections raised during opposition proceedings in an annex to and a mere statement in the statement of grounds of appeal that it is intended to rely on all facts, evidence and objections presented during the opposition proceedings collated in such an annex (see page 4 of the statement of grounds of appeal) do not constitute an indication of the reasons for setting aside a decision under appeal required under Rule 99(2) EPC."
• " Moreover, in the case at hand, the discrepancy between the definition of the expression cassette provided on pages 12 and 13 and Figure 1 of the statement of grounds of appeal [] and the definition in section A.3.2 of Annex A confirm that not all arguments raised during the opposition proceedings were indeed maintained in appeal. The objections compiled in Annex A hence do not form part of the statement of grounds of appeal."
• The Board's objections in the preliminary opinion, based on a different claim interpretation, are therefore exceptional circumstances and the patentee's new claim request is admitted.
  
  

Conditional new main request

• "The appellant [opponent] also objected to the unusual procedural situation arising from the submission of the main request conditional on its admittance. However, the conditional nature of the main request is understood by the board to be acceptable given that it entails the simultaneous withdrawal of all other claim requests on file. As the respondent was not submitting a new main request while maintaining other auxiliary requests, it was clear that it wished to discuss only the new main request, provided it was admitted in the proceedings. In view of this context, the board is satisfied that submitting the new main request conditional to its admittance was not detrimental to procedural economy."

EPO 

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

T 1776/18 - (III) A close reading of Rule 116(2)

Key points

•  Rule 116(2) specifies that: "If the applicant or patent proprietor has been notified of the grounds prejudicing the grant or maintenance of the patent, he may be invited to submit, by the date specified in paragraph 1, second sentence, documents which meet the requirements of the Convention. Paragraph 1, third and fourth sentences, shall apply mutatis mutandis." That fourth sentence is: "New facts and evidence presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed."
• A possible reading of this provision is that the OD must admit auxiliary requests filed during the oral proceedings, unless the preliminary opinion was negative for the patentee. 
• For instance, T 0754/16 held that: "Under Rule 116(2) EPC, requests filed after the final date set for making written submissions, can only then not be admitted if the patent proprietor had been notified of the grounds prejudicing the maintenance of the patent. "
• The implication is that the patentee does not need to file any auxiliary requests in its response to the opposition but can await the preliminary opinion of the OD.
• Rule 116 was introduced as Rule 71a in  1995. The background can be found in the Notice in  OJ 1995 p.409 which reads in the relevant part (for opposition):  "If the [] patent proprietor has been told beforehand that [] revocation is likely (and why), then he can reasonably be expected to react if given adequate time to do so." 
• See also GL E-VI 2.2.2 "Amendments filed in preparation for or during oral proceedings": "if the opposition division departs from its provisional opinion set out in the annex to the summons and – contrary to that opinion – concludes during oral proceedings that an objection prejudices the maintenance of the patent, a request of the proprietor for (further) amendment will normally be admitted into the proceedings." (note, this instruction seems to assume that the objection was raised by the opponent before the summons and considered by the OD in the preliminary opinion and that the OD expressed a view in favour of the patentee on the objection in the preliminary opinion).
• The present Board "does not share the views expressed in T 754/16. Rule 116(2) EPC concerns a very specific situation, as is made clear in the first sentence of the provision, namely a situation where the Opposition Division decides to notify the patent proprietor of grounds prejudicing the maintenance of the patent. "
• The Board takes Rule 116(2) first sentence to mean that: "only if the patent proprietor has been notified of the grounds prejudicing the grant or maintenance of the patent, [the OD may invite the proprietor] to submit [amended claims]".
•  "The first subclause in the first sentence of Rule 116(2) EPC thus expresses nothing other than that the Opposition Division should only invite the patent proprietor to present amended claim requests if it has notified it of grounds of opposition which may, in its view, prejudice the patent's maintenance. In other situations, no such invitation should be made."
• " the second sentence of Rule 116(2) EPC, according to which the third and fourth sentences of Rule 116(1) EPC apply mutatis mutandis to the situation described in the first sentence of Rule 116(2) EPC, does not support the view that claim requests do not fall under Rule 116(1) EPC. This statement rather clarifies that even amended claim requests which are submitted in reply to an invitation of the Opposition Division under Rule 116(2) EPC are subject to the Opposition Division's discretion under Rule 116(1) EPC. The Board understands the term "mutatis mutandis" to primarily take account of the possibility that if the Opposition Division invites the patent proprietor to file an amended claim request to address a specific objection and the patent proprietor complies with this invitation by filing the required amendments by the date set under Rule 116(1) EPC, its discretion not to admit that claim request may effectively be reduced to zero."
• "The Board further notes that if, as opined in Reasons 1.3.2 of T 754/16, an Opposition Division had no discretion not to admit an amended claim request whenever it had not notified the patent proprietor "of the grounds prejudicing the maintenance of the patent", this would mean that any such claim request - regardless of its contents and regardless of when it was made - would automatically be admitted into the opposition proceedings. A certain development in the opposition proceedings does not, however, justify the submission of any kind of claim request - possibly including claim requests which are not even related to the specific procedural development in question - at any point in time. Such a result must be avoided, which speaks additionally against this approach."
• "As an interim conclusion, Rule 116(2) EPC does not limit the Opposition Division's discretionary power under Article 114(2) EPC and Rule 116(1) EPC. In particular, the existence of this discretionary power does not depend on the contents of the Opposition Division's communication under Rule 116(1) EPC. "
• I note that this conclusion may still be correct even when reading it as: "Rule 116(2) EPC does not limit the Opposition Division's discretionary power under Article 123(1) EPC and Rules 76 and 81 EPC."
• " Applying the principles set out above, the Opposition Division had discretionary power not to admit auxiliary request 4A, even though it had not included in its communication under Rule 116(1) EPC the novelty objection based on Example 4 of D6."

EPO 

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

T 1776/18 (II) - What is late-filed ?

Key points

• This is the second post about this decision.
• The Board in the present decision addresses the issue of "Article 114(2) EPC - the concept of "not submitted in due time"
• "When answering the question of whether [a submission was submitted not in due time], one can either rely on fixed criteria, such as a certain point in time in the proceedings after which submissions are considered late, or, alternatively, on relative criteria, such as whether the submission was made according to the principle of procedural economy or in direct response to a new submission by another party. Relative criteria are necessarily a moving target."
• "[...] in appeal proceedings the fixed point in time after which a certain submission is late-filed is the end of the first-instance proceedings. Considerations such as whether a party could not have adequately reacted to a request or document filed at a late stage of the first-instance proceedings do not determine whether a submission is late-filed, but are instead relevant to the question of how a board should exercise its discretion"
• I think many parties would be surprised if a timely reply to a communication of a Board under Rule 100(2) EPC would be seen as late-filed, but this appears to be implied by the Board's remark that the cut-off point is the end of the first instance proceedings. In fact, the Board appears to suggest that everything newly presented in an appeal is by definition late-filed, which seems consistent with the RPBA.
• "For opposition proceedings, there are also fixed points in time which allow the deciding body to determine whether a submission was filed in due time within the meaning of Article 114(2) EPC. In particular, evidence submitted by an opponent after the end of the opposition period under Article 99(1) EPC may be considered to not have been filed in due time (T 1734/08, Reasons 2; see also T 66/14, Reasons 2.3). For the patent proprietor, a corresponding point in time would be the end of the period under Rule 79(1) EPC. Accordingly, the admittance of party submissions made after these points in time would generally be subject to the Opposition Division's discretion under Article 114(2) EPC. This, however, does not mean that such submissions should in principle not be admitted."
• These observations seem correct to me, as far as they concern objections of the opponent against the claims as granted and the reply of the patentee to objections in the Notice of opposition. The Board's later conclusion, however, refers to the date set under Rule 116(1) EPC, which is a different point in time. 
• "According to an alternative view, the question of whether a submission is not submitted in due time - which determines whether or not an Opposition Division has discretion under Article 114(2) EPC not to admit that submission - does not depend on fixed points in time but rather on relative criteria. Such criteria are, in particular, whether the party making the submission acted "in accordance with the principle of procedural economy" and observed "a fair degree of procedural vigilance", which is assumed to be the case if a submission was filed, for example, as a reaction to an unforeseeable development (T 502/98, Reasons 1.5) or in direct response to a change in the subject of the proceedings (T 487/13, Reasons 6.2)."
• "In any case, an approach relying on relative criteria tied to individual procedural circumstances has, in the Board's view, the grave disadvantage that the Opposition Division's discretionary power is then not clearly and predictably delimited by the law itself. Accordingly, an approach relying on fixed points in time is also preferable when considering Article 114(2) EPC as providing the legal basis for disregarding claim requests [as the Board does]."
• As a comment, the  Board's analysis may touch on a somewhat philosophical point: if holding a submission inadmissible would be a violation of the right to be heard under Article 113(1), does the panel still have discretionary power to admit under Article 114(2)?
• 
  
• The Board then reasons that the word "admitted" in Rule 116(1) ("New facts and evidence presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed") means that the OD has the discretion to admit (or not) even if the subject of the proceedings has changed, which would be incompatible with the approach relying on relative criteria, according to the Board.
• " As an interim conclusion, a claim request which is filed in opposition proceedings after the date set under Rule 116(1) EPC is not submitted in due time within the meaning of Article 114(2) EPC. In the present case, auxiliary request 4A was therefore not submitted in due time."
• "Depending on the specific circumstances, it may also be the case that the Opposition Division has very little discretion not to admit a certain submission which is provided at a certain point in time in reaction to a certain development in the proceedings. In this context, aspects such as procedural economy and procedural vigilance can and should be taken into account. However, this concerns how the Opposition Division exercises its discretion rather than whether it has any discretion in the first place. "
• 
  

EPO 

The link to the decision is provided after the jump.

T 2012/20 - Who signs the notice of appeal

Key points

• This appeal deals with a request for re-establishment in connection with the appeal fee. The appeal fee was paid at the reduced rate in 2020. No SME declaration was filed when filing the Notice.
• The EPO sent out a letter "for the examining division" informing the applicant/appellant that the missing amount could still be paid within two months from the letter or alternatively the declaration could be filed. This letter was sent 24.11.2020.
• The appellant filed a request for re-establishment within the two-month period from the letter and paid the appeal fee at the full rate. 
• The Board grants the request for re-establishment. 
• "In view of all these factors (COVID-19, information provided in FAQ, electronic means previously used by the EPO, filing of appeal more than two weeks before deadline), the board considers that in the particular situation of the case at hand there are exceptional circumstances leading to the conclusion that due care had been taken and consequently justifying the re-establishment of rights."
• The only claim request is, however, not admitted under the "should have been filed" prong of Art. 12(6) RPBA 2020. Hence, the appeal is dismissed.
• A divisional application was filed.
• Back to the re-establishment request: " In the present case the representative had instructed the assistant via email (13 November 2020, 10:41 hrs) to promptly file an appeal. ... It is also apparent from the file that, as a result of the representative's email, the appeal was filed on the same day (electronic receipt of the appeal generated on 13 November 2020 at 14:00 hrs) and an appeal fee was paid. In the notice of appeal "the appeal fee" is mentioned, whereby no reference is made to a reduced fee. The board concludes from the evidence presented that the assistant knew how to file the appeal and how to pay the appeal fee, but, for whatever reason, paid the reduced fee instead of the normal fee."
• Noteworthy is that the Notice of appeal and the Form 1038E with the debit order both mention the name of a professional representative as the signature. The receipt indicates that the EPO smart card in the name of the same professional representative was used for submitting the documents with online filing, in turn implying that the assistant also used the PIN code of the smart card.
• There is some case law suggesting that errors of professional representatives are not easily compatible with the due care for re-establishment, unlike errors of assistants.
• The Board does not comment on whether the task of preparing, signing, and submitting a Notice of appeal can be delegated to an assistant and on whether, generally, an assistant can sign letters to the EPO "with the signature of" a professional representative. 
• The time limit for filing the Notice of appeal expired only on 28.11.2020, so the EPO's letter of 24.11.2020 was a warning about the incorrect appeal fee within the appeal period. The Board, however, considers it insufficient in the circumstances of the case. 
• "It is evident that a representative reading this information expects to be promptly warned if a deficiency is apparent. In the case at hand, such a deficiency was readily recognised by the European Patent Office, as can be seen from EPO Form 2901 (see A3). The latter was generated on 17 November 2020 (date at the bottom of the form), but post-dated 24 November 2020 - which is the normal procedure within the EPO (see, for example, G 12/91, Reasons 9.1) - and sent via registered mail. It was received by the appellant on 9 December 2020. Although registered mail was the official way of communication of the EPO, a representative reading the above response of the EPO to the FAQ would have expected the warning to be forwarded by the fastest possible means, especially if the time limit for paying the appeal fee had not yet expired, but was close to expiry. This is all the more applicable, since at that time the restrictions due to the COVID-19 pandemic were highly likely to impact the normal functioning of postal services (see also A1 and A2)."
• As a comment, G 2/97 confirmed that "The protection of legitimate expectations also requires the EPO to warn the applicant of any loss of rights if such a warning can be expected in all good faith." It seems reasonable that the EPO must (try to) give the warning effectively and that sending a registered letter may not always be sufficient.
• However, as I understand it, if the protection of legitimate expectations applies (alternatively the principle of good faith), that principle acts as a remedy on its own, and the request for re-establishment would be moot. The fee for re-establishment could be refunded.
• 
  

EPO 

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

T 2442/17 - If you need more time, you have to ask for it

Key points

• The O/D decided to admit an auxiliary request filed during the oral proceedings. The opponent asks the Board to reverse this. The Board reviews whether the OD has not misused its discretion (that the Board is willing to consider the possibility of reversing a decision to admit a request is interesting of its own).
• "The opponent also argued that the patent proprietor should have reacted before the oral proceedings since a lack of novelty objection in view of document D3 (DE 695 28 476 T2) had already been raised with the grounds of opposition."
• "According to Rule 116(2) EPC the opposition division has the discretion to admit new documents, i.e. new amendments to the description, claims and drawings, filed after the final date for making written submissions fixed by the opposition division in the annex to the summons to oral proceedings."
• Rule 116(2) in fact begins with a statement about the patentee being notified of the objections and being invited to submit amended claims. The Board, however, does not discuss that aspect of the provision.
• The Board applies the deferential review of discretionary decisions as specified in G 7/93.
• "The Board is of the opinion that the opposition division took into account the right criteria, since it considered the amendment to the claim to be suitable to overcome the objection of lack of novelty and also that the subject-matter of the claim was more restricted than that of claim 1 as granted"
• "The opposition division also considered the amendment to be a reaction to the course of the proceedings, since in the annex to the summons to oral proceedings it had referred to the possible relevance of D3 without elaborating on the matter."
  
• "The Board agrees with the opponent [] that an objection of lack of novelty had been raised with the notice of opposition with respect to D3. However, as argued by the patent proprietor, that objection was not fully substantiated, since it was not indicated why the load bearing assembly of D3 should be considered to be suitable for use in an elevator system []. The Board thus does not find fault in the opposition division's finding that the filing of auxiliary request 1 at the oral proceedings is to be seen as a reaction to the course of those proceedings.
• "According to the minutes of the oral proceedings, see point 5 thereof, the opponent did not request an adjournment of the oral proceedings nor did it request additional time to prepare a new line of argumentation. It therefore appears that at that time the opponent considered itself able to deal with the amended situation 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 1776/18 - (I) Amended claims are facts (?)

Key points

•  Board 3.3.09 gives an analysis of the legal basis in the EPC for holding amended claims inadmissible. The two main candidates are Article 114(2) and Article 123(1) EPC. 
• The facts of the case are that the OD held auxiliary request 4A inadmissible that was filed during the oral proceedings, in reply to a novelty attack based on D6. The Board has to review this decision of the OD. The Board ultimately approves of it. In doing so, it must deal with Rule 116(2) EPC and T 754/16 which found that "requests filed after the final date set for making written submissions, can only then not be admitted if the patent proprietor had been notified of the grounds prejudicing the maintenance of the patent".
• The patentee argues that:  "the request had been filed in direct reaction to the Opposition Division's conclusion that the claim under scrutiny lacked novelty over Example 4 of D6. This objection had been raised for the first time in one of the opponents' submissions filed on the last day fixed under Rule 116(1) EPC. Under these circumstances, the Opposition Division had no discretion not to admit the request. The reasoning of T 754/16 was applicable by analogy. According to the cited decision, auxiliary requests filed during oral proceedings in direct response to a reversal of the Opposition Division's preliminary opinion had to be admitted."  
• The Board: " The Opposition Division decided on the admittance of auxiliary request 4A under Article 114(2) EPC. In view of the patent proprietor's allegation that the Opposition Division did not have any discretionary power for its decision not to admit auxiliary request 4A, the Board will firstly assess whether Article 114(2) EPC provides a legal basis for such a discretionary decision. Secondly, it will be analysed whether the concept of "not submitted in due time" in Article 114(2) EPC relates to fixed criteria such as a certain point in time in the proceedings or, as alleged by the patent proprietor, to relative criteria such as individual procedural developments. Thirdly, it will be assessed whether Rule 116(2) EPC should, as alleged by the patent proprietor with reference to T 754/16, be understood as making the exercise of the Opposition Division's discretionary power subject to conditions other than that the amended claim request was not submitted in due time. Fourthly, the Opposition Division's way of exercising its discretion will be reviewed." 
   
• Board 3.2.01 explained that the legal basis is Article 123(1) EPC in T 0966/17, for the opposition division in conjunction with R.79(1) and R.81(3). In the petition for review case R 6/19, the same conclusion was arrived at.
•  It may be added that landmark decision T 0406/86 concluded that R.79(1) and R.81(3) [strictly speaking their predecessors in EPC 1973] provide the legal basis for holding claim amendments inadmissible in opposition (see my post on that decision). The legal basis was identified in T 406/86 as Art. 101(2) EPC 1973 which provides that: "[i]n the examination of the opposition, which shall be conducted in accordance with the provisions of the Implementing Regulations"; essentially the same provision can be found in Art. 101(2).
• However, as described in CLBA 2022 IV.C.5.1.4.a, "In many decisions the boards have relied on Art. 114(2) EPC " for holding amended claims inadmissible.
• As noted above, "the Opposition Division decided on the admittance of auxiliary request 4A under Article 114(2) EPC. In view of the patent proprietor's allegation that the Opposition Division did not have any discretionary power for its decision not to admit auxiliary request 4A, the Board will [first] assess whether Article 114(2) EPC provides a legal basis for such a discretionary decision. 
• Implicitly, the Board may have considered that the OD's decision to hold the amended claims inadmissible could not be supported by Article 123(1) as ultimate  legal basis; or the Board had to qualify amended claims as fact in order to rely on Rule 116(1) EPC.
• "There is a long line of case law (e.g. T 171/03, Reasons 5; T 811/08, Reasons 4.2; T 1100/10, Reasons 8 and 11; T 1933/12, Reasons 4.1; T 2385/12, Reasons 1.8; T 108/14, Reasons 3; and T 44/17, Reasons 2) according to which claim requests may be disregarded under Article 114(2) EPC. "
• "There is also an alternative view. ... The Enlarged Board deduced ... that the first sentence of Article 123(1) EPC provided a legal basis for the EPO's discretion as to whether or not to admit claim requests. It left open whether or not Article 114(2) EPC constituted such a legal basis as well (R 6/19, Reasons 5 to 11; cf. also T 966/17, Reasons 2.2.1). " 
• See also J 14/19, reasons 1.6.
• The Board then turns to T 1914/12 because Article 114(2) is limited to facts (and evidence), so the question is whether amended claims are facts in the sense of that provision. "In T 1914/12, last paragraph of Reasons 7.1.3.a), it is stated that new sets of claims are not facts within the meaning of Article 114 EPC. "
• The present Board concludes that amended claims are facts in the sense of Article 114(2), such that Article 114(2) provides a basis for holding amended claims inadmissible. In order to arrive at this conclusion, the Board rebuts the reasoning in T 1914/12, first summarizing that reasoning as follows: "In T 1914/12, last paragraph of Reasons 7.1.3.a), it is stated that new sets of claims are not facts within the meaning of Article 114 EPC. This is reasoned by references to previous decisions, namely to T 912/91, [...] However, all of these decisions are concerned with a very specific question, namely the question of whether Article 113(1) EPC and [G 4/92] prevent a Board from deciding on the maintenance of a patent on the basis of auxiliary requests made during oral proceedings in which the opponent was absent. "
• G 4/92 held that "A decision against a party who has been duly summoned but who fails to appear at oral proceedings may not be based on facts put forward for the first time during those oral proceedings [and that are exceptionally admitted into the proceedings]" (hn.1), the opinion is limited to inter partes proceedings in that it has "no bearing" on ex parte proceedings (r.1) The Enlarged Board indicated that the same principle applies to evidence (hn.2) but not to arguments (r.10) as these do not constitute grounds or evidence under Article 113(1). The opinion is silent on amended claims.
• The present Board states that it "is of the view that in particular the statements in T 912/91 and T 133/92 that the submission of auxiliary requests is not a fact "within the meaning of the above decision" (i.e. opinion G 4/92) cannot be generalised."
• This may imply that according to the present Board, the EPC has two concepts of 'fact'. 
• "For the purposes of Article 114(2) EPC, the present Board thus considers a patent claim to be a statement of technical facts in legal terms. This is also apparent in claim interpretation. While determining the subject-matter of a patent claim is overall a question of law, it also involves questions of fact, such as the meaning of a certain technical term at a certain point in time."
• As a comment, claim interpretation seems to be rather different in nature than submitting amended claims. The Board decides on the claim interpretation, but filing amended claims is the prerogative of the patentee (or applicant) under Article 113(2).
• I find the Board's reasoning difficult to follow at this point. A patent claim (if written customarily) is not a statement that can be true or false.
  
• Jumping from r.4.5.5 to r.4.5.8 of the Board's extensive reasoning: "[a] teleological interpretation of Article 114(2) EPC supports the understanding that substantiated claim amendments are facts within the meaning of this provision. The purpose of Article 114(2) EPC is to provide the deciding body with an effective means to prevent parties from unnecessarily protracting the proceedings. ...  Moreover, as to whether a late-filed submission may unnecessarily protract the proceedings, there is no principal difference between objections submitted by an opponent and amended claim requests submitted by a patent proprietor. Applying Article 114(2) EPC to both types of party submissions thus also ensures that the parties are treated equally and according to the same criteria, which guarantees equality of arms."
• As a comment, Article 114(2) EPC refers neither to objections nor to requests but to facts and evidence. 
• The Board: "As to Article 123(1) EPC as a possible legal basis for not admitting claim requests, it does not seem straightforward that the first sentence of this provision is concerned with any discretionary power conferred to the EPO. "
• The key part of Article 123(1) seems to be that: "The European patent application or European patent may be amended in proceedings before the European Patent Office, in accordance with the Implementing Regulations."
• " Rule 81(3) EPC as such does not appear to confer any discretionary power to the EPO either; rather, it concerns certain non-mandatory ("where necessary") contents of a communication of an Opposition Division under Article 101(1) EPC. Moreover, the requirement for a submission to not have been "submitted in due time" as a precondition for the exercise of discretion by the EPO only exists under Article 114(2) EPC, and not under Article 123(1) EPC. "
• As to the first sentence, I think this was already addressed by T 406/86:  “Although Rules 57 and 58 EPC [1973] directly concern only those criteria to be applied by the Opposition Division when the question of inviting the patent proprietor to make amendments arises, they indicate clearly and conclusively, so the Board is convinced, that even if not explicitly invited by the Opposition Division the patent proprietor may expect his proposals for amendments [i.e. auxiliary requests] to be allowed [i.e. admitted] only if it [=the OD] decides after exercising due discretion that it [=the OD] regards them as appropriate and/or necessary in the above sense. " (see also T 0295/87 (link)).
• As a further comment, an advantage of Article 123(1) EPC is that the Administrative Council can clarify the Implementing Regulations if it wishes. 
• As to the Board's second sentence, under Rule 80 EPC amended claims can be held inadmissible even if not filed late. 
• Of note, at the time of T 406/86, Rule 80 EPC did not yet exist. It was introduced in 1995, see OJ 1995, p.409.

• "Moreover, even if one were of the opinion that a patent claim as such does not qualify as "facts or evidence" within the meaning of Article 114(2) EPC, an amended claim request must be substantiated in order to become effective (see, for example, T 1732/10, [...]). Unsubstantiated claim requests are not considered validly filed and do not form part of the proceedings (T 1784/14, Reasons 3.7). "
• Unless the purpose of the amendments is self-evident, as the Board notes. The Board considers self-evident amendments to be a case of implicit substantiation.
• "In conclusion, in submissions containing claim requests which are explicitly or implicitly substantiated, factual elements are present. The presence of these factual elements allows Article 114(2) EPC to be relied on as a legal basis for disregarding claim requests which are not filed in due time (see J 14/19, Reasons 1.6 and 1.7)."
• The substantiation of amended claims may involve factual assertions in certain cases. Still, the prudent approach seems to be considering this on a case-by-case basis and identifying the precise factual assertions of the patentee when holding amended claims inadmissible on this ground. 
• The Board then has to deal with the issue of whether amended claims must actually be substantiated in the first instance proceedings. "Most of the case law on the need to substantiate claim requests concerns claim amendments submitted in appeal proceedings, and in these cases reference is often made to Article 12(2) RPBA 2007 (cf. Article 12(3) RPBA 2020). While this provision is not applicable in opposition proceedings, the principle that a party must contribute to the conduct of the proceedings by substantiating its own requests in a minimum way is not limited to appeal proceedings. This can in particular be deduced from Rule 76(2)(c) EPC, according to which an opponent requesting the revocation of a patent must also provide substantiation for at least one ground of opposition".
• Note, Rule 76(2)(c) EPC is about the opposition and not about claim requests.
• The Board, under r. 4.5.6: "In view of Rule 80 EPC, according to which an amended claim request must be occasioned by a ground for opposition, a claim request must be substantiated by submitting why the amendment is suitable for overcoming one or more grounds of opposition. "
• Rule 80 EPC indeed appears to be a plausible legal basis for the requirement to substantiate claim amendments in opposition. I note that Rule 80 is generally considered to be based on Article 123(1) EPC and/or Article 101(2) EPC.

I will discuss the Board's further reasoning in a later post.

• EPO 

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

T 2726/17 - Filing the notice of appeal with web-form filing

Key points

• The applicant filed a notice of appeal using web-form filing.
• "According to Article 2 of the Decision of the President of the European Patent Office of 10 September 2014 (OJ EPO 2014, A98, "Decision") the filing of appeal documents via the EPO web-form filing service is not permitted, the consequence being that such documents are deemed not to have been received, see Article 2(2) of the Decision. Pursuant to the last sentence of Article 2(2) of the Decision, the sender of such web-form filed documents, if identifiable, will be notified without delay of this deemed non-receipt."
• However, not all is lost.
• " The sender of the notice of appeal was identifiable. Between the actual filing of the notice of appeal on 13 September 2017 and the final date of the time limit for filing the notice of appeal (6 October 2017) there was sufficient time for the EPO to notice the irregularity in the filing of the notice of appeal, to inform the appellant thereof and for the appellant to resubmit the notice of appeal by accepted means. It appears from the file that no such notification was issued. The appellant has confirmed this in its letter dated 4 January 2018."
• "In the light of the above, the Board, in accordance with the principles of legitimate expectations and of good faith (see, for instance, T 14/89, OJ 1990, 432, headnote), considers the notice of appeal as having been duly received."
• As a comment, web-form filing could be used in September 2017 for giving debit orders (in general, i.e. in first-instance proceedings). The prohibition of giving debit orders by webform filing entered into force a few months later.
• "The grounds of appeal were filed on 9 November 2017 again using the EPO web-form filing service."
•  The Board does not comment expressly on why the statement of ground is considered to be validly filed. 

EPO 

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