T 1614/18 - Late filed but prima facie relevant before the OD

Key points

• First-instance opposition proceedings are a different game than opposition appeals, as illustrated by the present decision.
• "The appellant (patent proprietor) contested the decision of the opposition division to admit the late filed document D6."
• The Board: "the competent department [i.e. the OD] has in fact to take such a late filed and "prima facie" relevant evidence into consideration no matter what stage the procedure has reached and whatever the reasons for the belated submission."
• The Board adds that this is "stated in the EPO "Guidelines" VI, 2.1"". Presumably, GL E-VI, 2 is referred to: "In deciding whether to admit facts, evidence or grounds for opposition not filed in due time, their relevance to the decision, the state of the procedure and the reasons for belated submission are to be considered. If examination of late-filed grounds for opposition, late-filed facts or late-filed evidence reveals without any further investigation (i.e. prima facie) that they are relevant, i.e. that the basis of the envisaged decision would be changed, then the competent department has to take such grounds, facts or evidence into consideration no matter what stage the procedure has reached and whatever the reasons for belated submission. In that case, the principle of examination by the EPO of its own motion under Art. 114(1) takes precedence over the possibility of disregarding facts or evidence under Art. 114(2) (see T 156/84).".
• " the Board confirms the conclusion of the opposition division that document D6 is not prejudicial to novelty of claim 1 as maintained."

EPO 

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

T 1081/20 - Discretion independent of Rule 116

Key points

• The OD did not admit an auxiliary request.
• "The admittance of this request was at the opposition division's discretion pursuant to Article 123(1) EPC in conjunction with Rules 79(1) and/or 81(3) EPC (rather than Rule 80 EPC; see T 256/19, Reasons 4.7 [blogpost]). This discretion exists independently of the provisions of Rule 116 EPC (see T 966/17, Catchword 3). A board should overrule such a discretionary decision only if the wrong principles were applied or if the decision was taken in an unreasonable way."
  
• T 0966/17 was discussed here. Headnote 3 of that decision reads: "If the patent proprietor reacts with new requests to a new line of attack by the opponents and a newly filed document in this respect, the decision on admission can take into account whether the requests prima facie appear allowable or whether they should be rejected anyway due to other objections that were in the procedure for some time (see reasons, point 2.4).".
• " In respect of auxiliary request X [filed as "auxiliary request 1a" during the oral proceedings before the opposition division], the opposition division assessed inter alia "prima facie allowability", which is an established criterion as regards admittance. As to the right to be heard, the appellant was additionally given the opportunity to refute the objections raised by the respondent under Articles 123(2) and 84 EPC (cf. minutes, page 5, paragraphs 35 and to 37). The board sees therefore no reason to overrule the opposition's discretionary decision."
• Note,  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. " (which is possibly not the right interpretation Rule 116(2), see  T 1776/18). 

EPO 

The link to the decision is provided after the jump.

T 2204/18 - Was given the opportunity to comment on their admittance

Key points

•  The opponent argued that this request was filed during first instance opposition proceedings one day after the expiry of the time limit laid down in Rule 116(1) EPC. Therefore this request was late filed and should be "treated as such" 
• "The board is of the opinion that [the reasons given below] show that the opposition division properly exercised its discretion "
• As the opposition division confirmed that this request was filed after the time limit laid down in Rule 116(1) EPC (see decision, point 3.1, first sentence), the board is of the opinion that the opposition division was aware that this request was filed late. According to the decision [...] , the opposition division exercised its discretion in admitting this request to the opposition proceedings because the substance of the amendments was prima facie relevant and a fair response to the opponent's arguments and the division's opinion in the summons.
• Apart from that, a request that was admitted in the first instance opposition proceedings is part of the appeal proceedings (see Case Law, V.A.3.4.4).
• Note, this may not exclude the possibility that taking a decision on the request without giving the other party a sufficient opportunity to reply, is a substantial procedural violation such that the appealed decision is to be set aside and the case is to be remitted.
  
  
• " The board is of the opinion that the opposition division properly exercised its discretion in deciding not to consider, i.e. not to admit, the auxiliary requests. Not admitting requests submitted by the proprietor does not constitute a breach of the proprietor's right to be heard, provided that the proprietor has been given the opportunity to comment on their admittance (cf. Case Law of the Boards of Appeal of the EPO, 10th ed. 2022, section V.A.5.6, in particular R 9/11). As explained above, this was the case. Whether this was done in a perfunctory manner cannot be confirmed by the facts available from the minutes or the decision."
• This holding could be seen as implying that the OD can hold requests inadmissible in an arbitrary and capricious way, provided they first listen to the patentee's arguments in favor of admissibility. I'm not sure if that is the correct approach, but the Board refers to a decision of the Enlarged Board. 
• 
  
• 
  
•  EPO 

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

T 0526/21 - Agreeing with choice CPA is abandoning other attacks

Key points

•  " The Board observes that the [inventive step] attacks based on D24 and D34 were raised in writing during the opposition proceedings in reply to the preliminary opinion of the opposition division []. However, the minutes of the opposition oral proceedings (see point 19.) indicate that "The three opponents agreed that D9 was the closest prior art. The proprietor argued that example 2 of D2 would be a better closest prior art [...]". According to the minutes, the choice between D2 and D9 as closest prior art was then discussed but no other document was considered by any opponent. None of the appellants requested a correction of the minutes. In line with T 2730/16, the Board considers that the attacks starting from D24 and D34 were not actively maintained."
• "It follows that these attacks do not form part of the appeal proceedings according to Article 12(2) RPBA 2020. Their admittance into the appeal proceedings is thus at the discretion of the Board according to Article 12(4) RPBA 2020."
• "The implicit abandonment of the attacks based on D24 and D34 by appellant 1 prevented the decision from being based thereupon. A re-introduction of these attacks would be against the purpose of the appeal proceedings to constitute a judicial review of the appealed decision and against procedural economy."
• Note, the Board here seems to apply Art. 12(6).
• 
  

EPO 

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

T 1841/18 - A visit of a factory as prior art

Key points

• "Both parties agree that Mr. G. inspected a machine supplied by the patent proprietor during a visit to Caffitaly before the filing date of the patent in suit."
• This is asserted as a public prior use.
• "The opposition division decided, after having heard Mr. G. as a witness [see the minutes], that the above mentioned inspection did not amount to a disclosure of the inspected machine because the circumstances of the inspection implied the existence of an obligation to maintain secrecy."
• There was a confidiality agreement between Caffitaly and GIMA. GIMA was the parent company of IMA, and IMA is the employer of Mr. G.
• "Mr. G. during the inspection, acted in the best interests of GIMA and IMA, which was to keep the observed technical information confidential", according to the OD.
• "there is no evidence on file of the existence of a non-disclosure agreement directly involving IMA at the time of the inspection because the non-disclosure agreement contained in D1m was signed by GIMA and Caffitaly"
• "Mr. G.was therefore not directly bound by these contractual obligations, irrespective of the extent thereof"
• "Document D1r, ... only shows that IMA owned 65% of the shares of GIMA."
• "the transfer to IMA of the totality of the [GIMA's] business assets was only finalized after the inspection, and there is nothing in D1r supporting the patent proprietor's allegation that when IMA acquired a controlling majority of the shares of GIMA (65%, see D1r), also these specific secrecy obligations were taken over."
• " the witness [Mr. G.] explicitly confirmed that he was not aware of any confidentiality obligation during the inspection (page 8, second paragraph of the minutes of the taking of evidence), and that at that time GIMA was a competitor of IMA" 
• " the opponent convincingly demonstrated that the assumption, at the basis of the appealed decision, that Mr. G. was not a member of the public, is unjustified. 
• As a consequence of the above, the opponent also convincingly demonstrated that the inspected machine (see D1e) was made available to the public, and is therefore prior art."
• The patent is revoked.
• I note that the Board also mentions that  "Caffitaly signed a non-disclosure agreement with the patent proprietor" and that "the patent proprietor [submitted documents] to show that the sale of the allegedly disclosed machine was made under secrecy".
• The visit was on 25.08.2010. The patent's filing date was more than six months later, on 16.03.2011. Article 55 is, therefore, of no avail.
• The declaration of Mr. G. does not seem to explain why he visited the site and, especially, why he was granted access.
• As a comment, however, without checking the complete file, there appears to be no evidence on record from Caffitaly confirming that they granted Mr. G. access to their site without expecting any confidentiality and giving any explanations of why they did so. The OD notes in its decision that Mr. G stated that "he was not aware of the specific details regarding the organisation of the visit as it had been organised by Mr. T.". Mr. T. also was present during the visit but gave no witness testimony.  
• I find the Board's decision remarkable. However, courtesy obliges me to comment no further here.
• There is also an issue of the effect of a national court's judgement on the matter discussed in the decision.
• Note, there is also a case T 1814/18 that is closely related. 
• 
  
• EPO 

The link to the decision is provided after the jump.

R 0011/21 - When to object under Rule 106?

Key points

• In my post about T1891/20, I raised the question whether "it make sense to raise an objection under Rule 106 after the Board orally announces "its decision not to admit the auxiliary request into the proceedings"? Can a Rule 106 objection be raised pre-emptively before the Board commits the (perceived) procedural defect?"
• The Enlarged Board in this decision gives a partial answer, by finding that "an objection [under Rule 106 EPC] cannot be raised before its cause has actually come into existence".
• "The petitioner [patentee] submitted that the non-admittance of the auxiliary requests [filed with letter] of 13 January 2021 into the proceedings constituted a first fundamental procedural defect."
• "Regarding compliance with Rule 106 EPC, the petitioner referred to page 15, paragraphs 3 to 5, of the letter dated 13 January 2021 [where] the [patentee] announced, "for merely precautionary reason", that it would challenge "any contrary decision [i.e. to hold the auxiliary request inadmissible]" by filing a petition for review according to Article 112a EPC."
• The Enlarged Board: "Under Rule 106 EPC, the objection has to be raised in respect of "the procedural defect" and dismissed by the Board. This implies that an objection cannot be raised before its cause has actually come into existence. The purpose of Rule 106 EPC is to give the Board a chance to react immediately and appropriately by either removing the cause of the objection or by dismissing it (see also Case Law of the Boards of Appeal, 10th edition 2022, "CLBA", V.B.3.6.1 and R 3/20, point 2.2.1 of the reasons). In other words, an objection cannot be formulated prematurely (see R 8/08, point 1.2.2 of the reasons; R 17/10, point 2.3 of the reasons; R 21/11, point 10 of the reasons)."
• "The statements on which the petitioner is relying were contained in the letter dated 13 January 2021, with which the new claim requests were filed and, hence, at a point in time at which the Board had not yet taken any steps concerning these claim requests."
• Note, this leaves open that it is sufficient to object if a Board had taken some step concerning the admissibility of the claim requests.
• "As far as the appeal procedure subsequent to the filing of the letter dated 13 January 2021 is concerned, there is nothing on file - neither in the petitioner's submissions before the Enlarged Board nor in the minutes of the oral proceedings before the Board - which would suggest that the petitioner made submissions which could qualify as an objection under Rule 106 EPC."
• "the petitioner has not submitted - nor was it apparent to the Enlarged Board - that an objection could not have been raised during the appeal proceedings, for instance at the oral proceedings before the Board."
• " it must be concluded that the requirements under Rule 106 EPC have not been met in relation to the asserted procedural defect concerning the non-admittance of the auxiliary requests of 13 January 2021. As regards this complaint, the petition is therefore clearly inadmissible."
•  Take away message: object, object, object; and repeat the objection all the time (until case law clarifies the right time to object).
  
  
• The petitioner also challenged the decision to hold the claim request inadmissible by arguing that the decision on that point was insufficiently reasoned, which in turn can qualify as a violation of the right to be heard. This 

EPO 

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

T 1720/20 - The literally photographic approach to priority entitlement

Key points

• The priority document is in Chinese. The PCT application was also filed in Chinese. How do we know that the applicants are the same if the Chinese characters look slightly different? What if the transcribed name in English is different?
• "the opposition division concluded that the priority document of the patent in suit was filed by "Lota (Xiamen) Industrial Co. Ltd.", whereas the PCT application of the contested patent was filed by "Xiamen Lota International Co. Ltd.", i.e. a different legal entity. The proprietor of the patent in suit was therefore not entitled to claim priority validly, and D8 [publication of the priority application] destroyed novelty of the claimed subject-matter."
• The Board: "Irrespective of the exact translation of the applicant's name into English, the Chinese characters stating the name of the applicant are identical in the priority document D8 and the corresponding PCT application D10."
• "When photographically comparing the Chinese characters of the first part of D8 and D10, no difference can be seen, as acknowledged by the opposition division. A comparison with D11, a document certified by a Chinese notary, leads to the same result."
• " The respondent [opponent] argued that even small differences in Chinese characters may considerably change the significance of a word. To illustrate this, the respondent showed a presentation (D17) highlighting the small differences between some Latin letters such as "l" and "I" and continued to highlight possible small differences in the Chinese characters of the applicant's name in D8 and D10."
• "While it is acknowledged that small differences in characters may, in certain cases, change their meaning completely, the current dispute is about whether the alleged small differences in the Chinese characters highlighted by the respondent in D8 and D10 are due to the fact that they relate to the names of different legal entities. No proof for this was submitted."
• At any rate, the present decision illustrates that determining the identity of the applicant may involve matters of judgement. 

EPO 

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

T 0690/18 - Board confronts party, does not admit response

Key points

•  The Board finds AR-1 to be not inventive over D2 because "the claimed subject-matter defines an arbitrary modification of the oven according to D2".
• The patentee files AR-2 during the hearing before the Board
• As a preliminary development, "In contrast to the approach developed in the [decision of the opposition division], the provisional opinion issued by the Board envisaged an alternative scenario as to how to arrive at the claimed subject-matter [of AR-1, presumably, AR-2 not having been filed yet] starting from the embodiment of Figure 1 in D2."
• In the preliminary opinion "the Board stressed that the introduction of an additional thermally insulating layer between the induction coil and the ferrite layer would have led to the claimed subject-matter. Such a modification was considered then to solve the problem of protecting the magnetically insulating means from the effects of excessive heat."
• Now the key event" "In the course of the oral proceedings before the Board, the proprietor was confronted with a revised provisional analysis of D2 from the Board according to which the claimed invention did not solve any technical problem due to the absence of a technical effect."
• I understand this as meaning that during the oral proceedings, the Board confronted the proprietor with a new ("revised") analysis of D2, i.e. one or more members of the Board said something to inform the patentee of their new analysis of D2. 
• The Board gives no details of what this new analysis precisely was. Was a new paragraph of D2 cited? A new interpretation? New common general knowledge used to interpret something? 
• Does the Board give the patentee a chance to respond by filing the auxiliary request?
• No.
• The Board: " inventive step attacks against claim 1 of auxiliary request 1 starting from D2 were subject to the appealed decision. The first objection therein relied on D2 and common general knowledge. By the end of the corresponding section of its statement of grounds of appeal (pages 16-18), the opponent, in a summary of its D2-based inventive step attacks, stressed that D2 was also put forward as a sole document"
• The Board does not state that the inventive step attack decided on in the appealed decision was based on the same essential reasoning as the "revised provisional analysis" of the Board.
• " the Board is not bound in any manner by the content of its provisional opinion"
• "The circumstances referred to by the proprietor do not constitute exceptional circumstances, but relate, on the contrary, to ordinary aspects of the appeal proceedings. For there is nothing exceptional in the Board, as a result of a preparatory meeting or as a result of arguments presented during the oral proceedings, assessing a situation differently from its provisional opinion, thus diverging from or revising its provisional analysis. "
• It may be added that the Board does not cite Article 113(1) and accordingly does not expressly comment on how the decision complies with that provision. 
• "Moreover, the amendments introduced in claim 1 of auxiliary request 2 do not prima facie overcome the issue of lack of technical effect raised against claim 1 of auxiliary request 1. The additional limitations, ... refer to structural aspects of the thermally insulating layer. They are without any bearing on the above finding that said thermally insulating layer does not provide any additional technical effect over the thermally insulating layer present between the induction coil and oven wall in D2."
• Adding features to a claim seems prima facie a suitable reply to me to an inventive step objection. The Board doesn't state that D2 already teaches the added features. 
• As a comment, it would have been useful if the Board could have explained in more detail how the patentee's right to be heard under Article 113(1) was safeguarded. What is the purpose of the Board confronting the patentee with "a revised provisional analysis of D2 from the Board" if the Board holds the patentee's response inadmissible? 
• I do not exclude that there is some principle of good faith that when the Board asks a question (or "confronts" a party), the party can legitimately expect to be given a fair opportunity to reply, even if, strictly speaking, the Board was not required to ask the question under Art. 113(1). Giving a party a  fair opportunity to reply may involve allowing the party to file appropriate evidence or auxiliary requests, in my view, depending on the circumstances (and to have such evidence or requests duly considered on the merits, for that matter, i.e. admitted and then considered on the merits by the judicial panel).

EPO 

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

T 0149/20 - Broad claims and support

Key points

• The requirement of support of Art.84 is sometimes used by Examining Divisions to refuse claims that are considered "too broad" without a need to find prior art that anticipates the claimed subject-matter or makes it obvious. 
• The present Board: "With regard to the requirement that claims are supported by the description, decision T 630/93 stated the following [] in Reasons 3.2: "[...] it must, however, be kept in mind, that the main purpose of a claim is to set out the scope of protection sought for an invention [...]. Therefore, the function of the essential features, although they normally are expressed in technical terms, is often to define the borders of an invention rather than to define the invention in detail within the borders. The detailed definition is normally made by the additional features, which may concern specific embodiments of the invention, in dependent claims appended to the main claim. [...]". Thus, in view of decision T 630/93, Reasons 3.2, the crucial issue here is whether the features of claim 1 clearly define the borders of the invention as necessary to prosecute the application."
• The cited paragraph of T 630/93 continues with:  "Thus, essential features often can be of a very general character, in extreme cases they could indicate only principles or a new idea. The degree of generalisation is, however, always dependent on the prior art which has been disclosed."
• 
  
• T 630/93 also states: "As explained above, when deciding upon how much detail concerning an invention must be identified in a claim in order to meet requirement (b), it is necessary to relate the invention to the prior art. '
• "To the Board, therefore, it appears that the applica- tion, in fact, discloses a new principle. It has thus not been shown that it is known to determine successive gradients as proposed by the Appellant. Therefore, a claim having a broad scope is justifiable. It is not necessary to identify in detail in which way the said comparison or said speed control is performed. The skilled person will get this information from the description (e.g. corresponding to Figure 6), where a preferred embodiment of the invention is described. However, as has been suggested by the Appellant, the skilled person realises that also other ways of comparison and speed control within the borders of Claim 1 would be possible."
• Turning to inventive step of broad claims:  "It is true that the features of Claim 1 do not in a compulsory way lead to the solution of the problem indicated in the description, i.e. that the overrun amount is reduced by a gradual reduction of the speed. However, the features indicated in the claim give the skilled person the possibility to perform such a control in a manner that leads to that result. Thus, in fact, the objective problem to be solved appears to be more general than indicated in the description, e.g. to achieve an almost continuous and graduated speed control. To establish such a generalised objective problem appears, however, in this case to be of only academic interest. '' 
• 
  

EPO 

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

T 0411/19 - (II) Commercially available so anticipating?

Key points

• " [Patentee] had several lines of argument as to why document D2 did not disclose subject matter anticipating that of claim 1. They were ... ii) that the skilled person needed to refer to other documents to identify the sequence of DX-88,"
• The patentee argued that:  " the term "DX-88" was just an internal designation, whereas the actual compound designated by it was unknown. The skilled person needed to refer to other documents to identify what was meant by the term "DX-88". According to the decision under appeal, it could be determined from document D13 that DX-88 was a peptide with a sequence identical to SEQ ID NO:23 of the patent. This approach failed because document D13 was not even cited in the list of documents mentioned in document D2. If the person skilled in the art searched for the sequence of DX-88 in the references actually cited in document D2, they would not have been able to find any conclusive, clear and direct disclosure. It was not permissible under the case law of the boards of appeal, in the assessment of novelty, to combine the disclosure in two separate documents, such as document D2 and document D13."
• The Board: " The second line of argument, that the skilled person would not know that DX-88 represented a peptide having SEQ ID NO: 23, is not convincing. This is because it is evident from the cited passage on page 16 of document D2 that the compound was commercially available from Dyax, Cambridge, MA, under the name DX-88. The skilled person need not to be aware of the structure of the compound referred to as this is an inherent feature of the named molecule. That DX-88 is a peptide identical to SEQ ID NO: 23 of the patent under appeal has been demonstrated, inter alia in patent document D13 with a filing date 7 February 2003 (column 12, lines 19-20, column 62, Table 2). There is no reason to assume that the structure of DX-88 was changed between this date and the filing date of the patent and such change is not probable. "
• As a comment, G 1/92 held that "The chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition."
• Possibly, implicitly, the requirements of G 1/92 are always met for peptides as a product.
• The Board deems it permissible for the examination of novelty to combine document D2 with the actual product DX-88 as prior art in the sense of G 1/92, it seems.
• Still, the sentence in italics above seems not entirely in line with G 1/92.

EPO 

The link to the decision is provided after the jump.

List of remedies

List of remedies - EPC

• Further processing.
• Re-establishment.
• Filing an appeal.
• And remedying a formal deficiency.
• And filing a divisional application.
• Contacting the EPO informally to enquire if the Notice of loss of rights was sent erroneously.
• Requesting a decision under Rule 112(2).
• E.g. on the ground that a letter from the EPO was not correctly notified. 
• Or on the ground that a required action was actually performed in time.
• Invoking the principle of protection of legitimate expectations and/or good faith.
• On the ground that the EPO had sufficient time to warn the party about the deficiency (principle of good faith)
• On the ground that the party justifiably relied on incorrect information from the EPO (principle of protection of legitimate expectations).
• Filing a request for conversion.
• Into a national patent application.
• Into a national utility model.
• After the revocation of the patent in opposition.
• Filing an Abzweigung national patent application in Germany or Austria (can also be done if the patent is revoked in opposition; can also be done shortly after the withdrawal or the grant of the European patent; always check with a national patent attorney).
• Paying the fee and filing the translated claims in opposition with surcharge (Rule 82(3)) or in limitation proceedings (Rule 95(3)).
• Filing a new patent application.
• With priority.
• Without priority, if the priority year has expired, but the invention is still secret, and the patent application is unpublished.
• To benefit from a grace period in certain non-EPC states.
• Directly filing a PCT application without priority if priority can not be validly claimed because of the "first application" rule.
• Directly filing a PCT application without priority to benefit from Art.55 EPC (evident abuse, or display at recognized exhibition).
• Filing a divisional application.
• To prosecute claims directed to unsearched subject-matter; R.137(5) and G2/92.
• To prosecute claims that are held inadmissible in appeal or under Rule 137(3).
• Adding missing parts under Rule 56 or adding correct parts under Rule 56a.
• Filing a sequence listing late with surcharge. 
• Filing the translated claims in opposition and/or paying the fee for publication in opposition late with surcharge. 
• Paying the renewal fee with a surcharge.
• Paying an extension fee or validation fee with a surcharge. 
• Invoking a retroactive interruption of proceedings (Rule 142).
• Invoking a closing day of the EPO or an outage of EPO electronic communication systems (Rule 134(1)) (under R.112(2)).
• Invoking general dislocation of mail in the contracting state where the party or representative resides (Rule 134(2)) (under Rule 112(2)).
• General dislocation of mail in DE or NL: for all parties.
• Invoking natural disasters, war, civil disorder, a general breakdown of the internet or other like reasons at the place of business of the party or representative (Rule 134(5)).
• Invoking that the failure to observe a period for payment is the result of exceptional circumstances beyond the applicant’s control, e.g. by the closure of banks or a ban on cross-border payments (R.134(5) by analogy; OJ 2019 A88)
• Invoking unavailability of an accepted means of filing debit orders under ADA.11.
• Invoking delay in delivery of documents sent by paper post or courier (Rule 133(1)).
• Invoking that payment by bank transfer was timely initiated (Rfees7(3)).
• Invoking that a bank transfer to replenish a deposit account was initiated timely (ADA 7.5).
• Request that a small shortfall of payment is overlooked (Rfees8).
• Invoke the transitional provisions in case of payment of the old fee amount after a fee increase (e.g. OJ 2022 A2 Art.4(3)). 
• Requesting a correction of an error under Rule 139, e.g. in the identification of the party, or in a debit order.
• Filing a new application under Article 61 EPC by the actually entitled person. 

Remedies - Euro-PCT

• Early entry, in combination with any remedies that would work if the application was a direct European application, e.g. further processing, re-establishment, or a correction under Rule 139 (excuse). 
• Request for restoration of priority upon EP entry.
• Re-instatement under Rule 49.6 PCT (though normally further processing is used).
• Request for review of an erroneous decision in the international phase. 

Which remedies did I forget about?

J 0003/22 - Correction of withdrawal

Key points

•  A professional representative explicitly withdraws an application with a fax received on 19.05.2020.
• "The representative had not informed the appellant or his Indian representative of the summons to oral proceedings, the above-cited letter [fax] of 19 May 2020 or the EPO's letter of acknowledgement of the withdrawal dated 25 May 2020. The examining division, having cancelled the oral proceedings, included both letters in the Register of European Patents [**] and closed the file."
• "In October 2020, the appellant found out about the unsolicited withdrawal."
• "On 25 May 2021, the appellant, having hired a new European representative, filed a request for re-establishment of rights into the time limit to attend oral proceedings. This letter was treated by the examining division also as an implicit request for a correction of the withdrawal of the application under Rule 139 EPC."
• The Legal Board: "The case law of the boards on the correction of erroneous withdrawals is well founded and typically deals with withdrawals declared against the intention and without any fault or with very little fault of the appellant. In all these cases, the consequences of the applicant losing their patent application were severe. This fact, however, did not lead the boards to decide in favour of the applicant and to the detriment of the general public's trust in the reliability of the Register of European Patents and in the freedom to work an alleged invention that was no longer claimed by an applicant."
• " Since decision J 10/87, requests for retraction of the withdrawal of an application as a whole have only been held allowable under Rule 88 EPC 1973 and later under Rule 139 EPC 2007 [sic] if the public had not been officially notified of the withdrawal by the EPO at the time the retraction of the withdrawal was applied for.'
• "Since decision J 25/03 (referring to decisions T 824/00 and J 14/04), it is established case law that an entry in the Register of European Patents renders a declaration of withdrawal public in the same way as a publication in the Patent Bulletin."
• "The mentioned decisions already balance the interests of the general public and the applicant. They came to the conclusion that until the public is officially informed by an EPO publication, the applicant's interest in correcting an erroneous withdrawal should prevail. This ceases being the case when the public may rely on an officially published declaration of withdrawal, at least where the file does not contain any indication that this declaration might have been erroneous."
• "The fact that the error occurred without any fault of the appellant does not qualify as exceptional circumstances that would justify differentiating the case at hand from the settled case law. The applicant not being responsible for a mistaken withdrawal is the rule rather than the exception since the second prerequisite for a correction under J 10/87 reads "the erroneous withdrawal is due to an excusable oversight". [*] Most cases deal with errors caused by representatives misinterpreting or ignoring orders of their clients, confounding cases or the like. Thus, the Board sees no reason and no basis to diverge from the settled case law and balance the interests of the general public and the appellant in a way that the latter's loss should outweigh the protection of the general public and its expectation that an explicitly withdrawn application remains withdrawn."
• * - this factor was not confirmed in G 1/12 r.37. See also T 1678/21: "As far as the "excusable oversight" requirement is concerned, the board notes that it is related in nature to the "due care" requirement for re-establishment of rights under Article 122 EPC. However, a correction under Rule 139, first sentence, EPC is a generally applicable legal remedy and is thus available independently of whether the conditions for re-establishment of rights are met (see point 2.3.2 above). This general applicability would appear to be circumvented if the above requirement were to be applied to corrections under Rule 139, first sentence, EPC."
• ** - Article 127 EPC 2000 specifies that "The European Patent Office shall keep a European Patent Register"; the term "Register of European Patents" was used in Article 127 EPC 1973. More importantly, letters are not entered in the Register but in the file (see Article 128). Even though nowadays the file can be inspected through a website called "European Patent Register", table "all documents", legally the file and the Register are two different concepts. In the case at hand, the tab "Event history" shows that the withdrawal was entered in the Register on 22.05.2020 (link); I don't know if this was early in the morning or late in the evening (see also J 6/19). 
• As a comment, the present decision does not cite G 1/12, which only specifies, in the relevant part, that "the request for correction must be filed without delay".
• The Legal Board provides the following headnote: "Once the public is officially informed by an EPO publication of an explicit declaration of withdrawal and without any indication that this declaration might have been erroneous, there is no room for a further balancing of the interests of the general public and the applicant (confirming the settled case law of the boards of appeal".
• As a comment, it is unclear to me what the Legal Board means with "officially informed by an EPO publication". Traditionally, the EPO publications are the Bulletin, OJ, and the patent publications. 
• A practical solution appears to be that the EPO codes the status "withdrawn" in the Register only with some delay (e.g. 10 days after the date of the acknowledgement of the withdrawal that is sent to the applicant). Any interested third party can check the file and see the notice of withdrawal in the online file in the period between receipt of the notice (and addition to the public online file) and the coding to the status "withdrawn". 

Filed in 2001, granted in 2022 / appeal in 2014, decision in 2022

Key points

EP1316073

• PCT filed in 2001, EP entry in  2003, communication in 2004, 2nd communication in 2011 (!), summons in 2017, appeal in 2017, decision of the Board in 2022, intention to grant in 2022 (same primary examiner as in 2002, by the way)

There is one application with a filing date in 2003 and grant in 2022: EP1463945. EP entry in 2004, communications in 2007 and in 2010, summons in 2012, appeal in 2013, decision Board in 2020 with an order to grant the patent with a description to be adapted, intention to grant in 2021, request for correction (wrong drawing used by the EPO), second intention to grant in 2022. 

There are 8 appeal cases filed in 2014 and with a decision published in 2022, e.g. T 0550/14, T 1621/14, T 0144/14, T 2327/14, T 0611/14, T 1499/14, T 0082/14, T 0909/14.

Disclaimer: there could be an interruption of proceedings in a case that is not visible in the public part of the file (not sure about this).

There are 46 patents that were granted in 2022 and have a filing date (or priority date) in 2021. At least one of them indeed relates to treatment for a coronavirus (EP395330).

T 1708/18 - Standard of proof for anticipation by inherent feature

Key points

• Claim 5 is directed to: "An isolated antibody that binds specifically to the isolated polypeptide of SEQ ID NO:2 or SEQ ID NO:4."
• In other words, no structure of the antibody is specified at all in the claim.
•  "The opposition division considered that the subject-matter of claim 5 was novel over the disclosure of each of the documents cited by the opponents, including document D3"
• "According to the opposition division, the opponents "did not show beyond doubt that one of the antibodies disclosed in documents D3, D5, D6, ... or D35 is able to bind the antigen of SEQ ID NOs:2 or 4". "
• The Board: "The question of whether or not a given known antibody binds to a particular polypeptide is a question of fact. It is correct that the inherent binding property of the antibody concerned must be demonstrated by the party making the allegation, i.e., in the case at hand, the burden to prove that the antibody disclosed in document D3 binds to the PCSK9b and/or PCSK9c polypeptides lay with the opponents"
• " however, the standard of proof generally applied at the EPO for deciding on an issue of fact is the balance of probabilities."
• "According to this standard, the EPO must base its decisions on statements of fact which, based on the available evidence, are more likely than not to be true"
• As a comment, see also  T 0768/20: "“the board wishes to point out that the practical relevance of the distinction between the "balance of probabilities" standard and the "beyond reasonable doubt" standard is often overestimated. Both standards are only fulfilled if the deciding body is persuaded that the alleged fact is true, which is not a matter of "just tipping the balance slightly".
• "The board is not persuaded by the arguments of the opposition division and the patent proprietor that, by way of exception, a higher standard must apply in the present case."
• "the opposition division appears to mix up two issues which are distinct and unrelated: i) the issue of which standard of disclosure applies when assessing the legal question of novelty, and ii) the issue of which standard of proof applies when assessing evidence and factual questions. The fact that the standard of disclosure required for a finding of lack of novelty (or for allowing an amendment to the application under Article 123(2) EPC) is the standard of a direct and unambiguous disclosure is immaterial to the question of which standard of proof applies when considering evidence and factual issues in the context of novelty (or inventive step)."
• The Board notes that T 464/94 held that: "In the board's view, it is not justifiable to decide whether a document is prejudicial to novelty on the basis of probability. When a patent is revoked for lack of novelty, the department concerned has to be sure, having taken all the facts and arguments put forward during the proceedings into consideration, that the revocation is justified. In case of doubts, further clarification of the factual situation must be carried out; otherwise, the patent cannot be revoked for lack of novelty".
• As a comment, see Guidelines G-VI,6, "the lack of novelty may be ... implicit in the sense that, in carrying out the teaching of the prior-art document, the skilled person would inevitably arrive at a result falling within the terms of the claim. An objection of lack of novelty of this kind is raised by the examiner only where there can be no reasonable doubt as to the practical effect of the prior teaching".
• "this board notes, however, that it is not clear whether the deciding board [in T 464/94] was referring in this statement to the assessment of legal issues in the context of novelty, such as the question of whether the skilled person would have directly and unambiguously derived a specific piece of information from a document, or to the assessment of factual questions, such as whether particular information was published on a specific date, whether a given process resulted in a particular product or whether the product concerned had a specific property. This board is therefore not persuaded that the board in decision T 464/94 indeed adopted an approach to the assessment of factual questions that was different from that which this board intends to follow.'
• "The factual question to be decided upon in the present case is whether it is more likely than not that a known PCSK9 antibody would bind specifically to the PCSK9b and/or the PCSK9c polypeptide. In assessing this question, any evidence submitted by the parties is considered by the board and such evidence does not necessarily have to be in the form of "wet lab" experiments, as argued by the patent proprietor."
• "The question must be answered in the affirmative in the board's opinion, for the reasons set out in the following."
• "The polyclonal antibody disclosed in document D3 recognises an epitope determined by the linear sequence of a peptide (see point 24. above), which is fully contained within the PCSK9b and PCSK9c polypeptides (see point 25. above). In view of this factual assessment, the board considers that it is more likely than not that this antibody, the availability of which had not been questioned, also specifically binds to the PCSK9b or PCSK9c polypeptides, at least in a so-called "Western blot"[]." 
• The patent is revoked.
• As a comment, the Board seems correct in that the current case law is not entirely consistent about the standard of proof with respect to prior art.

EPO 

The link to the decision is provided after the jump.

T 1678/21 - (II) Correction debit order

Key points

•  The applicant paid the appeal fee at the reduced rate without being entitled. The Board has to decide whether this can be corrected.
• G /12 held that: "37. The boards of appeal [] have developed a large body of case law on corrections under [the first sentence of Rule 139 EPC] and established the following principles: (a) The correction must introduce what was originally intended. [] (b) Where the original intention is not immediately apparent, the requester bears the burden of proof, which must be a heavy one. [] (c) The error to be remedied may be an incorrect statement or an omission. (d) The request for correction must be filed without delay."
• The present board: "it is difficult to identify the reason behind the EBA's selection of established "principles" (in point 37(a) to (c)), which restricts the principles, or preferably criteria, of the case law to essentially the three criteria of J 8/80 and adds the principle "without delay" (in point 37(d)). It comes as no surprise, therefore, that boards have left the question of whether the list of "principles" for accepting a request under Rule 139, first sentence, EPC is exhaustive an open one"
• "this board is of the opinion that point 37 in G 1/12 is indeterminate and thus of limited avail in assessing whether a request for correction under Rule 139 EPC can be granted."
• The present Board: "The exhaustive criteria to assess Rule 139 EPC are "principles" (a) to (c) of G 1/12, [] complemented by criterion (d) balancing of the public interest in legal certainty with the interest of the party requesting correction, with the factors (i.e. sub-criteria of this criterion) relevant to the specific case."
• "The umbrella notion of balancing interests gives meaning to the term "may" in the context of Rule 139, first sentence, EPC: if, upon balancing interests, the interests of the party requesting correction weigh more heavily than the public interest, then the request for correction must be granted and thus the deciding body has no discretion in this regard. This board is of the view that the use in the case law of the term ["discretion"] in the context of interpreting the term "may" in Rule 139 EPC is merely imprecise and this board's approach does not contravene this use."
• "The above discussion presupposed that correction of a debit order under Rule 139 EPC was available at all, which this board accepts for the following reasons. This board considers that the contrary view expressed in T 170/83 and T 152/85 is not persuasive"
• "The board [] accepts that it was the professional representative's intention to pay the regular and not the reduced appeal fee (cf. point XIII. above, under the heading "Re requirement that the correction must introduce what was originally intended"). The board agrees that this intention "was immediately apparent from the information known to the [applicant/appellant's] professional representative, as set out in [his] declaration"
• As to the Board's 'new' fourth factor: " the public inspecting the EPO's electronic file would have gathered that the status of the appeal as regards fee payment was in the balance given that, in the wake of the communication [of the examining division regarding the appeal fee payment] and its cancellation no payment form debiting any appeal fee was included in the electronic file. "
• " there was no conceivable adverse impact on the public having access to the electronic file, the applicant's/appellant's interests logically prevail and no balancing of interests is required. "
• "The same result applies to the criterion "no substantial delay of the proceedings". The decision under appeal was handed down on 6 July 2021, and the appeal was filed on 6 September 2021, the request for correction on 24 November 2021. Given that substantive examination of the appeal would usually not start before at least one year after the appeal was filed, allowing the correction would cause no delay of the proceedings, let alone a substantial one. In this respect, the interests of the public are therefore not adversely affected, and no balancing is possible either."
• The Board's reasoning is based on an extensive analysis and review of the case law.

The interested reader is referred to the PDF file of the decision:

https://www.epo.org/law-practice/case-law-appeals/pdf/t211678eu1.pdf 

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

T 2160/18 - Novelty: beyond doubt - not merely probable

Key points

•  " It is established jurisprudence of the Boards of Appeal that, for concluding lack of novelty, the claimed subject-matter must be directly and unambiguously derivable from the prior art. For ascertaining the disclosure of a document forming part of the state of the art within the meaning of Article 54(2) EPC, the relevant date is the date of its publication (see T 205/91 of 16 June 1992, T 737/00 of 21 May 2003, and T 1162/07 of 6 October 2010). It has to be beyond doubt - not merely probable - that the disclosure in the state of the art would inevitably lead to subject-matter falling within the scope of the claim."
• The Board recalls established case law. I will soon post about T 1708/18, which challenges this case law.

EPO 

The link to the decision is provided after the jump.

T 1678/21 - (I) Underpaid appeal fee and T 152/82

Key points

•  The applicant files an appeal.  A debit order is given for the reduced appeal fee rate. The applicant is, however, a large company.
• The Board needs only 105 pages (pdf) to deal with the appeal fee payment.
• The Board notes that the appeal fee is validly paid "if a proper assessment of the authorisation to debit on EPO Form 1038 revealed the applicant's/appellant's clear intention to give the instruction to debit the regular fee. Such was the conclusion in recent case T 1474/19 (see below, point C.1.). The board in that case (in point 25, first paragraph) considered that the most persuasive approach to this issue was based on the principles set out, inter alia, in T 152/82, which therefore will be discussed in point C.2. below. In point C.3., this board will then analyse under which conditions the approach of T 152/82 applies to the staggered appeal fee."
• T 152/82: "A debit order must be carried out notwithstanding incorrect information given in it if the intention of the person giving the order is clear".
• "One could thus equal the view expressed in T 152/82 with considering an incorrect amount indicated in a debit order to be tantamount to an obvious error in writing, which is amenable to correction, but, being obvious, not necessary to be corrected. The difference between the incorrect amount and the error in writing being "merely" that obviousness of the incorrect amount needs to be determined after a careful analysis of the file, at an appropriate point in time, in many cases, after expiry of the pertinent period, such as the appeal period. Interpreted this way, T 152/82 can be followed."
• The Board then turns to the notorious "prescribed but not actually necessary" declaration of SME status for the reduced appeal fee: "For this board, as a preliminary matter, it must be excluded that the absence of a declaration under the Notice [OJ EPO 2018, A5] alone can be considered as an expression that the appellant did not consider itself to be an entity referred to in Rule 6(4,5) EPC (from which it might be inferred that it had the clear intention to pay the regular appeal fee; see at the end of this point). The same conclusion was drawn in point 6.2 of T 2620/18. The reason being that there is no legal basis for requiring a declaration for benefiting from a reduction of the appeal fee, as held for example in T 225/19 (point 2.4) and suggested in T 1060/19 (points 1.3.2 and 1.3.3). As stated in point C.1. above (see "Comments"), the declaration in Rule 6(6) EPC relates to the reduction of the filing and examination fees for persons referred to in Article 14(4) EPC mentioned in Rule 6(3) EPC only. Users of the European patent system have therefore been alerted to this view and might have opted to refrain from filing the declaration in respect of the appeal fee if they so wished."
• " This board considers that both T 152/82 and the summary of the subsequent case law endorsing it given in T 1474/19 (in point 14 reproduced in point C.2.1 above in fine) can be followed, but only under the condition that it is known to a board from the file as it stands at the end of the appeal period that the appellant, at the point in time of authorising the debit of the reduced appeal fee, was not entitled to the reduction of the appeal fee under Rule 6(4,5) EPC."
•  "There may be [exceptional cases]  such as those of a natural person, clearly identifiable as such, or an entity clearly identifiable as a university, where it will be obvious that they qualify for the reduced appeal fee. However, when it comes to recognising whether an organisation is a non-profit entity and when it comes to determining the correct amount of the appeal fee for a for-profit company and more precisely whether the company is an SME, what matters is not basic knowledge pertaining to the patent fee structure, as in the cases dealt with in T 152/82. In the case of a for-profit company, the knowledge required rather relates to the size of business players across the world, more specifically to their turnover and number of employees (and whether more than 25% of their equity is owned by a large enterprise)."
• "It must be noted that T 1474/19 sheds no light on how, in that particular case, the board could determine the size of the appealing company on the basis of the file as it stood at the end of the appeal period alone."
• "In the case in hand there is no exception to the rule that generally the EPO cannot detect from the file alone, without any indication that the appealing company is a large company and, therefore, does not benefit from the reduction of the appeal fee: the board could not spot the applicant's/appellant's failure to qualify as an SME from the file as it stood at the end of the appeal period."
• The Board allows the request for correction of the error in the debit order. I will discuss that part of the decision separately. 
• The Board also holds that the examining division has no jurisdiction to apply T 152/82 to the appeal fee, not even in ex parte cases: "That the examining division has no jurisdiction on this type of matter is presupposed in numerous board decisions; for payment of the appeal fee in general, see G 1/18, section B II; for payment of the reduced appeal fee by debit order see T 1474/19, point 21."
• Note, section B II of G 1/18 is quite lengthy and does not seem to expressly comment on jurisdiction.  T 1474/19, point 21 does not seem to discuss jurisdiction either. Indeed, the present Board indicates that this is "presupposed".
• As a comment, I think T 0152/82 doesn't require absolute certainty on the side of the EPO as to what the party intended. 
• As a further comment, T 0152/82 may illustrate the principle that the EPO should act in accordance with "the principles of good faith which govern the relations between the Office and applicants" (cf. J10/84) when interpreting a debit order. If the Board is genuinely unsure if an applicant is an SME or a large corporation, the Board may indeed not be in a position to apply the principle of T 0152/82. 

EPO 

The link to the decision is provided after the jump.

T 0500/20 - The argument unfortunately heard ever more often

Key points

• This decision has already been discussed on various other blogs. 
• "The Board adds that the general argument, made in this case and unfortunately heard ever more often not only in the present field [i.e. wind turbines] but more widely in mechanics, that the invention would not be sufficiently disclosed across the entire breadth of the claim misapplies an approach developed mainly in the field of chemistry for inventions where a central aspect of the claimed invention is a range of compositions or of parameter values"
• The Board is probably referring to T 939/92 regarding inventive step ( "The question as to whether or not such a technical effect is achieved by all the chemical compounds covered by such a claim may properly arise under Article 56 EPC, if this technical effect turns out to be the sole reason for the alleged inventiveness of these compounds")
• "In claimed inventions that do not involve a range of parameter values or compositions basing an argument of insufficiency on this approach is inappropriate and can be rejected offhand for that reason. This is especially so where, as in the present case, an invention is directed at a broadly defined concept expressed in terms of generic structural or functional features of an apparatus or of a method. There it normally suffices to provide a single detailed example or embodiment to illustrate how this concept can be put into practice, cf. CLBA, II.5.2., in such a way that the underlying principles can be understood by the relevant skilled person and they can reproduce the claimed invention using their common general knowledge without undue burden, CLBA, II.4.1. "
• " It is thus not enough to demonstrate insufficiency to conceive of an example falling within the terms of the claim that does not work because it does not achieve the claimed effect fully or at all. Such an example does not prove that the claimed concept does not work; rather it reflects the limitations that are inherent in any technological endeavour and which may provide the scope for future (inventive) development. "
• " To successively argue insufficiency in a case such as this a very high burden of proof applies: the party must demonstrate through cogent argument based on the underlying principles, if necessary supported by evidence, that the claimed concept does not work, because it does not achieve the desired effect in any measure or indeed is counter to the laws of nature. Or they must demonstrate that the disclosure lacks information on an important aspect of the claimed invention, without which the skilled person cannot realize the claimed invention without undue burden. The appellant [opponent] has failed to present any such arguments in the present case."
• "The invention relates to a wind turbine and a method for controlling a wind turbine in an idling power producing situation, see specification paragraphs [0001], [0007] and [0011]. The wind turbine control and method is aimed at damping or eliminating undesirable edgewise oscillations of the rotor blades that may appear in an idling power producing situation, see paragraphs [0003], [0007]. The control of the wind turbine alters the nacelle yaw angle if it detects the presence of blade edgewise oscillations. Changing the yaw angle changes the conditions that influence the presence of edgewise oscillations to dampen or eliminate them"
• The claim at issue recites:  "said yaw controlling system is adapted for changing the yaw position of the wind turbine nacelle (3) when ...said detection means (21) detects edgewise oscillations in one or more of said rotor blades (5), [t]hereby damping or eliminating said edge-wise oscillations". Hence, the desired result is specified in the claim. 
• " Nor does the Board have any difficulty whatsoever in understanding how the invention works when it considers the description and figures. In their view the exact workings of the claimed invention are amply clear to a skilled reader if they genuinely approach the patent and its disclosure constructively, with a sincere willingness to understand. Paragraphs [0074]-[0078] of the patent indicate sufficiently clearly to the skilled person how to carry out damping or eliminating of edgewise oscillations by changing the yaw position (claims 1 and 11) and also how to so reach an oscillation minimum (claim 8)."
•  "as variously stated in case law, these isolated cases of non-working or not ideally working embodiments is of no import for the issue of sufficiency in the light of the large number of conceivable and realisable alternatives (see above) indicated in the description, cf. in this respect G 1/03 reasons 2.5.2, T 0857/16 reasons 35."
• The present Board: " in the field of chemistry for inventions where a central aspect of the claimed invention is a range of compositions or of parameter values, ... it is important that an effect associated in the patent with the range is plausible or plausibly demonstrated across the whole breadth of the claimed range (leaving aside issues of proof of plausibility, the subject of current referral G2/21). Otherwise the claimed invention would be insufficiently disclosed, because the effect is not plausible across the whole breadth of the range."
• Plausibility in the sense of G 2/21 refers to inventive step, of course. The technical effect is also a concept associated with inventive step unless it is recited in the claims. The Board's summary of the perceived case law in the field of chemistry seems somewhat inaccurate. 
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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.