T 0939/21 - Not showing up is costly

Key points

•  "Late in the afternoon preceding the oral proceedings [before the board], the appellant announced that it would not be attending the next day's oral proceedings."
• "The respondent, the board and the interpreters learned of this only on the morning of the oral proceedings. The appellant has provided no reasons why it could not declare its non-attendance earlier. The board cannot see any reason either. In fact, more than six months before the oral proceedings, the board had informed the parties of its preliminary opinion that the appeal was likely to be dismissed. About two months before the oral proceedings, the appellant had still indicated that it intended to attend them, and even requested interpreting services."

• "Generally, the boards consider it highly undesirable for summoned parties to announce too late that they will not be attending oral proceedings, in particular when no reasons for this step are given. Such conduct is inconsistent both with the responsible exercise of rights and with the basic rules of courtesy"

• "In the case at hand, the oral proceedings took place but contributed nothing new to the merits of the case." (the appeal was dismissed)

• "Had the appellant informed the respondent and the board earlier, the oral proceedings could have been avoided: even if, contrary to all expectations, the respondent had not withdrawn its request for oral proceedings in view of the board's preliminary opinion, the board could have applied the rationale of T 1467/11 (headnote and point 1 of the reasons) by deciding that the appeal be dismissed without deciding on its admissibility."

• "For reasons of equity, the board thus decides that the appellant bears the respondent's costs for the appearance at and the preparation of the oral proceedings of 28 April 2023 (Article 104(1) EPC, Article 16 RPBA 2020)."

EPO 

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

T 0423/22 - Public prior use / witness hearing

Key points

• The headnote is about hearing a witness via videoconference. Board 3.2.01 sees no problem with it.
• This blog post is about standards of review of factual findings in appeal. 
• "[This Board, i.e. 3.2.01] adheres to its practice set out in T 1418/17, Reasons 1.3. Unless the law has been misapplied (e.g. if the wrong standard of proof has been applied), a board of appeal should overrule a department of first instance's evaluation of evidence and replace it with its own only if it is apparent from that department's evaluation that it: (i) disregarded essential points, (ii) also considered irrelevant matters or (iii) violated the laws of thought, for instance in the form of logical errors and contradictions in its reasoning (see T 1418/17, Reasons 1.3)."
• See T0042/19 of the same Board for the detailed reasoning.
• "This [approach] does not contradict the findings in T 1604/16 that the review of a board is not limited to points of law but extends to points of fact (see Reasons 3.1.7), as set out in T 42/19 (see Reasons 3.3)."
• "In the current case, the board sees no reason not to adhere to the evaluation of evidence by the opposition division, keeping in mind that it is a process that is first and foremost entrusted to the deciding body that has to weigh all the available and relevant evidence and give reasons why it is convinced that a certain fact is proven or not." 
• " the opposition division had a first-hand impression of the probative value of the witness testimony, which is not available to the same extent to the board. Based on this witness testimony and the supporting documents on file, the opposition division logically explained why it deemed the prior use to have occurred in public. The reasoning took into account the essential points and did not consider irrelevant matter. Moreover, the board is not aware of any argument raised by the appellant during the opposition proceedings that was not considered by the opposition division. There is therefore no reason to deviate from the evaluation of evidence by the opposition division and re-evaluate the testimony, or hear the witness again."
• "the board bases its decision on the facts established by the opposition division, namely that the system "eTire II" was used by the company Challenger, anticipating all of the features of the claimed invention, and that the employees of Challenger were not bound by a secrecy agreement. The board thus shares the legal conclusion that a prior use of the claimed invention occurred in public."
• As a comment, note how the Board carefully distinguishes between (findings of) fact and conclusions in law. In common law systems, *traditionally* facts are/were decided by the jury and legal conclusions are drawn by the judge; this difference in procedure affects the review in appeal as the appeal judge can not simply override jury findings. 
• The Board also considers the hearing of witnesses by the OD using videoconference appropriate: "Hearing a witness in first instance proceedings by videoconference allowed sufficient interaction between the deciding body, the parties and the witness. Albeit a part of the witness' body language was not visible to the participants, this did not amount to an infringement of the parties' right to be heard since the judgement on the witness' credibility was mainly based on the conclusiveness of his/her testimony and the absence of contradictions within the witness' own testimony, between the testimonies of several witnesses and/or contradictions between the witness' testimony and information derivable from supporting documents"

EPO 

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

T 0532/20 - Optional but essential

Key points

•  The issue in this decision is Art. 123(2). In particular, whether the feature added from the claim and taken from the description is an impermissible intermediate generalisation because another feature is not specified.
• The feature, added before the grant, is: "that the generator remains connected to and synchronised with the grid during a low voltage event of less than 50%". Quite possibly, this feature specifies a (desirable) result to be achieved.
• The PCT application, para. [0003], mentions the objective as follows: "In order to reliably supply power to the power grid, wind turbine generators (as well as other types of generators) must conform to power grid interconnection standards that define requirements imposed on power suppliers and large power consumers. In particular, a "low voltage ride through" (LVRT) requirement typically requires that a power generation unit must remain connected and synchronized to the grid when the voltage at the terminals of the generation unit fall to prescribed levels"; the prescribed level is defined as less than 50% elsewhere. This paragraph is part of the discussion of the background art.
• In para. [0026] discussing the invention,  the application states: "Thus, crowbar circuit 440 and converter controller 430 are part of a system that allows a wind turbine generator to ride through low voltage events and remain synchronized to the power grid."
• This para. [0026] is part of the discussion of Fig.4 which starts as follows: "[0024] Figure 4 is a block diagram of one embodiment of a power converter having functionality to respond to a low voltage event. In one embodiment, power converter 400 includes inverters 410 and 420, converter controller 430 and crowbar circuit 440. Other components can also be included in power converter 400."
• The patentee would like to specify the "remain connected and synchronized to" feature without the feature of the crowbar circuit. 
• The Board does not accept the arguments of the proprietor: "A skilled person does not read an application as a linguist would, but rather on the basis of their technical understanding. The application clearly teaches the skilled person that a severe voltage drop at the generator terminals causes high currents in the generator windings, which can damage the semiconductor switches in the inverter. If this happens, the generator cannot remain connected and synchronised. The original application does not contain a single technically useful piece of information as to how a severe voltage drop could be accommodated otherwise than with a protective circuit. It also does not contain a single piece of credible disclosure of conditions under which a low-voltage event did not cause excess currents in the generator. "
• "In view of this, a skilled person sees beyond the [applicant's] strategic choice to represent most parts of the disclosure as optional [in the application as filed]. In this context, it is simply irrelevant how often the words "in one embodiment" are used correctly or not, contrary to what the [proprietor] argued."
• "This view applies in particular since the description has remained unamended despite the amendments made to claim 1 [during the grant procedure]. Claim 1 as originally filed was so broad as to encompass prior art turbines with battery (viz. UPS) powered blade pitch control that merely tripped offline during a low-voltage event according to original paragraph [0005]. In this original context, a skilled person easily understands that a protective circuit is not essential. However, this is not in contradiction to the fact that a protective circuit becomes essential once the generator is required to remain connected and synchronised with the grid during a low voltage event of a certain severity as is required by claim 1 as amended."

• EPO 

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

T 0873/21 - Applying G 2/21

Key points

• Point II of the order G 2/21 is rather vague, probably intentionally. Provisionally, I think it permits both a liberal and a strict approach to plausibility and does not prescribe or specifically approve of any of the former / established approaches (plausible, not implausible, or no plausibility threshold at all).
• Hence, I don't agree with the interpretation suggested by R. Hughes on the IPKat, that "G 2/21 supports the established "lack of ab initio implausibility" standard" (to the extent that this quote suggests G 2/21 supports the  "lack of ab initio implausibility"  any more than the "plausibility" standard). I also disagree with "A second interpretation of G 2/21 proposed by the referring Board is that the decision confirms the existing case law on the standard of evidence required for inventive step. Particularly, G 2/21 confirms that, in order to be relied on for inventive step, there should not be substantiated doubt that the invention actually achieves the said technical effect (i.e. ab initio lack of implausibility)" to the extent that it would be settled case law that there should not be substantiated doubt that the invention actually achieves the said technical effect (i.e. ab initio lack of implausibility)". That is only one of the three lines in the case law. To the extent that specific line would be "confirmed" by G2/21, the two other lines are equally confirmed by G 2/21 in my view. 
• The relevant para 72 of G 2/21 reads in the relevant part: "Applying this understanding [i.e. point 2 of the order] to the aforementioned decisions, ... the Enlarged Board is satisfied that the outcome in each particular case [applying the test of point 2 of the order of G 2/21] would not have been different from the actual finding of the respective board of appeal." The aforementioned decision includes T 488/16. Hence, the outcome of T 488/16 is also correct or permitted under G 2/21. The outcome of the more liberal decisions is also permitted under G 2/21. 

The present case

• Turning to the present case: "According to the appellant [applicant], the technical effect resulting from this distinguishing feature is an improved insulin sensitivity, in particular a synergistic interaction of compound (A) and compound (B) as demonstrated by the supplemental experimental data provided on 11 April 2019 (see D16)."
• " As argued by the appellant, a therapeutic effect of the claimed combination on metabolic disorders would have been expected at the priority date because both compounds were each known at the priority date as useful for the treatment of metabolic disorders (compound (A), see D4) and in the treatment of PPID in horses (compound(B), see D14). Furthermore, an improved effect in terms of insulin sensitivity when monotherapy with one or more dopamine receptor agonist is insufficient was generally described in the original application on page 4 lines 9 to 11. Hence, the Board agrees with the appellant that the therapeutic synergistic effect substantiated in D16 was derivable from the original application, and that the data of D16 only provided a quantification of the obtained improvement in insulin sensitivity described in the original application."
• "the Board considers that the synergistic effect relied upon by the appellant was encompassed by the technical teaching of the original application in light of the common general knowledge regarding the therapeutic effects of compound (A) and compound (B) and was embodied by the present combination since it was clearly the preferred combination in the original application (see page 22 line 25, claim 5 and all the examples). In line with G 2/21, the technical effect demonstrated by the post-published experimental data provided in D16 is thus to be taken into account when assessing the inventiveness of the claimed subject-matter".
• "The combination of compounds (A) and (B) for use in the treatment of the present disorders per se might have appeared obvious when combining the teachings of D14 (disclosing compound (B) for said use) and of D4 (disclosing compound (A) for use in the treatment of metabolic disorders which are known to appear in PPID). However none of the cited prior art documents suggests a synergistic effect on insuline concentrations for the combination of compound (A) and compound (B). It follows that the skilled person would not have found in the prior art any suggestion towards the present solution to the above defined objective technical problem."
• In other words, the synergistic effect is unpredictable over the prior art and renders the claim inventive over what would otherwise be an obvious combination of the compounds A and B for their known use; this synergistic effect was shown first by D16, which is post-filed. 
• "Examples 1-3" are, in fact, statements of study protocols without any results; these are all "examples" of the application as filed. The Board cites these as part of the 'technical teaching’ in the sense that the now-claimed compounds are preferred.  It may be observed that perhaps no technical basis for the applicant's preference can be derived from a study protocol without any results. The Board does not expressly acknowledge the nature of the "examples" as being study protocols without results. 
• As said at the beginning, the "no plausibility" is permitted under G 2/21, but a stricter plausibility hurdle as well, in my view. The question of what the right or best approach is can, therefore, not be answered completely by reference to G 2/21 only, it seems.  
• The Board also refers to page 4 lines 9 to 11 of the application. That paragraph may convey a technical teaching in that the paragraph is difficult for me to understand as a non-expert in the field.
• Note, claim 1 at issue is a second medical use claim, so under Art.83 and r.77 of G2/21,  the application as filed must render it credible that the compounds specified in the claim are suitable for the recited therapeutic effect. The claim does not recite a synergistic effect, so that effect is judged under Art.56 and hn.2 of G2/21.

• T 2465/19: "The Board notes that the technical effect of an invention over the closest prior art need not be explicitly stated in the application, as long as it is derivable from the original application, in particular since the closest prior art may not have been known to the applicant when drafting it (see also decision G 2/21, Headnote II.)."
• 
  
• T 1394/21 - "Thus, under Article 83 EPC, the application as filed must render it credible that the claimed antagonistic anti-VISTA antibody and antagonistic anti-PD-L1 antibody are suitable for treating cancer unless this is already known to the skilled person at the filing date (see G 2/21, especially Reasons 74 and 77)."
• 
  

EPO 

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

Email notifications working again

The follow.it email notifications should work again. 

T 2701/19 - Amendment in the appeal reply brief

Key points

• The opponent presents new inventive step attacks in its reply to the proprietor's appeal. The admissibility of these attacks is governed by Art. 12, not by Art. 13 RPBA, right?
• The Board finds that the admissibility is governed by Art. 13. The reason is that both the opponent and the proprietor appealed, and the attacks applied equally to the main request and to the set of claims held allowable by the OD (auxiliary request). 
• "In the decision under appeal, the opposition division solely assessed the inventive step of this [auxiliary request] based on a problem/solution approach starting from the disclosure in document D13b [in combination with D6]
• "With its appeal, appellant II [opponent] did not submit that this part of the decision under appeal starting from the disclosure in document D13b was wrong; rather, it limited itself to submitting a [new inventive step attack starting from D6]. Appellant II, on appeal, was thus no longer pursuing the line of attack based on the disclosure in document D13b representing the closest prior art, with the consequence that, for this part, the appealed decision became final.
• " It was only with the reply to the appeal of [the patentee] in the context of the claims of the current main request, that appellant II [opponent] submitted arguments asserting that the subject-matter of claim 2 of the main request lacked an inventive step based on an analysis starting from the disclosure in document D13b representing the closest prior art in combination with the disclosure in document D6. In relation to claim 1 of auxiliary request 3, the reply contains merely the cursory remark, [that AR3 lacks] an inventive step over the disclosure of D6 in combination with D13B [for the same reasons]."
• "Accordingly, it was not until the reply stage of appellant I's appeal that appellant II, as the respondent to this appeal, submitted arguments as to why the decision under appeal should be reversed with regard to this auxiliary request. However, Article 12(3) RPBA requires that the statement of grounds of appeal set out the reasons why the appellant is requesting that the decision under appeal be reversed.
• "The board holds that the introduction of the arguments based on the disclosure in document D6, representing the closest prior art in relation to claim 1 of auxiliary request 3, constitutes an amendment to appellant II's case, which may be considered at the board's discretion pursuant to Article 13(1) RPBA."

 

EPO 

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

T 2892/19 - Regen kits

Key points

•  "The Board has to consider first whether Regen kits and instructions for use according to D127 and D129 belong to the state of the art."
•  "it has to be established whether such Regen kits and instructions were delivered to Levi Medical and from this company to clinicians in Italy before the priority date of the patent and, if so, whether the deliveries made these Regen kits part of the state of the art."
• "Evidence for the deliveries of the Regen kits and instructions does not lie exclusively within the sphere of the respondent [opponent]. Rather, both the appellant and the respondent had access to this evidence since the deliveries under scrutiny are for material which originated from the appellant [proprietor] and which was the subject of a distribution agreement between the appellant and Levi Medical (D63). Hence, the applicable standard of proof is the balance of probabilities"
• "the respondent provided a witness statement by [person]  Levi (D126) according to which a Regen kit as shown in D127 including instructions for use according to D129 had been found at her home. In D126, [person] Levi produced shipping documents as evidence of the delivery of nine Regen kits to different clinicians in Italy before the priority date of the patent."
• "The appellant alleged that [person]  Levi was an unreliable witness, also on the basis of D200 and D201, mainly because she had an interest in the invalidation of the patent in suit and was involved in criminal proceedings."
• The Board: "it is not exceptional in opposition proceedings that a piece of evidence or a witness statement stems from an interested person or even a party to the proceedings."
• "In view of the strong documentary evidence provided in addition to [person] Levi's witness statements and the fact that the appellant has not pointed to any substantial contradictions in these witness statements about the deliveries of Regen kits and instructions for use according to D127 and D129, the Board is convinced, on the balance of probabilities, that Regen kits according to D127 and instructions for use according to D129 were delivered to Levi Medical and clinicians in Italy before the priority date of the patent."
• "the Board notes that it is the appellant which initially has the burden of proof to establish the existence of a confidentiality agreement (T 473/13, point 11.2 of the Reasons)." 
• "The respondent provided [person] Levi's witness statements to the EPO and the UK High Court of Justice, according to which purchases and sales by Levi Medical of the appellant's products were not confidential. The witness hearing before the UK High Court of Justice remained unchallenged (points 20 and 88 of D137). The witness statements are supported by distribution agreement D63, which does not include or hint at any confidentiality agreement for the Regen kits. On the contrary, D63 clearly indicates that these kits were normal items of trade, explicitly defining the relationship between the appellant and Levi Medical as one of vendor and vendee, the latter of which has to maximise the sales of the product and actively demonstrate it to potential customers (paragraphs 3, 8 and 10). There is no reason to assume that the lack of confidentiality derivable from D63 should not extend to the deliveries of the Regen kits to Levi Medical and clinicians in Italy, especially because the appellant provided no explicit evidence that those deliveries had been made under a confidentiality obligation."
• "The appellant only argued that the deliveries had implicitly been confidential as the Regen kits had not been approved for commercialisation in Italy and therefore were for test purposes only. To support this argument, the appellant referred to T 906/01 and T 818/93."
• "Even if the Italian Ministry of Health had to be informed before the selling of the kits in Italy and even if this information had not been provided, this does not imply that the Regen kits were prototypes. The fact that the appellant may have had a significant interest in obtaining patent protection does not render the kits prototypes either. Mistakes in this respect happen. As regards the allegedly small number of deliveries according to D126, this is not evidence that the Regen kits were prototypes. As concluded under similar circumstances in T 1464/05 cited by the respondent (point 4.2 of the Reasons), the deliveries could have been for promotional purposes, for instance. "
• "he Regen kit shown in D127 and the instructions for use according to D129 bear a CE marking, which conveys the information that the kit was a final product that could be sold in the EU. Even if the Regen kit should, as argued by the appellant, not have had such a CE marking for legal reasons, the mere fact that this marking was actually on the product speaks strongly against customers considering it a prototype."
• "the Board is convinced that the deliveries of Regen kits according to D127 and instructions for use according to D129 to Levi Medical and clinicians in Italy before the priority date of the patent made those kits part of the state of the art."
• "the subject-matter of claim 1 of auxiliary request II, i.e. the only claim request on file, is not inventive (Article 56 EPC) over the prior use of Regen kits and instructions for use according to D127 and D129."

EPO 

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

T 2082/19 - Complete case on prior use / submitting sales data

Key points

• The patent has a filing date of 16.02.2005. A notice of opposition was filed in 2010, the first decision in appeal was issued in 2017, and in the present decision notified in March 2023, the Board decides on the patentability of the claims. 
• The opponent alleges lack of novelty over public prior use of a product by the patentee itself. Part of the evidence is "a video commercial shown [relating to "Extra Strength Tylenol Rapid Release Gels"] to the public on 6th February 2005 during the Super Bowl pre-program advertisements."
• Documents A30-A36 were filed by the opponent/appellant with its statement of grounds. The Board does not admit them.
• "The Board notes first that the prior use objection was raised in the notice of opposition on 10 March 2010 and that the main request is on file since 2 November 2011. It is established case-law that where lack of novelty is alleged over a public prior use, the burden of proof lies with the party claiming that the claimed features were disclosed in the alleged public prior use before the relevant date. This requires a provision of a complete chain of evidence that the product "Tylenol Extra Strength - Rapid release gels" disclosed all the claim features and was made available to the public before the filing date of the contested patent. Yet, for the first-time in appeal the appellant files a document (A30) relating to the composition of the Tylenol gelcaps, in particular to the presence of a sub-coating and to the width of the gap. These features were at the heart of the substantive discussion in the opposition proceedings."
• "Documents A31, A32 and A34-A36 are intended to demonstrate the public availability of the Tylenol product before the priority date. The content of documents A31, A32 and A34 was available already in 2005, while A35 and A36 are declarations relating to the purchase and the receipt of the Tylenol product in 2005. As they relate to the prior use objection raised in the notice of opposition, the Board could not find any reason why these documents could not have been filed earlier."
• "In the present case, the crucial document appears to be D20, which is supposed to make the link between the product "Extra Strength Tylenol Rapid Release Gels" seen in D29 or in the video commercial and proving that the same product was effectively sold before the effective date of the contested patent, namely 16 February 2005. "
• "According to the appellant [opponent] [D20]  is a sales report from the AC Nielsen database indicating a summary of sales of Tylenol product for the period ending 29 January 2005. For the product code 030045048824 there were specifically 158.975 units sold by the week ending 29 January 2005. "
• The Board: "document D20 merely discloses a table of undefined provenance, without any evidence or certificate of authenticity. As observed by the respondent, the appellant has offered no substantiation of exactly what the data of D20 demonstrate or any further explanation to corroborate the alleged sales. In the Board's view, D20 cannot provide any evidence in relation to the questions that need to be answered to substantiate an allegation of prior use, here to the occurrence of a public use in the form of the sale of the product, since its authenticity cannot be certified and it does not mentions inter alia where, how or to or by whom the product was indeed sold."
• D 20 is here. 
• As a comment, the Board apparently wants more information and a certification of authenticity. The document seems to mention a grocery shop chain, I understand that AC Nielsen is a company buying sales information from groceries and supermarkets (based on point-of-sale data) and selling the information to other companies. However, D20 itself does not identify the document as coming from an AC Nielsen database.
• "Referring to T 55/01, the appellant [opponent] argued that in case of mass-produced and distributed consumer products there were no need to prove that the product was sold to specific customer. However, this decision is not relevant to the present case since there is no convincing evidence that the product Tylenol Rapid Release Gels was massively distributed before the filing date of the patent."
• The public prior use is considered to be not proven.

EPO 

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

T 0029/22 - New argument raised, auxiliary request not admitted

Key points

•  "Pursuant Article 12(6) RPBA 2020, first sentence, the Board does not admit auxiliary request 1a which was already filed during the oral proceedings and not admitted by the Opposition Division."
• "Appellant 1 [proprietor] argued that auxiliary request 1a was a direct reaction to the new discussion about the relevance of paragraph [52] of D7 during oral proceedings in opposition. Therefore, auxiliary Request 1a should have been admitted [by the opposition division]." The proprietor argues that paragraph 52 was not mentioned in the preliminary opinion of the OD. The opponent had mentioned paragraph 52 in the written submissions, but based on a different line of argumentation, still according to the proprietor.
• The Board: "The Board [does] not recognise any error in the use of discretion by the Opposition Division not to admit the auxiliary request 1a (Reference is made to points 13-15 of the appealed decision). Indeed, the Opposition Division considered that the lack of novelty of auxiliary request 1a was to be expected in view of their preliminary opinion from 31 January 2020 and the letter of the opponent dated 20 April 2020. While the annex to the summons of the opposition division may be referring to different paragraphs compared to the decision, the letter of the opponent dated 28 April 2020 specifically mentions paragraph [52] as well as [22] and [23] as referred to in the decision of the opposition division. And while the opponent may have emphasised that the non-fusible materials may be made of natural fibers, the passage cited from paragraph [23] discloses that they can be made of "thermoset polymer materials (e.g., polyester, acrylic)"."
• I wonder if the OD could hypothetically have included the reasoning based on paragraph 52 for the first time in the written decision without violating Article 113(1) EPC, and, if not, whether the fact that the opponent presented the argument during the oral proceedings but the OD did not admit a responsive auxiliary request is sufficient to meet Article 113(1) EPC.
• The Board: "Furthermore, the amendments made to auxiliary request 1a were taken from paragraph [0068] of the patent specification, column 13, second sentence (i.e. paragraph [0067] of the A1-publication, sentence bridging column 12 and 13). The amendments were not taken verbatim and raised new issues under Articles 123(2) and 84 EPC."
• The Board does not explain if "raised new issues" means that the opponent had objections, whether having any merits or not, or if the Board sees issues under Article 123(2) and Article 84. The Board does not expand at all on said issues. 
• If the opponent raises a new argument during the oral proceedings that turns out to be essential, and assuming that the argument goes beyond the factual and legal framework of the case, i.e. would be a case amendment under the RPBA, is the proprietor limited to combing the claims as granted?

EPO 

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

EPO Course on the taking of evidence

Key points

• Any patent attorneys reading this weblog may be interested in this online course of the EPO about the taking of evidence before the opposition division, in particular, about the hearing of witnesses.
• The registration deadline is 28 August.
• I followed the course last year and believe it will be the second edition this year. The course consisted of two live online lectures in September, with homework questions and reading material. 
• Especially after T 1138/20, witness hearings before the OD are a kind of one-shot opportunity. Appeal provides no real remedy if you miss an opportunity during the witness hearing before the OD (under the Board's current practice, I should add). So better get it right and be prepared.
• Costs are EUR 320.
• Incidentally, does anybody know if parties get the transcript/minutes of a witness hearing already during the oral proceedings? Or only with the written decision of the OD?

T 0151/21 - Never amend claims before the Examining Division?

Key points

• In this appeal against a refusal decision, the Board does not admit a set of claims corresponding to a set of claims presented before the Examining Division but subsequently amended.
• "The board notes that it was the appellant's deliberate decision to respond to the inventive-step objection raised against the set of claims filed on 17 January 2017 by replacing them with a set of claims of narrower scope instead of maintaining them as a main request and filing an auxiliary request. The board fails to see what would be problematic or unsatisfactory about an appellant maintaining, instead of withdrawing, a request which it considers to be allowable. The primary purpose of the appeal proceedings is to review the decision under appeal, not to give the appellant the opportunity to reconsider procedural decisions made earlier."
• I wonder if this decision suggests that applicants should never amend the claims before the Examining Division, instead filing only (more and more) auxiliary requests. 

EPO 

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

T 1846/20 - Trying to get the drawings in the B1

Key points

•  "The application for the patent was filed on 16 June 2016 in Chinese as an international application under the PCT with application number PCT/CN2015/081518. The application was published on 23 December 2015 with number WO 2015/192760 and included sheets 1/3 to 3/3 of drawings. These drawings contained text in Chinese. "
• The applicant does not submit translations of the drawings upon entry of the EP procedure.
• The Rule 71(3) EPC Intention to grant states: "Description pages ... Claims .... No drawings were mentioned." "The text intended for grant, i.e. the Druckexemplar, not containing any sheet of drawings, was attached to the communication."
• The applicant pays the grant fee and expressly indicates approval of the text. The mention of the grant is published 21.08.2019. "No appeal against this decision to grant was filed."
• By letter of 04.11.2019, the applicant  requested re-issue of the B-specification of the patent, including the correct applicant's name and the drawings filed with this letter. 
• The correction of the name is allowed, the request for adding the drawings is refused by the Examining Decision. This decision is appealed.
• The Board: " further opportunity was given to the appellant when the communication under Rule 71(3) EPC was issued, accompanied by the text intended for grant. At least upon receiving this communication, the appellant should have noted that the text intended for grant did not contain any drawings. Instead, the appellant explicitly approved the text proposed for grant."
• "Article 122(1) EPC is only available for non-observance of a time limit which has the direct consequence of a loss of right or remedy. In the current case, there is no loss of right due to the non-observance of a time limit by the appellant. Therefore, Article 122(1) EPC is not applicable to the case at hand."
• The Board recalls G 1/10.
• "Since no errors have occurred in the process of converting the version as intended for grant into the B-specification, the discussion of affecting third parties is irrelevant. When receiving the communication under Rule 71(3) EPC clarifying the examining division's position on the text intended for grant, the appellant should have realised that to safeguard its interests it should request the inclusion of the drawings. However, the appellant failed to do this and instead approved the proposed text and did not file any appeal. As a consequence, the decision to grant became final (Article 97(1) and (3) EPC)."
• "As stated in point 6 of the reasons of decision G 1/10, "[a]s from its grant, a European patent ceases to be within the jurisdiction of the EPO and becomes, subject only to the possibility of later EPO proceedings by way of opposition or limitation, a bundle of national patents each of which falls within the exclusive jurisdiction of a designated Contracting State (see Article 2(2) EPC)" (emphasis added by the board). Therefore, since in the current case the decision to grant has become final, the EPO, except in opposition or limitation proceedings, has no jurisdiction to change the text of the granted patent or deal with the request for correction."
• " the board concluded that the request for re-issue of the B-specification of the patent by including sheets 1/3 to 3/3 of the drawings as filed on 4 November 2019 is not allowable in view of decision G 1/10."
• As a question for readers, can you do anything before the national patent offices in such cases?

EPO 

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

T 1138/20 - Review of findings of fact in appeal (VI)

Key points

• Board 3.5.03 expresses their view on the review of finding facts in appeal. The decision seems very important to me, especially for opposition cases involving public prior use and contested non-patent literature. I can recommend studying it in full. 
• The OD found the alleged public prior use to be proven after the hearing of two witnesses. The patentee contests this finding in appeal.
• "The boards of appeal constitute the first and final judicial instance and thus the only judicial body to establish both facts and law in proceedings before the EPO. As such, the boards have the power, at any stage of the appeal proceedings, to establish the relevant facts of the case before them and thereby substitute the findings of fact of the departments of first instance. However, the boards have no obligation to establish facts de novo already established by the departments of first instance ... "
• "it is not unheard of that national laws put restrictions on the competence of an appellate court to establish facts (see e.g., for Germany, section 529(1) DE-ZPO). However, such a limitation must be understood in the context in which the facts were established by a (first) judicial instance and subsequently reviewed by an appellate court as a second judicial instance. This situation differs from that under the EPC. In any case, such a restriction in relation to the boards of appeal has no basis in the EPC."
• "The review of findings of fact has simply nothing to do with the review of discretionary decisions. Discretionary decisions can only be reviewed for a particular type of errors (cf. G 7/93, Reasons 2.6), while a review of findings of fact has no such limitation."
• "Having the boards of appeal as final judicial arbiter of disputes arising in the context of the EPC is not a luxury to be had but it is a necessity to ensure compliance with international obligations, in particular that the proceedings under the EPC are in accordance with Article 6 of the European Convention on Human Rights, ECHR"
• "The present approach is also in line with the current practice of the boards of appeal: 
  If the findings of fact of the departments of first instance rely on documents, the boards regularly make an own assessment of the evidence. For example, the board may assess a patent proprietor's factual allegation that the available prior art differs from the invention by a specific feature so that the invention is novel within the meaning of Article 54(1) EPC, and come to a conclusion different from that of the opposition division. This may be, for example, because the (implicit) disclosure of a prior-art document is interpreted differently. What is done in such a situation is that the board indeed assesses the piece of evidence (i.e. the prior-art document) de novo and replaces the findings of fact of the opposition division with its own findings."
• " In case of oral evidence given by a party, a witness or an expert (Article 117(1)(a), (d), (e) EPC) or an inspection (Article 117(1)(f) EPC), the boards will normally not assess the evidence de novo by, for example, re-hearing the witness. In such a situation, the department having heard the witness is better placed to determine the probative value of the evidence given, in particular the credibility of the witness (i.e. the witness' truthfulness and honesty) and the reliability of the testimony (i.e. its accuracy, e.g. how accurately the witness remembers and recounts the events). The boards may then defer to the first-instance department's evaluation of evidence."
  
  
• Then, as a very important practical point for the parties to the proceedings: "the burden is on the party challenging a fact on appeal to demonstrate that the first-instance department erred in its finding of fact. In doing so, the party must specifically point to each alleged error in the department's findings of fact or in its evaluation of the evidence and set out the reasons why this is considered erroneous. If the party succeeds in discharging this burden and demonstrating such an error, the board will establish the facts on its own if this is necessary for reaching a decision. Depending on the circumstances of the case, the board may also remit the case to the respective department for a new finding of fact (Article 111(1) EPC). For the sake of completeness, the following is noted: since the review of the decision is only one of the functions - albeit the primary function - of the boards of appeal, a board may, as mentioned above, also decide, at any stage of the appeal proceedings, to establish the facts on its own motion - even if no error was demonstrated by a party.'
• "For demonstrating an error in the fact-finding process, it will generally not be sufficient [for the party] to argue on appeal that the evidence on file would have allowed a different conclusion and that this conclusion was equally likely, plausible or reasonable. Such an argument is, by itself, normally not sufficient to meet the burden of showing an error. The mere fact that the body competent to establish the facts (be it the examining or opposition division) could have come to a different conclusion is typically not sufficient to demonstrate an error in the fact-finding process. Rather, in order to show an error, the party must demonstrate that no body competent to establish the facts and acting in a reasonable way could have come to this conclusion. In such a situation, the contesting party may successfully allege on appeal that the first-instance department did not fulfil its duty as outlined in point 1.2.3 above. For example, the party can argue on appeal that it had brought forward an - equally likely, plausible or reasonable - alternative to the department of first instance which the latter, however, did not properly consider in its fact-finding process or failed to explain in its reasons why this alternative was refused."
• 
  EPO 

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

T 1700/19 - Tenofovir

Key points

•  The patent claims priority from D11.
• "D12 would be part of the prior art under Article 54(3) EPC, and prejudicial to novelty, only if a subject-matter is: - disclosed in D12, and entitled to priority from e.g. D13, and - covered by the claims of the main request, but not entitled to priority from D11."
• The claim is directed to a compound, TAF-HF.
• "D13 also mentions TAF-HF (as GS-7340 hemifumarate, see pages 2 and 19) but contains no example of its preparation."
• "The parties present opposing views as to whether the mere mention of TAF-HF in D13 is an enabling disclosure of this compound, considering the relevant common general knowledge. It is also debatable whether D11 provides an enabling disclosure for the preparation of TAF-HF, as a salt and/or as a co-crystal. However, in the Board's opinion, if it is accepted that the mention of TAF-HF in D13 is an enabling disclosure of this compound, then it must follow that the equivalent mention in D11 of the combination of fumaric acid and TAF at a ratio of about 0.5, as co-crystal or salt, is an enabling disclosure of TAF-HF."
• This is an interesting statement. The different filing dates oF D11 and D13 played no role in the case at hand.
• " Thus it is not possible for D12 to enjoy priority from D13 for TAF-HF without claim 1 enjoying priority from D11 for the same subject-matter. In other words, it is not necessary to take position on the validity of the priority claims with regard to enablement. Either D12 enjoys a valid right to priority from D13 in respect of TAF-HF, in which case, for analogous reasons, present claim 1 of the main request also validly claims priority from D11 in respect of the same subject-matter. Or D12 does not enjoy a valid right to priority from D13 in respect of TAF-HF. In both cases, D12 is not prior art under Article 54(3) EPC. ... Accordingly, D12 does not prejudice the novelty of the claimed subject-matter."
• "The[opponents] do not contest that example 1 of the patent describes the preparation of a mixture of TAF-HF along with GS-7339-MF and TAF-MF. However, [the opponents] contend that the patent does not give the necessary information to the skilled person as to how to separate TAF-HF from the obtained solids, so that the claimed subject-matter is insufficiently disclosed. The Board does not share this opinion. Claim 1 of the main request pertains to TAF-HF as such and does not mandate any degree of purity. Consequently, the Board shares the respondent's opinion that the criteria of sufficiency of disclosure are met already for the reason that example 1 discloses the preparation of TAF-HF."
• Inventive step over D1: "The subject-matter of claim 1 of the main request differs in that TAF is in the form of a hemifumarate instead of a monofumarate (i.e. it comprises a 2:1 stoichiometric ratio of TAF to fumaric acid)."
• "The objective technical problem to be solved can accordingly be formulated as the provision of an improved form of TAF, having improved chemical stability and an improved ability to purge TAF of its diastereomeric impurity GS-7339."
• "It was known at the priority date that, in the case of tenofovir disoproxil, the co-crystal with fumaric acid in a 2:1 molar ratio is more stable and less hygroscopic than the 1:1 fumarate salt 
• The Board: "The properties of the hemifumarate in the case of TAF could not be extrapolated from those of tenofovir disoproxil. The prior art does not point to any such predictability. On the contrary, in light of the statements regarding the unique physicochemical properties of API solid forms, including salts and co-crystals in D15 (see page 359, right column) and D28 (see page 317, left column), no such generalisation is possible. In the present case, the prior art gives no reason to assume that the modification involved, namely the use of a 2:1 molar ratio with fumaric acid instead of 1:1, would lead to the same effect in the structurally different compounds TAF and tenofovir disoproxil. Accordingly, the claimed subject-matter is not obvious starting from D1."

EPO 

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

T 0695/18 - No corrections of withdrawals of appeals (?)

Key points

• Board 3.5.03 is of the view that an erroneous withdrawal of an appeal can not be retracted by way of correction under Rule 139 EPC.
• The case is the follow-up to the 10th successful petition for review R 3/22.
• The appeal of the applicant was withdrawn on 28.09.2021. On the same date, a notice of cancellation of oral proceedings was sent to the applicant, who confirmed receipt on the same day. On the next day, the applicant retracted the withdrawal of the appeal: "The request was based on erroneous interpretation of the instructions given by the applicant, which intention merely was not attend the oral proceedings."
• This reason can be held insufficient under T 2474/19.
• The Enlarged Board held that the Board must decide on the request for correction under Rule 139 and that a reply of the Register is insufficient to dismiss the request.
• The Board notes that: "immediately and automatically upon the EPO's receipt of the party's submission [i.e. the withdrawal], the withdrawal had thus the legal effects of terminating the appeal proceedings as to the substantive issues settled by the refusal of the application, and of rendering the matters subject to that decision res judicata, i.e. finally settled"
• "when the party's letters of 29 September and 5 October 2021 were filed, the appeal proceedings were no longer pending. This state of affairs is undisputed."
• "The second question to answer is whether Rule 139 EPC is applicable in the absence of pending proceedings."
• The Board first analyses the text of R.139, finding it not to provide a clear picture of the scope of the rule.
• The board then finds it striking that no fee is required and no time limit is codified.
• "Rule 139 EPC is merely a stand-alone provision ranked as an Implementing Regulation of the EPC. Legal certainty, as protected by the safeguards expressed in, or derived from Articles of the EPC governing re-establishment of rights and petition for review, corresponds, also from a systematic point of view, to a higher interest. "
• "The jurisprudence on correction of a withdrawal of the appeal under Rule 139 EPC is noticeably scarce ", only two such cases appear: T 2148/18 and T 610/11.
• "In practice, consulting the European Patent Register, inspecting the files, and reading the European Patent Bulletin are not the only ways for stakeholders to learn about matters of a withdrawal of the appeal. Considering the circles of EPO officials aware of a withdrawal of the appeal already at an early stage [] it cannot be excluded that other stakeholders [] learn about it before it is entered into the European Patent Register. It is commonplace that parties to proceedings and third parties contact administrative staff such as registrars to query about the state of the file."
• As a comment, I would be surprised if parties could learn more from contacting the Register than is available in the public online file or in the register. 
• Apparently, other people don't open the public online file, nowadays, but give a phone call to the register who then helps them. 
• "Common to the mentioned jurisprudence [on correction of withdrawals in general, e.g. withdrawals of applications] is the concern for the protection of the value of legal certainty. But the smorgasbord of lists and conditions is neither convincingly founded nor easy to apply. Predicting an outcome is even more difficult."
• The appropriate way to protect the high value of legal certainty on a matter of such gravity, had it been intended, would have been to define precisely, by legislation, the limited circumstances and conditions, presumably including time limits and a fee requirement, under which the "true" intention of the party may exceptionally take precedence (cf. Articles 112a and 122, Rules 104 to 110 and 136 EPC; T 824/00, Reasons 6). [] This is certainly not the case with Rule 139 EPC.
• As a comment, I don't see how levying a fee could help to increase legal certainty for third parties. 
• "till, were Rule 139 EPC applicable, the question would have to be asked why the procedural declaration of withdrawing the appeal would be treated more leniently if nailed down in a document and filed in writing than if made orally. From a wider legal perspective that would seem inconsistent, if not inverted."
• As a comment, a possible reason is there can be no mistake in which appeal is withdrawn during oral proceedings (oral withdrawals outside oral proceedings are impossible), i.e. no possibility of clerical errors in the application number as in written withdrawals.
• "The quite elaborated preconditions listed also run the inevitable risk of soon becoming irrelevant, e.g. by not adequately responding to the technological, administrative and organisational developments, such as digitalisation, within the EPO and in society at large."
• As a comment, the advantage of having a flexible rule in the EPC is that case law can keep up with developments.
• "More compelling than these arguments [of the applicant] is the finding in the early jurisprudence of the Boards of Appeal that the placing of Rule 139 EPC, then Rule 88 EPC 1973, only in the Implementing Regulations "raises the presumption that it is a merely ancillary provision which can only be applied while proceedings are pending for some other purpose before the [EPO], and that Rule 88 does not confer original jurisdiction on the [EPO] to make corrections at any time" (see J 42/92, Reasons 4)."
• "J 42/92 deals with the attempt by the patentee to use the instrument of correction to amend the text of a granted patent. The present Board admits that this is something else than what is now discussed, as noted by the party. "
• "This makes relevant the view taken in J 42/92 on Rule 139 EPC that not only its applicability but also the Board's jurisdiction, i.e. its competence (cf. points IX and 1 above), ends when the pendency of the underlying proceedings ends (Reasons 10)."
• As a comment, the systematic question arises how the EPO can then have jurisdiction under Rule 140 to correct errors in decisions if proceedings are closed.
• "The Board's view on the applicability of Rule 139 EPC is also not prejudiced by the conclusions of G 1/12, on the contrary. "
• "For all these reasons, the ordinary meaning to be given to the terms of Rule 139 EPC, in their context and in the light of the EPC's object and purpose, when interpreted in good faith in view of the interests of all stakeholders concerned, includes the implicit, limiting condition that a linguistic error, an error of transcription or a mistake in a document filed with the EPO may only be corrected, if proceedings before the EPO for some other purpose are pending when the request for correction is received by the EPO."
• As a comment, the Board did not discuss the purpose of Rule 139 EPC. The Board also did not consider the Travaux Préparatoires of the rule. 
• "any identity between the effects of a withdrawal of the appeal and of the application, as asserted by the party, would not persuade the Board. For the purposes of these proceedings, it can thus be left open to what extent such effects correspond."
• This is remarkable. The Board bases its decision mainly on a systematic analysis of Rule 139 EPC but then refrains from analysing the systematic consistency with the case law retractions of withdrawals of patent applications. 
• "the appeal proceedings were [] no longer pending [when the request for correction was received].  Rule 139 EPC is thus not applicable to the present request for correction of the withdrawal of the appeal. In line with the conclusion drawn in case T 1244/08, such a request is inadmissible"
• "The board is certainly aware that the conclusions drawn in the present decision deviate from those of the two decisions relating to a withdrawal of the appeal referred to in the CLBA section cited by the Enlarged Board in R 3/22 (see point 3.2.11 above), and of the majority of the earlier decisions cited above relating to a withdrawal of the application, a designation, etc."
• The Board indicates that the President of the EPO will be informed under Art. 20(1) RPBA 2020.
• "As a result, the application was no longer pending on 29 September 2021 and has not been since (i.e. the application was not pending on the dates when the related divisional applications were filed)."
• "With regard to Rule 139 EPC, the then applicant/appellant's move to withdraw its appeal on 28 September 2021 was like crossing the Rubicon. There was no going back."
• "A withdrawal of the appeal is an extremely serious procedural step calling for extreme caution (cf. J 4/03, Reasons 2; J 7/19, Reasons 7, regarding a withdrawal of the application). It seems therefore advisable that clients and representatives coordinate it carefully in advance."
• As a comment, it is interesting that Rule 103 EPC introduced incentives to withdraw appeals, but taking "extreme caution" as a patent attorney (as the current decision instructs us) will probably offset any cost savings for the client. 
• The online register indicates that the refusal of the application was coded in the Register only on 19.05.2023 and is published in the Bulletin on 21.06.2023. 

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

T 0416/19 - Rule 137(5)

Key points

•  The applicant appealed the decision to refuse the application.
• "The decision under appeal was based on the grounds that the main request was not admitted into the proceedings under Rule 137(5) EPC and the subject-matter of claim 1 of the auxiliary request did not involve an inventive step within the meaning of Article 56 EPC."
• "This board endorses the view expressed in T 2431/19, points 2.2 and 2.3 that Rule 137(5) EPC does not provide a legal basis for the exercise of discretion, i.e. for not admitting the amended set of claims into the proceedings."
• ", the examining division based its objection on the fact that amended claim 1 added the feature of displaying a timeline (see decision under appeal, point 14.3). This board endorses the view taken in T 1866/15, points 3.8 and 3.13 that there cannot be a lack of unity between two claims where one limits the subject-matter of the other."
• "Hence, if claim 1 of the second auxiliary request had been present in the set of claims on file at the time of the search, no objection of lack of unity would have been raised."
• " the board finds that the decision of the examining division not to admit the second auxiliary request under Rule 137(5) EPC was not justified."
• However, after some analysis, " the board finds that the subject-matter of claim 1 of the second auxiliary request does not involve an inventive step within the meaning of Article 56 EPC."

EPO 

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

T 0670/20 - Non-analysis clauses and clinical trials

Key points

•  This post is from stock. 
• Documents D19 and D20 relate to phase IIa and phase IIb clinical trials in which patients received treatment .... involving administration of edoxaban for a period of up to ten days. Document D21 (see page 15, line 8) indicates that the edoxaban formulation under investigation during the clinical studies described in documents D19 and D20 [has all the features of claim 1 directed to the pharmaceutical formulation].
• The clinical trials were carried out before the filing date of the patent, the priority being invalid.
• "the appellants [opponents] relied [] on the provision of the tablets under investigation during the trials of documents D19 and D20 to the participating patients who were discharged from hospital before the end of the treatment period. This provision of the tablets to the patients discharged from the hospital before the end of the treatment was not contested by the respondent [proprietor].
• "The assessment of the ground of lack of novelty in view of the trials described in documents D19 and D20 therefore crucially depends on whether the participating patients who received the tablets are to be considered as members of the public who were free to dispose over the provided tablets and thus theoretically in a position to investigate the internal structure of the tablets. "
• " the clinical trials of documents D19 and D20 were carried out in accordance with the EMEA Guidelines for Good Clinical Practice (document D33). These guidelines explicitly require adherence to the prescribed protocol"
• "This set-up of the trials of documents D19 and D20 implies that the patients who decided to participate in the trials agreed, following their informed consent, to use the provided medication according to instruction or to return the unused medication. Accordingly, the participating patients who were provided with the tablets under investigation entered into a special relationship with the investigators of the trials and were with regard to the provided tablets not members of the public that could freely dispose over these tablets."
• "The Board acknowledges that the statements in documents D19 and D20 encouraging patients to discuss their participation in the trials indicates that the patients were not under a duty of confidence with respect to their participation to the trials and the information regarding the trial provided to them in that context. In fact, a duty of confidence regarding such information could be considered to constrain the patients in their ability to freely decide on participating in the trials on the basis of their informed consent, which would seem contrary to the above mentioned guidelines (see document D33, section 4.8). However, the Board finds no reason why the absence of the patients' duty of confidence with respect to the information relevant to their participation in the trials should affect the obligations of the participating patients regarding the use and return of the tablets provided to them, which resulted from their decision to participate in the trials as explained in section 4.3 above."
• "The Board notes, however, that the patients' agreement to use the provided medication according to instruction or to return the unused medication obliges the patients irrespectively of any sanction on non-compliance and therefore disqualifies the patients as members of the public with respect to the medication provided to them. The possibility of non-compliance to the instructed use and return of the tablets by the participating patients does not affect the essence of this agreement. Moreover, the appellants' estimation regarding the likelihood of full compliance remained speculative and therefore without consequence."
• Turning to inventive step (over other documents): " the Board considers that ...the problem to be solved may be formulated as the provision of a solid pharmaceutical composition comprising edoxaban as active ingredient which allows for excellent dissolution properties."
• " the cited prior art provided the skilled person with no reasonable expectation that the use of a combination of a sugar alcohol with pre-gelatinized starch or crystalline cellulose as a water-swelling additive allowed the dissolution of tablets comprising edoxaban to be still further enhanced by coating the tablet with a coating agent as defined in claim 1 of the main request. On the contrary, as indicated in document D23 tablet coatings were expected to have a detrimental effect on the dissolution properties or, in case of thin water-soluble polymers, to have at best no particular effect on dissolution rate of the tablets "
• "the Board agrees with the decision under appeal that the subject-matter of claim 1 of the main request also involves an inventive step."
  
  
• Kudos to the lawyer who added the clause in the protocol. 

EPO 

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

T 1808/21 - Joint development cooperation

Key points

•  "The appellants [opponents] argued that the opposition division erred in its finding of point 4.5.19 of the reasons for the decision under appeal that document D17 did not form part of the prior art in the sense of Article 54(2) EPC."
• "D17 contains an email from Mr Hjorteland of Jakob Hatteland Computer AS to a recipient at the company EVS. "
• "The appellants [opponents] rely in the fact that, due to the lack of a written non-disclosure agreement and within the framework of Russian law, EVS could have been in place of disseminating the content of D17, but not that this actually happened."
•  "The Board is in full agreement with the opposition division [] that an email is not accessible to the general public unless it is forwarded to third parties. This finding has not been disputed by the parties. In the present case it is furthermore uncontested, or at least there is no evidence that could constitute proof of the contrary, that the content of D17 was not further disseminated after the email was sent from Mr Hjorteland to EVS."
• "the decisive matter to be established is whether EVS itself is to be considered as part of the public under Article 54(2) EPC or not."
• I think the focus on email should not distract us, the principle would be the same for a paper letter or a phone call.
•  the Board is convinced that the sender (Jakob Hatteland Computer AS) and the recipient (EVS) of the email D17 were not under a mere commercial relationship to sell or purchase a pre-existing product, and rather concurs with the respondent [proprietor] that both companies had immersed themselves in the development of a new product. This is confirmed at multiple passages of the email, which details inter alia that a new robot must be designed (different than the one available), that a new gripper had to be designed and that new columns of the grid system needed to be developed. The email also provides details of what is included in the "development cost"."
• "it is established case law at the EPO that a cooperation between two parties, in particular to develop a product (in the present case a new robot design and a new grid design), has as a final consequence that the participants in the development and/or the donors or recipients of information linked to such development cannot be treated as members of the public for the purpose of Article 54 EPC"
• 
  

EPO 

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

T 0049/21 - Obiter remarks will be held against you

Key points

•  This is an appeal against a refusal decision.
• " the minutes of the consultation on 10 June 2020 (dispatched on 17 June 2020) show (point 3.2) that the point [concerning] the alleged effect of saving resources not being derivable from the claim wording, had already been communicated to the appellants before the oral proceedings. "
• The application was refused in oral proceedings on 16.06.2020. The applicant attended, and the auxiliary request at issue (AR-2) was discussed. The point was briefly discussed, according to the minutes, other objections to AR-2 were discussed more extensively.
• In appeal, "Auxiliary request 6 filed with the statement setting out the grounds of appeal"
• "it is an amendment within the meaning of Article 12(4) RPBA, which can only be admitted at the discretion of the board. As for reasons for submitting this new request in the appeal proceedings, the appellants argued that it could not have been filed earlier because they had not been aware of the objection to auxiliary request 4 under point 16.5 of the contested decision before they received the written decision. This objection had not been raised at the oral proceedings before the examining division, as could also be seen from the minutes. This request was to address that specific objection."
• These arguments did not convince the board. In point 16.5 of the contested decision, the examining division merely added an "additional remark" to its objections, which are under points 16.1 to 16.4 on which the decision is based. The fact that the written decision has an additional remark does not give the applicant the right to continue examination in appeal proceedings.
• "Furthermore, the minutes of the consultation on 10 June 2020 (dispatched on 17 June 2020) show (point 3.2) that the point raised in this additional remark, namely the alleged effect of saving resources not being derivable from the claim wording, had already been communicated to the appellants before the oral proceedings. Therefore, this request should have been filed in the examination proceedings. Therefore, the board did not admit this request (Article 12(4) RPBA)."
• Note, in connection with a different auxiliary request.
• As a practice point, if there is an unfavourable obiter remark in a decision which is a surprise, argue in an appeal that it violates your right to be heard to include it in the decision, in addition to addressing it on the merits.  In this way, the Board must expressly decide if your right to be heard was violated, which will at least be the case if you were not sufficiently notified by the Examining Division of the obiter issue before the decision. Additionally, object to any new objections that the ED may raise shortly before or during the oral proceedings and always request more time to consider the strategy because any objections or issue that the ED may inform you about can be a bar to addressing it in appeal, as the present decision shows. If the ED denies your request for a break, postponement, or adjournment of the oral proceedings, appeal on that point as well. 
• 
  
• 
  
• EPO 

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

T 0524/18 - Synergistic effect would be non-inventive bonus effect

Key points

• Claim 1 is directed to a fouling control coating composition comprising a polysiloxane-based binder system, a polysiloxanes component, and "one or more biocides" in a specified weight ratio.
• "the coating composition of example 5 of D4 described in table 1 on pages 20 and 21 of that document which embodies [a] traditional silicone anti-fouling coating formulation is a suitable starting point for assessing inventive step of the subject-matter of operative claim 1. The Board has no reason to have a different opinion."
• "it is undisputed that the composition of operative claim 1 differs from the closest prior art only in that it comprises one or more biocides, wherein the weight ratio between the one or more hydrophilic-modified polysiloxanes and the one or more biocides is in the range 1:0.2 to 1:6."
• An extensive analysis of the technical effect based on the admitted evidence follows.
  
  

• While the Board accepts that the addition of a biocide in the weight ratio defined in operative claim 1 leads to an improved anti-fouling performance of the coating composition, the appellant [proprietor] did not submit that the hydrophilic-modified polysiloxane(s) and the biocide(s) when used in combination provide an antifouling effect going beyond the sum of the anti-fouling effects brought about by each of these compounds, i.e. did not submit that those act synergistically. The Board has no reason to have a different view, in particular since the experimental tests submitted are in any event not designed to demonstrate such synergism. 

• " In view of the above, having regard to the antifouling effect of biocides, the absence of any evidence for the criticality of the range of weight ratios between the one or more hydrophilic-modified polysiloxane(s) and the one or more biocide(s) defined in operative claim 1 and the absence of any synergy between these two compounds, the Board is satisfied that the problem successfully solved by the claimed coating compositions over the closest prior art is to be formulated as the provision of a coating composition having improved long-term anti-fouling performance."

• " It remains to be decided wether the skilled person desiring to solve the above problem would, in view of the disclosure of D4, possibly in combination with other prior art documents or with common general knowledge, have modified the composition of example 5 or D4 in such a way as to arrive at the composition of operative claim 1. The respondent '[opponent] referred in this respect in particular to D4 [itself]. ... D4 teaches in claim 6 that the curable composition may contain in addition to components (A) and (B) an antifouling agent"

• " The mere indication of the numerical range for the ratio between the hydrophilic-modified polysiloxane(s) and biocide(s) defined in claim 1 is neither critical nor can it be seen as a purposive choice for solving the problem underlying the patent in suit. On this basis, the additional use of a biocide in an arbitrary amount relative to the amount of hydrophilic-modified polysiloxane which is defined in present claim 1 can only be seen as an obvious measure for the skilled person faced with the problem of providing a coating composition having improved long-term anti-fouling properties. "

• "Referring to the experimental data on file the appellant [proprietor] also argued that the magnitude of the additional antifouling effect resulting from the use of a biocide in the proportions specified in operative claim 1 would be surprising for the skilled person, rendering non obvious the addition of the biocide defined in operative claim 1."

• "This is also not convincing. Having regard to the suggestion in D4 itself, also in line with the teaching of D2 and D9, addressed in the above paragraph, the skilled person expects an additional antifouling effect brought about by biocide compounds. In such as case, where it is obvious from the state of the art that a certain measure, here the addition of a biocide, will bring about an improvement of a certain property, here antifouling properties, a surprising degree of this improvement cannot make this per se obvious measure non-obvious (Case Law, supra, I.D.10.8, in particular T 551/89 of 20 March 1990). [note, this reasoning seems obiter, see the next sentence] 
  Moreover, in the present case, the appellant did not even explain, let alone provide evidence for the scale of improvement which would be expected by the skilled person when using biocide(s). On that basis, the appellant's argument based on the alleged surprising magnitude of the improvement of antifouling properties obtained with the present invention cannot be retained."

• I don't find this reasoning entirely convincing. If some combination is truly synergystic, I would expect it to be inventive. The relevant point of T 551/89 seems obiter, the Board in that case was not convinced that a synergistic efect was obtained.

• EPO 

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