T 1137/21 - European style drafting and Art.123(2)

Key points

• The patent relates to a preparation process. Broad and more preferred ranges are given in the application as filed for the various parameters (temperature, pressure, amounts, types of reagents). 
• "The appellant [proprietor] argued that claim 1 of the main request was based on claims 1, 4, 9, 11, 13 and 17 as originally filed. The inventive examples were pointers since all of them fell under the wording of the claim at issue. Therefore, claim 1 did not present the skilled person with new information."
• The Board: "Claim 1 as originally filed in combination with the dependent claims and the general part of the description covers a large number of possibilities relating to: - the nature of the zeolitic material; - numerous steps of the post-treatment process and sequences of those steps; - numerous operating parameters to be respected during the process steps; Furthermore, many features of claim 1 of the main request are claimed in varying degrees of preference in the dependent claims and/or in the general part of the description."
• "In a case such as this, a systematic approach to deciding whether the requirements of Article 123(2) EPC are met cannot be followed; this has to be decided on a case-by-case basis". "Regarding claim 1 of the main request, the appellant has not indicated a single passage of the original application that discloses - in combination - the features of claim 1 of the main request. Claim 1 is the result of a multiple selection of a very specific combination of features from different dependent claims as originally filed. These selections are made from among numerous possibilities and different degrees of preference:"
• "In addition and by contrast, none of the options of dependent claims 2, 3, 5 to 8, 10, 12, 14 to 16 and 18 as originally filed have been inserted into claim 1. In view of the sheer number of possibilities, the subject-matter of claim 1 at issue is not directly and unambiguously derivable from the dependent claims, even when the general part of the description is taken into account."
• "It is true that the inventive examples still fall under claim 1 of the main request. However, these examples are not sufficient as a pointer to the specific selection defined in claim 1 since they fall under the most preferred options of the various parameters and ranges.  Claim 1 thus corresponds to a multiple selection from a large number of lists and possibilities without a specific pointer."
• "rocess claim 1 of the main request therefore does not meet the requirements of Article 123(2) EPC.  Contrary to the appellant's opinion, there is no diverging case law in this regard either."
• "the conditions of T 1621/16 relate to selections from lists of converging alternatives. However, as regards the period in step (ii)(b) of claim 1 at issue, the appellant chose to combine the preferred lower end point 1 h and the broad upper end point 24 h of claim 9 as originally filed. By arbitrarily combining the end points, the appellant has taken claim 9 as originally filed not as a list of converging alternatives but as a kind of pool of elements from which individual elements are combined. Therefore the selections made in claim 1 cannot be considered selections from a list of converging alternatives. The board notes in this regard that the appellant has not disputed the respondent's view that the case in hand also includes selections from non-converging lists."

EPO 

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

T 1586/21 - Use the rejoinder

Key points

• The opponent appeals against the decision of the OD that the main request was allowable.
• The Board agrees with the opponent that claim 1 as granted is obvious over D11.
• The patentee as respondent filed Auxiliar Request 1 in appeal. 
• "During the oral proceedings the appellant argued that in their letter they submitted an inventive step objection which contained all arguments put forward during the opposition proceedings as regards auxiliary request 1, which corresponded to the auxiliary request 1 underlying the contested decision and upon which the Opposition Division did not decide."
• The letter was filed after the summons for oral proceedings.
• "The Board judges that the circumstances of the present case do not qualify as exceptional. The respondent with the reply to the statement of grounds of appeal resubmitted the auxiliary requests which correspond to those filed before the Opposition Division. Said reply was filed on 4 April 2022 and the summons for oral proceedings were sent on 22 February 2023. The appellant had ample time to file the objections submitted with letter 3 April 2023 before the summons to oral proceedings in order to complete its appeal case. The more so, since these objections allegedly represent a mere resubmission of objections filed during the opposition proceedings."
• "Since there are no reason justifying the amendment to the appellant's case consisting in filing the inventive step objection with letter of 3 April 2023, and since there are a fortiori no reasons justifying completing and/or substantiating inventive step objections during the oral proceedings before the Board, these objections are not taken into consideration pursuant to Article 13(2) RPBA 2020."
• Note, that if the arguments had been filed under Art. 13(1), they should logically have been admitted  under Art.12(4) (the "admissible raised and maintained exception").
• 
  

• EPO 

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

T 1484/19 - Request after decision

Key points

•  "With its letter dated 24 November 2022, the patent proprietor (respondent) stated that it no longer approved the text in which the patent had been granted and would not submit an amended text. It also withdrew all auxiliary requests filed during appeal proceedings."
• "In the morning of 29 November 2022, the board issued its decision revoking the patent in the absence of a text agreed by the respondent (Article 113(2) EPC). The decision was authenticated at 09.20 hrs CET by the Chairwoman and at 09.57 hrs by the Registrar and sent to the postal service for dispatch at 10.01 hrs."
• "By letter dated 29 November 2022, filed electronically and received at the EPO at 14.55 hrs CET, appellant 2 requested a partial reimbursement of the appeal fee under Rule 103(3)(a) EPC and apportionment of costs."
• "the board therefore considered the issue of whether, in light of decision G 12/91 (OJ EPO 1994, 285), appellant 2's request for apportionment of costs, which was filed on the day of completion of the internal decision-making process for the decision of 29 November 2022, was submitted in time for it to be considered by the board. The board concluded that the completion of the decision-making process within the meaning of decision G 12/91 had to be determined with reference to a date and not an hour or an exact time on a date. Consequently, appellant 2's request was filed after the decision-making process had been completed."
• "the board also questioned whether decision G 12/91 was concerned with a decision as to substance but not with a situation as in the current case in which appeal proceedings are terminated without a decision. Indeed, under the established case law, a withdrawal of appeal terminates the proceedings on the merits at once (without decision as to substance), but the board still has the power to decide on ancillary questions such as the reimbursement of the appeal fee"
• "it could be argued that the decision of 29 November 2022 brought the appeal proceedings to a close for the substantive merits of the appeals ... while leaving ancillary questions like costs open to a decision. Consequently, the board would have the power to decide on the request for reimbursement of the appeal fee and for apportionment of costs filed after the completion of the internal decision-making process."
• " It can be left open whether and, if so, to what extent legal certainty imposes limitations as to the admissibility of a request for apportionment of costs filed after termination of the appeal proceedings (in line with the approach taken in T 1556/14 of 15 October 2020) as the current request is not allowable for the following reasons." 
• The Board issues a preliminary opinion on 09.11.2022, in advance of the oral proceedings scheduled for 01.12.2022 (!) (summons 18.01.2022). The proprietor then disapproved the text of the patent on 29.11.2023. The Board sees no abuse of procedure in this action of the proprietor. 
• As a comment Rule 115 EPC only specifics a minimum period of 2 months notice for the summons, Art. 15(1) RPBA specifies a period of four months for the summons, and Art. 15(1) sixth sentence RPBA only specifies that the Board " shall endeavour to issue the [preliminary opinion] at least four months in advance of the date of the oral proceedings". Apparently, sometimes the preliminary opinion is issued less than one month in advance.

EPO 

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

T 2705/19 - Calling names (of polymers)

Key points

•  In what might be also relevant for G 1/23, a decision about sufficiency of disclosure and commercially available polymers.
• " Claim 1 relates to an aerosol hairspray product having a formulation which requires a mixture of a "hard" hairstyling polymer and a "soft" hairstyling polymer. The two types are defined by the chemical composition, glass transition temperature and molecular weight." 
• " Paragraph [0042] of the patent discloses Acudyne**(TM), Balance**(®)CR, Amphomer**(®)and DynamX**(®) H2O as suitable polymers. The first three have the chemical nature of "hard" polymers; DynamX**(®) H2O is a "soft" polymer." 
• " The appellant [opponent]  argued that the types of polymers required by claim 1 were not clearly disclosed for the claimed invention to be reworked." 
• " Of the polymers wich could be "hard" in view of their chemical composition, Balance**(®) CR did not have the required molecular weight. The appellant argued that there were reasonable doubts if any disclosed polymer had the required properties." 
• " The appellant  [opponent] did not argue, let alone provide evidence, that polymers having the properties required by claim 1 were either not available or could not be prepared. The appellant's argument hinged on whether polymers suitable for the claimed invention could be reliably identified." 
• As a comment, the precise meaning of "available"  and "could be prepared"  (as well as the double negative in the sentence) could be an interesting aspect of G 1/23. Is it sufficient for Art. 83 that an ingredient of the claimed composition can be bought under its tradename? What if there is only a single supplier that is able to manufacture the ingredient using a secret process? What if manufacturing the ingredient without knowledge of the secret process requires inventive skills?
• " even if the polymers cited in the description of the patent lacked the properties required by claim 1, the Board sees no reason why a skilled person could not have found suitable alternatives." 

EPO 

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

T 1906/19 - On the meaning of Art. 13(2) RPBA

Key points

• " The Board understands [the wording of Article 13(2) RPBA 2020] as laying down a basic rule but leaving some limited leeway for exceptions. The basic rule is that amendments are not considered unless there are exceptional circumstances justified by cogent reasons (by the submitting party). The leeway for deviating from this rule lies in the expression "in principle" ("en principe"; "grundsätzlich"), which the Board reads roughly as "as a rule", meaning that the provision's basic rule is not entirely without exception. This leeway, when applied, means that an amendment can be considered despite the absence of exceptional circumstances justified by cogent reasons." 
• Art. 13(2) RPBA in relevant part: " Any amendment to a party's appeal case made after [the summons to oral proceedings]  shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned."
• Cf. T2125/18 .
• The idiomatic phrase "as a rule" means "usually".
• " Article 13(1) and (2) RPBA 2020 defines the second and third levels of the convergent approach practised by the Boards of Appeal when deciding on admission. Together with the first level specified in Article 12(4) RPBA 2020, Article 13(1) and (2) sets increasingly stringent hurdles for the admission of new requests and other amendments. This stepwise approach for deciding on the admission of amendments would lose some of its coherence and convergence, if the Boards could exercise discretion on the first two levels but not the third. This Board interprets the passage "shall, in principle, not" as indicative of a remaining (though restricted) discretion." 
• Turning to the facts of the case: " In the present case, the [applicant/appellant] did not follow the common practise, [viz.] when submitting amended requests, of maintaining at least some previous requests  (seemingly) out of fear of being left with no admissible requests. This practice [i.e. not simply filing amended claims, but filing amended claims as additional auxiliary requests] sometimes means the Board and parties have to spend considerable time on requests that even the applicant or proprietor no longer thinks are viable. Instead, the appellant gave the Board a single set of claims to consider. It is true that it was twice further amended during oral proceedings, but the amendments were, in each case (including those filed before oral proceedings), straightforward, within the limits of the debate, and finally led to a set of claims that was, prima facie, clearly allowable." 
• " The succession of requests in the present case was not detrimental to procedural economy. There was no inconvenience for the Board, and no other party to the proceedings was affected." 
• "  The primary reason for the convergent approach is procedural economy. It would be unfortunate if it were so strictly applied that appellants, in ex parte proceedings, were seriously discouraged from filing a promising and facilitating new request and dropping non-viable requests." 
• " The circumstances in this case might, arguably, be exceptional; but whether they are or not, the Board, noting that the criteria under Article 13(1) RPBA 2020 come out favourably for the appellant, exercised the discretion provided by "in principle" in Article 13(2) RPBA 2020 and decided to admit the sole request." 
• As a comment, this approach seems sensible and pragmatic. I hope it will not remain an isolated decision. 
• 
  

EPO 

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

T 1538/19 - Correction of debit order

Key points

• The appellant pays the appeal fee at the reduced rate by debit order. After an invitation of the Board to submit evidence of the SME status, the appellant requests a correction of the debit order.
• " The Board is convinced that by filing the appeal the appellant had the intention to pay the full appeal fee. In its supplemental declaration of 3 September 2020 the appellant's professional representative convincingly stated that it had never been his intention to pay the reduced fee - because his client never gave such an instruction - and that the error occurred simply because a member of the support staff ticked the wrong box on the form which he then overlooked. This is also in line with point 5 of the declaration of the representative's assistant, dated 6 March 2020. The Board has no reason to mistrust these statements. By contrast, nothing in the file indicates that the payment of the full fee could not have been intended. The Board therefore concludes that, in this case, the submitted evidence meets the requirements set out by the Enlarged Board." 
• The appeal is considered to have been filed. 

EPO 

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

T 1140/21 - Hair processing and industrial applicability

Key points

• Art. 57 is not discussed in this opposition appeal.
• ""1. A method for processing hair, which comprises mixing while stirring a hair processing composition comprising [compound X and Y] and applying the composition to hair to allow a silanol compound [having formula Z], to penetrate into the hair.""
• Now, as a question to readers, how is this method susceptible of industrial application, as required by Art. 52?
• The same question can be asked about T1486/20, wherein claim 1 was about: "A process of treating the hair comprising the following consecutive steps..."
• The answer is T 144/83:  "   It is the view of the Board that the invention also complies with the requirements of Article 57 EPC. According to the article the invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry. That this is the case of the present invention is not in doubt since it can be used by enterprises whose object is to beautify the human or animal body. Such enterprises in the cosmetic field - such as cosmetic salons and beauty parlours - are part of industry in the sense of Article 57 EPC, since the notion of concept "industry" implies that an activity is carried out continuously, independently and for financial gain. The Board has already decided that "the professional use of such inventions in a cosmetic salon is an industrial application in the sense of Article 57 EPC" (cf. unreported decision in case T 36/83, of 6 May 1985)."
• T 36/83: "The applicants have chosen the phrase "use as a cosmetic product of thenoyl peroxide". The Board considers that this form of claim is acceptable in the case in suit. In the Board's opinion the question of industrial application does not arise, since professional use of the invention in a beauty parlour is an industrial application within the meaning of Article 57 EPC."
• 
  

EPO 

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

T 1133/21 - Drafted to provide a large reservoir of options and alternatives

Key points

• "In the current case, the application [as originally filed] was drafted to provide a large reservoir of options and alternatives to be selected and combined to create a vast number of embodiments."
• When the Board includes such a remark in the decision in the opposition case, the outcome under Art. 123(2) EPC becomes easy to predict. 
• Still, "the assessment of whether this standard is complied with is very case specific. It requires taking into account the teaching of the application as filed as a whole, avoiding artificial semantic constructions. Factors which may play a role in the assessment are, inter-alia, the number of alternatives disclosed in the application; the length, convergence and any preference in the lists of enumerated features; and the presence of examples pointing to a combination of features. For instance, if the values in a number of examples are clustered within specific ranges, this may provide a pointer to those ranges."
• " the mere fact that features are described in terms of lists of more or less converging alternatives does not give the proprietor carte blanche to freely combine features selected from a first list with features selected from a second list disclosed in the application as filed. Any such amendment will only be allowable under Article 123(2) EPC if it complies with the gold standard."
• "Decision T 1621/16 does not provide for an exception to this rule. It requires, in fact, that a claim amended on the basis of multiple selections from lists of converging alternatives may only be considered to meet the requirements of Article 123(2) EPC if the application as filed includes a pointer to the combination of features resulting from the multiple selections".
• Turning to the facts of the case: "The application describes a clinical study monitoring the concentration of HMOs in human milk during lactation. The results show that the concentrations of HMOs decrease over time. However, the application was drafted to go far beyond this finding and to encompass age-tailored nutritional systems which can satisfy any foreseeable evolving nutritional need for HMOs, not only their decrease over time."
• " In view of the very broad teaching of the application [] as filed and the vast number of alternative options disclosed in the application, the current case cannot be compared to T 350/18."

EPO 

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

T 0635/21 - The divisional game at the EPO

Key points

• The patentee withdrawals its appeal during the oral proceedings before the Board.
• ". The Board is mindful of the fact that in certain circumstances, the withdrawal of an appeal can be considered abusive, namely in the context of several (pending) divisional applications where the withdrawal of an application or appeal is meant to avoid legal certainty, see e.g. the decision of the District Court Munich of 24 February 2020 (7 O 1456/20), headnote 1: "A patentee that on the basis of a parent application has branched off several, mostly identical divisional applications, acts contrary to honest practices when by voluntarily dropping the patent right prior to a decision of the opposition division, avoids a decision of the Boards of Appeal for a parallel divisional patent that could clarify the legal situation for the whole field of the invention". Further such practices are highlighted by K. Foss-Solbrekk, "The Divisional Game: Using Procedural Rights to Impede Generic/Biosimilar Market Entry", 53 IIC 1007-1037 (2022)."
• As a comment, "considered abusive" may also be interpreted in connection with national law and EU competition law.
• "for the case at issue, the board remarks that it is established case law that an appellant has the right, based on the principle of party's disposition, to withdraw its appeal at any time and that the use of a right does not in principle constitute an abuse (see for example decision T 0674/03). Moreover, there is in the Board's view insufficient evidence that the withdrawal of the appeal was part of a systematic approach by the appellant to avoid clarifying the issues of patentability by way of a written decision on such issues. The board thus concludes for the above reasons that the respondent's request for apportionment of costs is not justified and that any party has to bear the costs it has incurred."
• The case was about bendable glass.
• As a comment, during the oral proceedings, the Board announced a conclusion that AR 68 (!) did not meet the requirements of Article 83 and that this issue appeared to apply to all other requests on file. Had the Board announced this finding directly as a decision, the Board would be obliged to issue the written decision. 

EPO 

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

T 0140/21 - Rule 137(5)

Key points

• The Examining Division refuses amended claims of an auxiliary request under Rule 137(5), first sentence.
• "in its reasons the Examining Division argued that "original claim 1 was concerned with solving the problem of platform-independent graphics rendering, but the amended features are concerned with solving the different problem of handling and processing input gestures"
• For [Rule 137(5)] to apply, it must thus be shown (i) that the amended claims relate to unsearched subject-matter and (ii) that they lack unity with the originally claimed invention or group of inventions".
• The Examining Division argues that "These amended features could not have been expected to be searched since they do not relate to the originally claimed invention nor are they disclosed in combination with the originally claimed invention in a specific embodiment of the originally filed description".
• The Board considers this assertion to be inaccurate. " Although the International Search Authority had identified three separate inventions, only the second and third of which contained the gesture-related features, all were even­tually searched (see the Written Opinion of the Inter­national Search Authority, 5 June 2014, Box No. IV and Box No. V). Moreover, original claim 10 contained both the gesture-related features and referred to "platform independent graphics rendering" (reciting a "generic scene graph [...] executable on a plurality of different technology platforms")."
• "Original claim 10 having been searched, the Board has no doubt that the subject-matter of the claims of the third auxiliary request was also searched."
• As a comment, I find this reasoning of the Board to be less helpful. Rule 137(5), first sentence, is not concerned with the payment or not of additional search fees, because that is addressed by G 2/92 (see my article). Because the feature is specified in original claim 10, the amended claim likely has unity of invention of invention with original claim 10, which is sufficient for Rule 137(5) to be inapplicable. If the context of the feature is different between original claim 10 and the current claim such that there would be an additional lack of unity of invention if the current claim was to the original set of claims (over and above any lack of unity between the original claims themselves), then likely the feature was not searched in the context of current claim 1 either.
• " The Board concludes that Rule 137(5) EPC, first sentence, does not preclude consideration of the third auxiliary request. "
• "It is therefore up to the Examining Division during the further prosecution to decide again on their consent under Rule 137(3) EPC to this amendment."
• The case is remitted.

EPO 

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

T 2845/19 - No derogation of Art. 123(3)

Key points

• The patentee amends the claims to bring them in conformity with the originally filed application in Japanese.
• "According to Article 14(2) EPC, a translation into one of the official languages of the EPO may, throughout proceedings before the EPO, be brought into conformity with the application as filed. During the opposition procedure, the proprietor filed amendments to the patent as granted in order to correct errors in the translation into English from the originally filed application in Japanese. These corrections were supported by [the Certified translation into English of the originally filed application in Japanese]."
• "According to Article 123(3) EPC, a European patent may not be amended in such a way as to extend the protection it confers. This requirement must therefore be met by claim 1 of the main request with respect to claim 1 as granted."
• After an review of the technical facts of the case, the Board concludes that: "it thus follows that claim 1 of the main request has been amended relative to claim 1 as granted in such a way as to extend the protection conferred by the European patent, contrary to the requirement of Article 123(3) EPC. The main request is therefore not allowable."
• Implicitly, Art. 14(2) provides no exception from Art. 123(2). In fact, in terms of the assessment under Art. 123(2), it is duplicative with Art. 70(2). The meaning appears to be procedural and an exception of R. 137(3). Whether Art. 14(2) provides an exception of Art. 13(1) and (2) RPBA remains to be seen.
• The patentee had submitted an auxiliary request before the OD. The OD did not examine that request as it found the patent as granted to be allowable.
• " The respondent requested that the case be remitted to the department of first instance for further prosecution since the opposition division had failed to consider the auxiliary request on file before it, which allegedly amounted to a substantial procedural violation."
• The Board does not remit the case as a matter of their discretion. Hence, the auxiliary request is not examined in substance, neither for allowability nor admissibility. 
• I note that the auxiliary request was not discussed in the patentee's reply to the appeal. 

EPO  T 2845/19

T 0235/20 - No objections, no appeal

Key points

•  The OD decided to maintain the patent in amended form. The opponent appeals . The question is whether the opponent was adversely affected by the decision.
• "According to the decision under appeal "[t]here were no objections from the opponent against the claims of Auxiliary Requests [sic] VI"
• Furthermore, also according to the minutes of the oral proceedings before the opposition division, the opponent / appellant II "did not have any objections to said request [auxiliary request VI]"
• "appellant II [opponent] has not, in its statement of grounds of appeal or at any stage thereafter, taken issue with the fact that, in the decision under appeal, the opposition division had not given any reasons as to why auxiliary request VI complied with the requirements of the EPC. To the contrary, during the oral proceedings before the board, appellant II confirmed that the minutes of the oral proceedings before the opposition division correctly reflected its statements made during the oral proceedings. "For the reasons which follow, appellant II's submission that it was nevertheless adversely affected by the opposition division's decision because it had requested that the patent be revoked in toto in the opposition proceedings is not found to be persuasive.
• "It is apparent from the decision under appeal (see section I.2) and the minutes of oral proceedings (see point 1.b) that revoking the patent in toto represented appellant II's initial request made both in the notice of opposition and at the beginning of the oral proceedings. Appellant II's subsequent statement that it had "no objections" to the then auxiliary request VI made in the course of the oral proceedings before the opposition division can therefore only be understood to mean that it agreed to the patent being maintained in amended form on the basis of auxiliary request VI, implying that the initial request for the patent to be revoked in toto had been withdrawn and that appellant II's final position was that the patent should be upheld neither as granted nor in any version broader in scope than auxiliary request VI."
• "In the board's view, appellant II therefore cannot be considered to be adversely affected within the meaning of Article 107 EPC by the opposition division's decision according to which the patent could be maintained in amended form according to auxiliary request VI, in respect of which appellant II had declared that it had no objections at the end of the opposition proceedings."

EPO 

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

T 1283/19 - A request for conversion in appeal

Key points

• The appellant/applicant is a natural person represented at the relevant time by a person (link to the file) who, it seems, was at that time a lawyer of an EPC contracting state.
• The applicant's auxiliary request was that, in translation: "- as auxiliary request I, that the board activates and formalizes the request for conversion under Article 135 EPC;"
• The Board: "In view of the suspensive effect of the appeal (Article 106(1), second sentence, EPC), the appellants' request for conversion cannot be considered during the appeal proceedings, since such a request for conversion cannot be issued before the application is deemed withdrawn, withdrawn or denied. Taking the above into account, the board cannot deal with the request for conversion under Article 135(1)(b) EPC, nor the request for reimbursement of the fee paid by the appellants under this head."
• 
  
• The interested reader can check if a request for conversion shows up in the online file : https://register.epo.org/application?number=EP16001340&lng=en&tab=doclist 
•  an Abzweigung in Germany can also be filed.
  

EPO 

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

T 0487/20 - Deleting dependent claims

Key points

•  "the simple deletion of dependent claims from a claim request, as in the present case, also constitutes an amendment of the appeal case within the meaning of Article 13(1) and (2) RPBA 2020."
• On the amendment of claim 1 in appeal, the Board that the patentee was not required to  present it before the OD: "However, the arguments set out in the contested decision were only touched on briefly in the last paragraph on page 4 of the letter dated 2 October 2019, which was submitted shortly before the oral proceedings. During the oral proceedings before the opposition division, the arguments were discussed only in the context of a single question by the first examiner of the opposition division, see point 5.2 of the minutes.

  Thus, although the appellant undisputedly had an opportunity to respond during the oral proceedings before the opposition division, in the circumstances the Board does not consider that the appellant was under an obligation to respond immediately in the limited time available during the oral proceedings before the opposition division, which lasted only 75 minutes in total."

EPO 

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

T 0862/20 - A mental method

Key points

•  Claim 8 reads as follows: "Method for providing information for glycemic control, namely a dose of insulin to be set, the method comprising the steps of:

  receiving security data; validating the received security data; providing validation data corresponding to the validation of the received security data; and unlocking at least a predetermined function out of at least one first and at least one second processing function for execution based on the validation data, wherein the at least one first processing function is for adjusting profile parameters for a selected dose adjustment profile, and the at least one the second processing function is for stepwise adapting the dose of insulin based at least on the selected dose adjustment profile and thereby determining the value for the dose of insulin to be set based on received blood glucose value data, wherein the profile parameters for each different dose adjustment profile comprise a specific initial dose value, a specific time interval for increasing the dose, a specific dose increase step and a low blood glucose threshold value."

• The Board's decision includes an explanation of the invention. "The contested patent relates to a medical device for providing... a dose of insulin to be set " "In order to prevent an unauthorised person from modifying the device (in particular modifying the dose adjustment profiles) or using it in a way which could be harmful to the user, the device is configured to prohibit the execution of one or both of the processing functions until successful validation of some security data, such as an activation key or a password". 

• "Although, as argued by the appellant [proprietor], the method steps recited in claim 8 as granted are phrased using terminology commonly encountered in the field of computer-implemented methods, the Board shares the respondent's view that all these steps can also be carried out by the sole human brain and that they do not necessarily require the use of technical means, even implicitly.

  The example scenario presented by the respondent [opponent] in this respect is convincing. As submitted by the respondent, all the adjustment and adaptation steps of claim 8 could indeed be performed mentally by a user, e.g. on the basis of profile parameters memorised by the user. Obtaining and checking a password or a passport amounts to receiving and validating security data. A step of "unlocking a function for execution" takes place when the user decides to perform certain actions, such as the above-mentioned adjusting or adapting steps, only after having successfully validated the identity of another person, whereas the execution of these actions remains prohibited if the person is considered to be unauthorised.

  The Board therefore concurs with the respondent that claim 8 as granted relates to a method for performing mental acts as such, which is excluded from patentability pursuant to Article 52(2)(c) EPC."

• "Claim 8 of auxiliary request 1 explicitly stipulates that the method is "computer-implemented". As acknowledged by the respondent, the method has therefore a technical character and is not excluded from patentability under Article 52(2)(c) EPC."

• The case is remitted to the OD for consideration of novelty and inventive step.

• EPO 

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

T 0433/19 - The retroactive effect of Art.13(2) bites

Key points

•  Claim 1 of the main request is found to lack basis in the application as filed.
• " Auxiliary requests I and III constitute an amendment to the respondent's appeal case after notification of a summons to oral proceedings. Under Article 13(2) RPBA, these requests must, in principle, not be taken into account unless there are exceptional circumstances justified with cogent reasons by the respondent." 
• I note the appeal was filed in 2019, before the entry into force of the RPBA 2020, but that is no valid argument.
• " The respondent [proprietor] argued that the numerous objections of added subject-matter raised with the notice of opposition and the consistently positive opinion by the opposition division on all objections did not render it necessary to file auxiliary requests addressing these objections. Firstly, the board notes that on appeal only four objections of added subject-matter were raised by the appellant. Secondly, it lies in the very nature of appeal proceedings at the EPO that a board may reach a different conclusion than the department of first instance on an issue under dispute. Hence, the mere fact that a board finds an objection - which had been raised and discussed in the opposition proceedings - convincing that the opposition division did not does not represent exceptional circumstances." 
• The issue under Art. 123(2) is that claim 1 as granted committed a feature compared to claim 1 as filed. In AR-1, this feature is re-introduced.
• " The respondent [proprietor] further argued that the feature added to claim 1 was present in original claim 1. This is, however, in itself not sufficient for the admittance of auxiliary requests I and III in view of Article 13(2) RPBA, which prescribes that exceptional circumstances for any amendment to the respondent's appeal case be present. Moreover, the respondent's remarks on the alleged lack of impact of the claim amendments on the assessment of patentability in view of the prior art are speculative. ... There are thus no exceptional circumstances within the meaning of Article 13(2) RPBA. The board thus decided not to admit auxiliary requests I and III into the proceedings."
•  

EPO 

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