T 0667/23 - A difference no matter how small

Key points

•  "D1/D1a discloses an alloy C1 falling within the scope of claim 1 except that alloy C1 contains 1.00 wt.% Si. The opponents mainly argued that the lower endpoint of the claimed range (1.03 wt.%) could not establish novelty since it was not far removed from the example. Reference was made to decision T 673/12.
• "The board is not convinced by the opponents' arguments.
• "The concept that a claimed sub-range must be "narrow" compared to the known range and "sufficiently far removed" from any examples disclosed in the prior art originates from decisions T 198/84 (Reasons 5), which is summarised briefly in T 279/89 (Reasons 4.1). It has been accepted as a kind of novelty test for selection inventions. "
• "This board agrees with T 1688/20 (Reasons 3.2.1) that this concept is not in agreement with direct and unambiguous disclosure, which is the uncontested criterion established later on in the case law for evaluating novelty. As explained in T 1688/20, the relative terms "narrow" and "sufficiently far removed" do not provide objective, solid and consistent criteria for establishing the novelty of a selected sub-range. Therefore, these terms are dependent on the case and context and involve considerations linked to the technical effect of the range. Consequently, the concept cannot be reconciled with direct and unambiguous disclosure. It is instead considered to be relevant for inventive step. In fact, neither T 198/84 nor T 279/89 even mentions direct and unambiguous disclosure."
• The difference is the Si content is neither found to provide a technical effect nor an inventive step.

EPO 

The link to the decision can be found after the jump.

T 0509/22 - Technical effect not mentioned, G 2/21 still complied with

Key points

• The Board, in translation: " It is correct that these effects - improvement in lubrication performance and leak detection - are not explicitly mentioned in the patent in question.
• " However, it is not required that an effect be explicitly mentioned in the patent or patent application in order for it to be taken into account in the assessment of inventive step. Indeed, the condition set out in the decision of the Enlarged Board of Appeal G 2/21 requires only that the skilled person, on the basis of the application as filed, would consider the said effect to be included in the technical teaching of the patent application. "
• Mentioning the technical effect is, hence, neither a necessary nor a sufficient condition. It really depends on the technical field. 
• "In the present case, the board is of the opinion that the skilled person, when searching for compositions for use in refrigeration systems, inevitably takes into account lubrication and leak detection effects, in particular because these effects are indispensable for the effective use of the compositions as a refrigerant. The problems of achieving these effects are therefore subsumed within the more general problem of making refrigerant compositions available.
• Therefore, the Chamber takes into account the test results described in document D27."
• " Document D27 therefore reveals that the presence of HCC-40 in composition A increases the usefulness of the composition as a refrigerant compared to a composition B which does not contain HCC-40. The technical effect produced by the distinguishing feature therefore consists at least in that a preparation containing a small amount of HCC-40 is characterized by improved leak detection."
• The Board, in the present case, does not discuss if the application makes it prima facie credible that the technical effects are achieved by the claimed invention. 

EPO 

The link to the decision can be found after the jump.

R 0006/21 - Clearing the backlog

Key points

• The EBA is currently clearing its backlog of petition for review cases. Which means that it had to finally issue a decision in this case, after slightly more than four years.
• The decision seems to contain nothing especially challenging.
• Water down the bridge?
• Well, let's not forget the importance of proper docket management. Which is not only about mean tendencies but also about the P95 percentile values. And about leading by example.
• I would like to give credit to the EBA for the 100% transparent docket of petition for review cases. 

EPO 

The link to the decision can be found after the jump.

T 2497/22 - Putting the effect in the claim and a claim feature in the OTP

Key points

• On the EQE, you are thaught to include no pointers to the solution in the objective technical problem.
• Claim 1 in this case: "1. A transparent or translucent liquid laundry detergent composition, wherein the composition comprises 
• from 1% to 20% by weight of alkyl ether sulfate ... 
• from 0.1% to 5% by weight of amine oxide; 
• from 0.1% to 5% of a cleaning polymer; from 1% to 15% by weight of a solvent comprising 1,2-propanediol; and water; 
• wherein the transparent or translucent composition has 50% transmittance or greater of light  [...] "
• The parties did not dispute the view that D2 is the closest prior art. D2 is concerned with the preparation of liquid detergent compositions comprising only biodegradable and eco-friendly ingredients and exhibiting exceptional performance compared with traditional detergent formulations
•  It was undisputed that the composition of claim 1 as granted differs from those of D2 in that it contains 0.1 to 5 wt.% of an amine oxide and in that it is transparent or translucent.
• As to the technical effect brought about by these differences having regard to the closest prior art, the appellant did not contest the view that the comparative tests in Examples 2 to 4 of the patent show that the composition of claim 1 performs better than two known eco-friendly laundry detergents and similarly to a traditional laundry detergent. The main point in dispute between the parties was whether the transparent or translucent feature in claim 1 was technical or, at least, whether it contributed to the technical character of the invention. 
• Ultimately, the question arose as to whether the transparent or translucent feature could be taken into account in the assessment of inventive step.
•  According to the appellant [opponent], the transparent or translucent feature was merely aesthetic and the patent did not explain how transparency or translucency contributed to the technical character of the invention. Therefore, the feature could not be taken into account in the assessment of inventive step.
•  The board disagrees. Claim 1 defines a liquid laundry detergent composition characterised by the result to be achieved, namely that the composition is to have at least 50% transmittance of light [].  This result implies that the composition is transparent or translucent. Thus, transparency or translucency is not only a technical feature that physically characterises the claimed composition. It is, in fact, also a technical effect resulting from the combination of ingredients defined in claim 1. Contrary to the appellant's view, neither transparency nor translucency has to produce additional technical effects in order to be taken into account in the assessment of inventive step. They themselves make a technical contribution to the invention. Moreover, as noted by the respondent [proprietor], being transparent or translucent is a desirable feature since it shows that the composition is stable and it is a feature associated with cleanliness by many users.
• " the objective technical problem solved by the composition of claim 1 can be defined as providing a transparent or translucent liquid laundry detergent composition based on renewable components that has a cleaning performance comparable to that of traditional detergents."
• So the distinguishing feature is included in the OTP.
• The appellant did not cite any prior-art document suggesting that the addition to the compositions of D2 of an amine oxide in the amounts defined in claim 1 could solve this objective technical problem. Therefore, the subject-matter of claim 1 is not obvious.
• Apparently, the opponent did not contest that adding amine oxides made the composition more transparent than the one of D2, even though the Board only states that "examples 2 to 4 of the patent show that the composition of claim 1 performs better than two known eco-friendly laundry detergents and similarly to a traditional laundry detergent".
• Would the outcome of the case have been different if the claim only recited the amount of amine oxide as a distinguishing feature and mentioned transparency in the description?

EPO 

The link to the decision can be found after the jump.

T 1574/23 - GL examples on inventive step

Key points

• The Board: "The appellant's  [applicant's] view is however correct in this respect. The platform of D3 is clearly limited to a height/diameter ratio of less than 0.05 (see claim 1). Accordingly, D3 teaches away from the claimed ratio. The cited reference to Annex 3.1 (ii) of the Guidelines for Examination in the decision is not correctly interpreted by the Examining Division."
• The reference is to the following example in the  Guidelines, Chapter G-VII (Inventive step), Annex, para. 3.1 "Obvious and consequently non-inventive selection from among a number of known possibilities." - ...(ii): "The invention consists in choosing particular dimensions, temperature ranges or other parameters from a limited range of possibilities, and it is clear that these parameters could be arrived at by routine trial and error or by applying normal design procedures."
• Fun fact: this paragraph is almost verbatim the same as in the 1st edition of the Guidelines (1978): Chapter C-IV, 9.8, C1:

• In case you wonder, the 1978 GL are not (yet) on the EPO GL archive page.  If you are interested, please contact the EPO, and if that doesn't work, feel free to contact me. 
• There is a lot to say about these examples. In particular, they predate the EPO's problem-solution approach, which was developed by the boards of appeal in the early years of their operation, i.e., after 1978. The first edition of the GL was drafted by various national delegations and an Interim Committee. For that reason, the examples omit the steps of identifying the technical effect, and the particular example speaks of 'could' whereas the actual rule is "would (not merely could) have arrived at " (according to the later decision T2/83). Indeed, the Annex is called"Examples relating to the requirement of inventive step – indicators", with the "indicators" (Indizien) referring the method that was used to examine the inventive step requirement by the national courts and patent offices before the PSA was developed by the EPO. 
• 
  
• The Board in the present case, as cited in part before: "The appellant's  [applicant's] view is however correct in this respect. The platform of D3 is clearly limited to a height/diameter ratio of less than 0.05 (see claim 1). Accordingly, D3 teaches away from the claimed ratio. The cited reference to Annex 3.1 (ii) of the Guidelines for Examination in the decision is not correctly interpreted by the Examining Division. The issue at hand is not a selection in the sense of a choice from a limited range of possibilities in the prior art, since D3 does not disclose a range of ratios within the claimed ones (0.06 to 0.35), but of less than 0.05 (see claim 1 and page 11 of D3). It is not apparent why the skilled person, starting from the platform of D3, would seek to optimise such a ratio outside the specific teaching of staying below 0.05. The reasoning is tainted by hindsight."
• "Consequently, the decision is incorrect in this respect and the subject-matter of claim 1 is not rendered obvious by the combination of D3 with common general knowledge."
• "Furthermore, since none of the cited documents teaches or points to such a ratio for a disc-shaped platform with a completely watertight radial structure, the subject-matter of claim 1 cannot be rendered obvious by them (Article 56 EPC)."
• 
  

EPO 

The link to the decision can be found after the jump.

T 0002/23 - On the basis of the prior art provided

Key points

• This case is about exceptional circumstances under Art. 13(2) (admitted) and a non-obvious alternative (also acknowledged)
• The reasoning on inventive step set out in the statement of grounds of appeal [of the opponent], while it started from D2 as the closest prior art, exclusively relied on a combination with documents D1 or D9 to arrive at a conclusion of lack of inventive step of granted claim 1 (statement of grounds of appeal, sections I.5.1 and I.5.2). 
• While the preliminary opinion of the Board was mainly based on paragraph 49 of D2 which was amply discussed in the decision under appeal [...] and by the appellant in appeal [...], it shed a new light on the analysis of inventive step by drawing a preliminary conclusion that there was lack of inventive step on the basis on document D2 alone, while considering unsuccessful the attacks of the appellant based on the combination with D1 or D9. 
• On this basis, the Board sees the presence of exceptional circumstances which justify the reaction of the respondent and the filing of a further set of claims after the communication addressing inventive step based on D2 alone. Under these circumstances, the Board finds it appropriate to admit auxiliary request set B into the appeal proceedings (Article 13(2) RPBA)."
• The auxiliary request, filed one month before the oral proceedings, is admitted.
•  It was undisputed that claim 1 of auxiliary request set B additionally differed from D2 in the selection of the anionic surfactant a1) among a list of options which are not mentioned in paragraph 49 of D2. The limitation of the anionic surfactant a1) according to operative claim 1 was not associated with any new effect over D2. The problem defined for the main request, namely the provision of further heat-sealable polyester films with anti-fogging properties, is therefore also valid for claim 1 of auxiliary request set B."
• " Paragraph 49 of D2 contains a list of anti-fogging agents among which the only anionic surfactants are anionic fluorinated surfactants, like quaternary ammonium salt of perfluoroalkylsulfonates. There is no further teaching in D2 from which it could be concluded that anionic fluorinated surfactants could be replaced by any of the anionic surfactants defined in operative claim 1." 
•  The appellant [opponent] argued at the oral proceedings before the Board that the presence of fluorine atoms on the anionic surfactant was irrelevant and would not change the question of inventive step over D2. Evidence that a skilled person would consider any of the specific anionic surfactants listed in operative claim 1 in place of the anionic fluorinated surfactants mentioned in D2 was however not provided. It follows that the Board cannot conclude on the basis of the prior art provided that a skilled reader of D2 would have considered using any of the anionic surfactants listed in claim 1 of auxiliary request set B in place of the anionic fluorinated surfactants disclosed in D2."
• "The Board can therefore only conclude that on the basis of the evidence provided it was not shown that the composition of claim 1 of auxiliary request set B lacks an inventive step over D2 alone. As the attacks based on a combination of D2 with either D1 or D9 do not lead to the subject-matter of claim 1 for the reasons detailed for the main request (see point 1.19, above), the objection of lack of inventive step of the appellant is unsuccessful."
• As a comment, I suppose that the opponent did not request a remittal in order to have an opportunity to file more prior art about non-fluorinated anionic surfactants. 

EPO 

The link to the decision can be found after the jump.

T 1913/21 - The claim says 'use of', but is it a use claim?

 Key points

• More precisely, is the following claim a valid second non-medical use claim in the sense of G 2/88: "Use of an inhibitor of cysteine degradation for reducing the formation of trisulfide bonds in proteins, wherein the inhibitor of cysteine degradation is [compound X]; and wherein the use comprises: culturing cells expressing said proteins in the presence of an effective amount of the inhibitor of cysteine degradation, whereby trisulfide linkage formation in said proteins is reduced relative to cells cultured in medium without the inhibitor of cysteine degradation."
• The Board combines two aspects of G 2/88. Decision G 2/88 dealt with Art. 123(3) and with Article 54(1). The Art. 123(3) issue was about whether you can amend a claim in the patent as granted directed to a compound into a use claim (use of that compound for ...) without violating Article 123(3), i.e. 'change of category'.
• Regarding the change of category, question (ii) in G 2/88 was "Can a patent with claims directed to a "compound" and to a "composition including such compound" be amended during opposition proceedings so that the claims are directed to the "use of that compound in a composition" [without violating Article 123(3) EPC]. In that respect, the Enlarged Board considered the effect of Article 64(2) EPC and found the amendment admissible provided that a use claim in reality defines the use of a particular physical entity to achieve an "effect", and does not define such a use to produce a "product"" because in the former case, "the use claim is not a process claim within the meaning of Article 64(2) EPC"
• Come to think about it, I wonder whether the interpretation of the term 'process' in Article 64 (2) isn't properly the domain of the national courts.
• The third question concerned the novelty of the use claims and was answered as follows: "A claim to the use of a known compound for a particular purpose [*] should be interpreted as including that technical effect as a functional technical feature"
• * =  "which is based on a technical effect which is described in the patent"
• The present Board:  "It is apparent from this that the Enlarged Board's findings relating to new uses of known compounds are limited to uses/methods/processes which are not processes resulting in products, as referred to in Article 64(2) EPC."
• I don't know how apparent this is.
• There is case law that G 2/88 does not apply to claims reciting "use of a process" (link) but I'm unaware about case law about claims directed to "use of compound X in a process". 
• " It is further apparent that claims which when correctly construed are directed to processes resulting in products referred to in Article 64(2) EPC are not subject to the special treatment established under G 2/88 and G 6/88, even if they contain the word "use"."
•  "The board considers that the proteins produced by the claimed process would be covered by Article 64(2) EPC as "products directly obtained" by the claimed process. The board concurs in this regard with the findings in T 892/94 (Reasons 3.8) that applying the concept of novelty developed in G 2/88 to claims for processes of producing a product, even when drafted as use for achieving a technical effect that results in an improved product could potentially result in a permanent monopoly of the use of a known substance for a known purpose. Such a permanent monopoly would arise from the repeated drafting of claims for a process of production including a new, possibly only subtly different, technical effect associated with this known process (see also T 1179/07 cited above, Reasons 2.1.3)."
• Given that a claim must still be novel and inventive, I find this reasoning difficult to follow. However, the Board appears to cite T 0892/94 here. 
• "The board must determine whether or not the "use" of claim 1 is in fact a process to produce a product or if it is a use to achieve a (new) technical effect"
•  "In the present case (and as was the case for claim 1 of auxiliary requests XI and XII in T 308/17), the choice of drafting the claim as a "use" of chemical compound cannot mask the fact that the claim defines a production process and the new technical effect can only take place in the context of this process. The mere formatting of the claim to give the appearance that its subject-matter falls under the principles established by G 2/88 cannot circumvent the fact that on analysis, the claim is directed to a use or process for the production of a product, here one having the 'improved' property of having 'fewer' trisulfide bonds."
• "Thus the new technical effect recited in the claim of reducing the formation of trisulfide bonds in proteins pertains to the product (the protein produced) and cannot be considered a technical limiting feature of the "use" according to G 2/88. Indeed, where an invention relates to a new technical effect of a physical entity that can only occur as part of a process for the production or manufacture of a product, such that this effect is inextricably linked to and cannot occur in isolation from the production process, a claim directed to that "use" of the physical entity to achieve that effect must be regarded as directed to the production process per se."
• "The assessment of novelty in the present case will therefore be done by answering the question of whether or not there was a disclosure forming part of the state of the art of a process having the same physical steps (culturing cells expressing said proteins in the presence of an effective amount of a compound that may act as an inhibitor of cysteine degradation) and leading to the production of the product defined in the claim."
• "In view of the above considerations on claim construction, the subject-matter of claim 1 lacks novelty over the disclosure in documents D3 and D24"

EPO 

The link to the decision can be found after the jump.

T 0454/23 - The objective vs the subjective problem

Key points

• "As to the objective technical problem solved by present claim 1, the proprietor contended that the combination of features (g) to (m) provided "a robust mechanism for improve[sic] security of an authentication message by a client device" and referred essentially to the conclusions drawn in T 495/91, Reasons 4.2, according to which an objective definition of the problem to be solved by the invention should normally start from the problem described in the application "
• "However, according to the problem-solution approach as defined in T 1/80 (cf. headnote I) (see e.g. also G 1/19, Reasons 26; R 9/14, Reasons 2.1.1) and in the Guidelines for Examination in the EPO (see part G, chapter VII, section 5, items (i) and (ii)), the formulation of the "objective technical problem" should always be done after having identified the closest prior art (i.e. the suitable starting point) for the assessment of inventive step (see e.g. T 1861/17, Reasons 3.4). "
• "As a consequence, the conclusions of T 495/91 do not appear to be reconcilable with the well-established problem-solution approach. To avoid any misunderstandings: of course, by coincidence, the problem described in the application itself, i.e. also called the "subjective problem", may well correspond to the objective problem formulated later on the basis of the selected closest prior art; for example, if the suitable starting point is already cited in the application itself. But, the established problem-solution approach does not imply that, for the purposes of determining the objective technical problem, one should "normally start from the problem described in the application"."
• See also CLBA I.D.4.2.2: "According to the established case law, an objective definition of the problem to be solved by the invention should normally start from the problem described in the application/contested patent. Only if examination shows that the problem disclosed was not solved or if inappropriate prior art was used to define the problem, is it necessary to investigate which other problem objectively exists (see e.g. T 495/91, T 881/92, T 419/93, T 606/99, T 728/01, T 1708/06, T 1146/07, T 1060/11, T 204/16)"
• "Thus, claim 1 encompasses technically sensible scenarios where the "based on" relationship is implemented by merely concatenating the respective keys, i.e. "gluing" them together. Consequently, the subject-matter of claim 1 comprises embodiments where the respective elements are generated in ways which are entirely unsuitable to enhance the security of the underlying hearing-aid system. Therefore, the features of claim 1 which are not disclosed in document D1 do not cause a technical effect which is credibly achieved over the entire breadth claimed (see e.g. G 1/19, cited by the proprietor, Reasons 49, 82 and 124). The board understands that established authentication procedures and the respective messages involved, as such, were commonly known to the skilled person in the field of data communications at the relevant date."

EPO 

The link to the decision can be found after the jump.

T 0733/23 - There is only one standard of proof

Key points

• "A number of decisions suggest that different standards of proof should be applied when assessing the public availability of evidence, depending on whether the relevant documents are within the exclusive sphere of one of the parties or equally accessible to all parties. When the evidence is exclusively within the control of one of the parties, the Boards have generally deemed it appropriate to apply the 'up-to-the-hilt' or 'beyond reasonable doubt' standard. Conversely, when both parties have equal access to the evidence, the lower standard of 'balance of probabilities' has normally been applied."
• "The present board concurs with the position in decision T 1138/20 (see Reasons 1.2.1) that there is only one standard of proof: the deciding body must be convinced, based on the underlying circumstances, that the relevant subject-matter was made available to the public before the priority or filing date of the patent."
• "This does not imply that all cases are treated identically, as in practice the degree of proof required to establish credibility (i.e. to persuade the board that the evidence was made available to the public before the filing/priority date) may vary depending on the specific circumstances of each case. In other words, it is not the standard of proof that adjusts with the circumstances, but rather the credibility of the arguments made by the different parties."
• "For example, when the evidence is exclusively controlled by one party, any gaps in the relevant information may significantly undermine that party's credibility, as such omissions may suggest that evidence has been purposefully withheld, that books were not well kept or that no significant efforts were made to come up with such evidence - all factors that speak against the credibility of the party meant to come up with such evidence. Conversely, when the information is equally accessible to both parties but only one party submits evidence, merely raising doubts may not be sufficient to challenge the credibility of that information. In such cases, it can usually be assumed that if the other party had found information supporting its position, it would have submitted it."
• " In the present case, the conclusions of the opposition division suggest that the standard of proof 'up-to-the-hilt' was applied to determine the public availability of the data sheets. Even if the board agreed that different standards should be applied, this would not be justified in the present case, as the relevant information to prove the public availability of the data sheets was not within the exclusive sphere of the appellant."
• I.e., the approach of the OD was incorrect in the first place.
• " In fact, it could be argued that in the present case, the relevant information would more likely be within the sphere of the patentee, since after acquiring the company that issued these data sheets, it may have gained access to any information concerning the data sheets and/or the commercialisation of the relevant products. In any case, even if the patentee had no access to additional relevant information in this regard, the evidence would still be equally accessible to both parties. Therefore, there is no basis for applying the strict standard of 'up-to-the-hilt' or, following the position in this decision, for questioning the credibility of the appellant solely on the grounds that some information is missing."
• "It is also noted that at the oral hearing, the patentee advanced the argument that when in doubt about the conclusiveness of the evidence, the patent should be upheld. The board finds this wrong on two counts:"
• The first point relates to the remark in the UK case House of Lords, Re B (Children) [2008] UKHL 35, that "[t]here is no room for a finding that it might have happened" (under English law). See my post here.
• "Second, there is no presumption of patent validity in proceedings meant to re-assess the validity of this very patent. Different from re-assessing a discretionary decision, the question of patentability must be assessed de novo in opposition or appeal proceedings. While there is a presumption of validity in all legal acts where the patent's validity is not challenged, where it is challenged, the assessing body must undertake an examination of validity no different from the one in examination. Therefore, in opposition and appeal proceedings, there is no room for the rule "when in doubt, the patent should be upheld." This is also correct on a macro-economic level: Patents are a (recognised) encumbrance and exception to free trade and such needs justification in that a body entrusted with the substantive examination of patent applications must ascertain the requirements of patentability. The European Patent Office thereby acts as a Portcullis to separate the weed from the chaff and to grant only those patents that fulfil the requirements as established by the EPC."
• The legal member of the Board was Mr Heath. 
• At the outset: I think the burden of proof is on the opponent to establish the alleged facts (cf. T1076/21, see below). Still, a close reading of the paragraph.
• " there is no presumption of patent validity in proceedings meant to re-assess the validity of this very patent. Different from re-assessing a discretionary decision [G7/93 r.2.6] the question of patentability must be assessed de novo in opposition or appeal proceedings. [Note, on a procedural level, the situation in opposition and appeal may differ under Art. 12 RPBA, but fundamentally the standard of review in opposition appeal is indeed not deferential]
  While there is a presumption of validity in all legal acts where the patent's validity is not challenged [German-style bifurcated infringement proceedings?], where it is challenged, the assessing body must undertake an examination of validity no different from the one in examination [some literature references would be helpful here - cf. “A patent shall be presumed valid.” 35 U.S.C. § 282, see also e.g. Microsoft Corp. v. i4i Limited Partnership, 564 U.S. 91 (2010) ].
  Therefore, in opposition and appeal proceedings, there is no room for the rule "when in doubt, the patent should be upheld." 
• compare:  T 72/04, point 3 (in a case where the parties make contradictory but unsubstantiated assertions concerning facts relevant for establishing patentability and the EPO is not in a position to establish the facts of its own motion, the benefit of the doubt is given to the patent proprietor); 
• see also T 1076/21: "After the grant of the patent, i.e. after the end of the examination proceedings, a legal presumption exists that the patent meets the requirements of the EPC. " - I note that the case was about sufficiency and that sufficiency attacks and new novelty attacks can probably be distinguished.
• And, of course, G 10/91, point 18 of the reasons: "This approach also reduces the procedural uncertainty for patentees having otherwise to face unforeseeable complications at a very late stage of the proceedings, putting at risk the revocation of the patent, which means an irrevocable loss of rights. Opponents are in this respect in a better position, having always the possibility to initiate revocation proceedings before national courts, if they do not succeed before the EPO."
• This is also correct on a macro-economic level: Patents are a (recognised) encumbrance and exception to free trade [,] and such [encumbrance] needs justification in that a body entrusted with the substantive examination of patent applications must ascertain the requirements of patentability. The European Patent Office thereby acts as a Portcullis [a strong gate above an entrance to a castle and used to be lowered to the ground in order to keep out enemies - link] to separate the weed from the chaff and to grant only those patents that fulfil the requirements as established by the EPC."

EPO 

The link to the decision can be found after the jump.

T 1167/21 - Rule 137(5) and unity a posteriori

Key points

• The Board, in translation: "This application is an international application pursuant to Article 153(2) EPC ("Euro-PCT application"). The European Patent Office, as the competent International Searching Authority (ISA), found that the subject-matter of claims 1 to 8 did not meet the unity requirement under Rule 13(1) PCT and identified four groups of inventions. Subsequently, after being invited to pay three additional search fees, which the appellants failed to comply with, only the first group of inventions, i.e., the subject-matter of claims 1 to 3, was searched to prepare the international search report."
• "The Examining Division took the view that the inclusion of feature (b) from the unsearched originally filed claim 5 in claim 1 according to the main request resulted in subject-matter which was not allowable under Rule 137(5), first sentence, EPC."
• The Board examines the substantive issue of unity of invention.
• " The amendments to claim 1 therefore do not result in a change from the first group of inventions to another, unsearched group of inventions addressing a different problem. Rather, the subject matter of the first group of inventions (claim 1 as filed, including feature a) is merely further restricted by the features of the originally filed claim 5 (feature b).
• However, Rule 137(5) EPC is at the outset not the right provision for issues relating to the non-payment of additional search fees, where those were requested. As the Guidelines state in H-II,6.2 : "Rule 137(5) cannot be invoked. It does not apply when the applicant has not paid the search fee in respect of a non-unitary invention relating to the originally filed claims." The legal basis for EP-direct applications is G 2/92. For Euro-PCT applications, where the EPO was ISA, first the procedure of  Rule 164(2) is to be followed.
• Nevertheless, the Board's reasoning on the substantive issue is useful: "document D1, which was used for the a posteriori assessment of unity by the examining division, anticipates not only the features of claim 1, but also those of claims 2 (see D1, figures) and 3 (D1, linear motor 37). Thus, none of claims 1 to 3 has a special technical feature defined as mandatory that could constitute an invention or group of inventions."
• " Feature (a) (tilting axis arranged in the upper half of the container) was originally an optional feature of claim 1. This feature is not anticipated by document D1. It is therefore a special technical feature within the meaning of Rule 44(1) EPC, which determines a contribution to the prior art."
• "It is irrelevant for consideration as an invention that feature (a) is defined in the original version as an optional feature of independent claim 1, because according to Rule 44(2) EPC the decision as to whether the inventions of a group are related to one another in such a way that they implement a single general inventive concept must be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.
• As a comment, possibly a claim specifying "A widget with feature A and optionally feature B"  must be read as "A widget with feature A or with feature A and B".
• According to the international search report, the optional feature a) of claim 1 is part of the first group of inventions comprising claims 1 to 3 "
• "The claims resubmitted with the statement of grounds of appeal in the version dated 31 July 2019 do indeed include an additional group of features (feature b).
• However, this does not constitute a change to an unsearched invention. Such a change would only occur if claim 1 comprised only feature b) without the special technical feature a) of the first group of inventions (which would correspond to the subject matter of the mandatory features of the unsearched original claim 5). In contrast, the inclusion of the features from claim 5 in combination with feature a) is not a change to the unsearched group of inventions 3.
• This is because feature b) of the original claim 5, like all the features originally dependent on claim 1, was also disclosed in combination with the optional feature a)."

EPO

The link to the decision can be found after the jump.

T 2170/21 - Debit order for oppo fee instead of appeal fee

Key points

•  In translation: "III. The patent proprietor filed its notice of appeal pursuant to Article 108, first sentence, EPC on 2 December 2021 through its representative electronically using the EPO Online Filing Software ('OLF') []. The filing was made using the form "Submission in opposition proceedings." In this form and also in the notice of appeal submitted as an annex, the appellant patent proprietor was named as opponent (page 1 of the form: "representing the opponent(s) dormakaba Deutschland GmbH"; page 1 of the notice of appeal: "In the name and on behalf of the opponent, i.e., dormakaba Deutschland GmbH"). Instead of the payment of the appeal fee announced in the notice of appeal (page 2: "The official appeal fee is paid."), this form authorizes the EPO to debit an opposition fee from the representative's deposit account (page 2: "010 Opposition fee ... Amount to be paid 815.00"). The opposition fee was debited from the deposit account on December 3, 2021, with the debit date of December 2, 2021."
•  On December 22, 2021, and thus undisputedly after the expiry of the time limit for payment of the appeal fee, the representative requested corrections to the debit order of December 2, 2021, under Rule 139, first sentence, EPC. The corrections concerned the debiting of an appeal fee and the amount to be debited, EUR 2,705. The (full) appeal fee was debited from the representative's current account on December 23, 2021, with the debit date of December 22, 2021."
•  On the admissibility of the various arguments and request about the admisisibility of the appeal: "The possibility of correcting the fee payment under Rule 139 EPC is, in principle, not a question of fact requiring proof, but a question of law. As mentioned above, the relevant facts to be considered for assessing this legal issue were, for the most part, already on file. As is also clear from the submissions of the parties, the case law of the Boards of Appeal has not developed uniformly over the years (see below). Furthermore, a large number of appeal decisions based on facts comparable to the present case are not available. Under these circumstances, it is unreasonable to expect the parties not to subsequently supplement their arguments, particularly regarding legal interpretation. Arguments regarding legal interpretation should, in principle, not be surprising or unreasonable for the Chamber. This likely follows from the legal principle "the court knows the law" (iura novit curia)."
•  The Board sees no reason to question the general possibility of correcting an erroneous fee payment under Rule 139 EPC, following decision T 0071/21, point 6.3 of the Reasons, cited by the Respondent, and the other decisions cited therein."
• "The board agrees with the respondent that re-establishment of rights under Article 122 EPC may also be an appropriate means of retroactively correcting the serious legal consequences of insufficient fee payment. The consequences of insufficient fee payment are that the appeal fee is deemed not to have been paid and thus the appeal is deemed not to have been filed, which in turn amounts to a failure to comply with a time limit. Had the appellant been unsuccessful in its request for correction under Rule 139 EPC, this option would – at least in theory – still have been open to it. However, this possibility does not preclude the application of Rule 139 EPC. The EPC does not contain a mutual exclusionary rule between Rule 139 and Article 122 EPC comparable to Article 121(4) or Rule 136(3) EPC."
• "the Board does not see any threat to legal certainty or a change of will on the part of the patent proprietor. The Board has no indications, let alone evidence, that the requested correction—namely, the payment of the appeal fee from the representative's current account—was not originally intended. This cannot be deduced from the patent proprietor's notice of appeal. The mere fact that the wording used is open does not justify a serious suspicion that the use of the incorrect form was not accidental, but deliberate. "
• " For these reasons, the board decided to grant the request for correction under Rule 139 EPC. The appeal is therefore deemed to have been validly filed. "
• The appeal is examined on the merits and is dismissed.

EPO 

The link to the decision can be found after the jump.

T 0186/22 - Specifying an incorrect deposit account number

Key points

•  In translation:  "The patent proprietor filed an appeal on January 31, 2022. In its notice of appeal, it stated that the appeal fee would be paid by direct debit from the deposit account via Online Filing 2.0. A direct debit order was issued on Form 1038 APPEAL dated the same day. This form listed the representative association as the account holder and indicated the deposit account number as 28000017."
•  By letter dated 11 February 2022, the patent proprietor clarified that it had made an error regarding the deposit account number and that the correct deposit account number was 28001760. It filed a request for correction of the debit order pursuant to Rule 139 EPC."" 
• The appeal fee was debited by the EPO from deposit account 28000017.
• "The fact that the appeal fee was debited from a third-party account rather than from the patent proprietor's account cannot alter the fact that the requirement of Article 108, second sentence, EPC is met. This provision does not require that the appeal fee be paid by the appellant. Rather, it is irrelevant to the question of whether the appeal is deemed to have been filed who paid the appeal fee. It is sufficient that an appeal fee (in the correct amount) was paid before the expiry of the appeal period."
• The reverse is not true: if the EPO finance department does not carry out the debit order, that does not mean that the payment is invalid.
• "Notwithstanding the foregoing, the patent proprietor's request under Rule 139, first sentence, EPC was also to be granted.  "
• "Even assuming that legal certainty must be taken into account, although the Enlarged Board of Appeal did not mention it as a prerequisite for correction, the opponent's arguments are unconvincing. The mere fact that these are inter partes proceedings does not mean that the criterion of "legal certainty" is to the detriment of the petitioner (see T 445/08 of 26 March 2015, Reasons 10, 11, 13.6; T 317/19, Reasons 2.4.3(a) and 2.4.4(a)). Thus, in inter partes proceedings T 445/08, the board concluded that legal certainty did not preclude the request for correction (T 445/08 of 26 March 2015, Reasons 13.6).

  In the present case, too, legal certainty or the interests of the opponents do not preclude granting the request for correction. It was obvious to the opponent (and to the public) from the outset that the patent proprietor intended to file an appeal. The fact that this filing might have been erroneous was not apparent from the appeal or the debit order. Rather, the patent proprietor itself indicated this in its letter of February 11, 2022, and filed a request for correction in the same letter. This request for correction was also filed promptly, namely 10 days after the filing of the notice of appeal and the debit order."

• The opponent also appealed, and the patent was revoked.

EPO 

The link to the decision can be found after the jump.

T 2554/22 - D1 is not a realistic starting point

Key points

• "The Board considers the Opposition Division's approach to select D7 as closest prior art document and to analyse inventive step starting from this document to be correct."
• "D7 deals with the same problem as the patent, namely adherence of colour to hair by means of forming a film around them, using aminosilicone polymers. This is extensively described throughout D7, as set out above. This problem is not addressed in the general part of D1, neither with respect to pigments nor with respect to any other type of coloured material. As outlined above, D1 is mainly concerned with the avoidance of storage stability problems of hair conditioner compositions containing direct dyes and proposes a specific surfactant combination for this purpose."
• " It is correct that D1 mentions prevention of colour fading using aminosilicone polymers on page 16. However, this disclosure is part of a three page description of silicone polymers as optional ingredients for the provision of "smoothness and softness on dry hair" (page 13 second paragraph). One out of nine example compositions uses a film-forming aminosilicone, "aminosilicone-2", but film-forming properties neither of "aminosilicone-2" nor of the resulting composition are mentioned in D1. One has to refer to the product data sheet D2 in order to obtain this information."
• A skilled person would have to deeply dig into D1, supplemented by D2, to realize that part of this document may be directed to the same purpose than the patent and was using similar means, i. e. film-forming compositions containing aminosilicones for adherence of pigments or coloured materials to the hair.
• "The Board does not deny that in case of several "close" prior art documents a skilled person may have used any of them as a starting point and it may be necessary to assess inventive step from multiple angles. However, in the present case a skilled person addressing the problem of the patent would not have started from D1, but from D7. In this sense, in the present situation D1 is not a "realistic starting point"."
  
  
• "The appellant did not contest the Opposition Division's conclusion that the provision of the compositions defined in the patent claims were based on an inventive step when starting from D7. Thus, this issue is not object of the appeal proceedings."
• "The appellant argued that, independent from the selection of the closest prior art discussed above, the claimed compositions would still be obviously derivable when starting from D1. The Board disagrees, for the reasons outlined below. "
• "To be obviously derivable from D1 a skilled person would have to start from D1 in the first place. That this is not realistic in the present circumstances has been reasoned above."
• "if one nevertheless takes example 4 of D1 as a starting point, claim 1 of the patent does not differ from this example composition only in that the molecular weight of the aminosilicone is not known, as submitted by the appellant. Claim 1 of the patent also requires the presence of components (c) and (d), i. e. an ether of a polyhydric alcohol and a thickening system comprising a deposition enhancer and a thickening polymer as defined in the claim. 
• "The objective technical problem starting from D1 was the provision of alternative compositions useful for enhancing colour adhesion to the hair. "
• "even if a skilled person would have used D1 a starting point it would not have arrived at the compositions defined in the claim. This confirms that D1 is not "closer" to the claimed invention than D7, as argued by the appellant. It also confirms that the Opposition Division's choice of D7 as the document representing the closest state of the art was not flawed, as argued by the appellant [opponent]."
• The patent is maintained as granted. 

EPO 

The link to the decision can be found after the jump.

T 1629/23 - If the alternative starting points represent alternative and different routes to the invention

Key points

• "The board agrees with the appellant [opponent] that document D9, and in particular its example 6, is such a suitable starting point for the discussion of inventive step. The respondent's [proprietor's] arguments that the opposition division had correctly considered the disclosure in document D8 to represent the closest prior art and that the disclosure in document D9 was not suitable as the closest prior art are not convincing for the following reasons. "
• "  Although assessing inventive step from only one "closest" prior-art disclosure may constitute a suitable approach for addressing the situation in which multiple similar disclosures are presented as starting points for the assessment of inventive step, it is not an appropriate approach if the alternative starting points likewise represent (alternative and different) routes to the invention, as document D8 and D9 do in the case in hand. In such a situation, each starting point needs consideration because, under Article 56 EPC, in order for an inventive step to be acknowledged, the claimed invention must not be obvious to a skilled person having regard to the (complete) state of the art, i.e. any prior-art disclosure excluding documents under Article 54(3) EPC (see e.g. decisions T 694/15, points 13 to 15 of the Reasons, T 816/16, point 3.7.1 of the Reasons and T 261/19, point 2.5 of the Reasons)." 
• "example 6 of document D9 differs from the claimed subject-matter solely on account of the requirement in claim 1 that the classification step (e) and the estimation step (f) "are performed on one or more processors running under program instructions for the determining, classifying and estimating"."
• "the appellant [opponent] is correct that, considering the number of data points and the workflow disclosed in document D9, the skilled person, on the relevant date, would have taken computer implementation as an obvious route for improvement. 

EPO 

The link to the decision can be found after the jump.

T 2140/22 - (II) The obligation of parties in the procedure before the OD

Key points

• The decision under appeal is the opposition division's decision ruling that none of the grounds for opposition under Articles 100(a), (b) and (c) EPC prejudiced the maintenance of the patent as granted and rejecting the opposition.
• V. In the decision under appeal, inventive step was assessed starting from the disclosure of D1 and, in a second approach, D2. With either approach, the claimed subject-matter was held to involve an inventive step.
• The opponent appeals.
• The Board considers the claims of the main request to be obvious over D1 with D2.
• "Auxiliary request 1 was filed for the first time with the respondent's reply to the statement setting out the grounds of appeal, and thus it constitutes an amendment to the respondent's case according to Article 12(4) RPBA, the admittance of which is subject to the board's discretion. "
• " In the present case, it is not self-explanatory how the amendment by incorporation of the features of claim 6 into claim 1, i.e. the restriction to a single-dose form containing 5 to 350 myg T4, could overcome the inventive step objection against the main request. The dosage range for a single dose is in any case not a distinguishing feature over the disclosure of D1".
• Fair enough - even though the amendment can then still make the claim inventive, some substantiation by the proprietor could be expected.
• " In its written preliminary opinion, the opposition division stated that it regarded D2 as the "closest" prior art, but also briefly outlined its inventive step approach starting from D1 (see point 9.3.1 of the annex of the summons to oral proceedings). Even if it were to be considered that the decision under appeal deviated from the preliminary opinion by providing a more detailed assessment of inventive step starting from D1, the respondent was not exonerated by the mere filing of amended claims from the obligation of expressly specifying the relevance of the amendments for overcoming the inventive step objection raised by the opponent."
• " In any case, since D1 was used by the appellant as a starting point for the assessment of inventive step from the very start of the opposition proceedings (see the notice of opposition, section 3.1), the respondent should have presented any auxiliary request aiming to improve its position with regard to this line of argument in the proceedings before the opposition division."
• "In inter partes proceedings such as opposition proceedings, a party has to anticipate and prepare for the eventuality that the opposition division might agree with the arguments of the opposing party. Also, a preliminary opinion provided by an opposition division is not binding as regards the final decision."
• To me, a question still is: why? The OD found the claims as granted to be inventive and would not have considered the amended claim at all in their decision.
• "Since the requirements of Article 12(3) and (4) RPBA are not met, the board decided not to admit auxiliary request 1 (Articles 12(3) and 12(5) RPBA)."
• The relevant part of Art. 12(4) is the fourth sentence: "In the case of an amendment to a patent application or patent,  the party shall [...]provide reasons why the amendment overcomes the objections raised.
• The Board does not cite Art. 12(6)(s.2) RPBA
• 
  

EPO 

The link to the decision can be found after the jump.

T 2140/22 - (I) The CPA as a shortcut

Key points

• Claim 1 is directed to: " A pharmaceutical preparation of T4 thyroid hormone, in ready-to-use packaging, [the packging] consisting of a container pre-filled with an alcohol-free water-glycerol solution of hormone T4, said container being a one-component LDPE plastic container, placed in a sealed sachet consisting of laminated films made of polyethylene, aluminium and polyethylene terephthalate."
• Inventive step is at issue.
• " Article 56 EPC provides that an invention (i.e. the claimed subject-matter under consideration) involves an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. The state of the art here is any prior disclosure that is eligible under Article 56 EPC, i.e the entire state of the art as defined in Article 54(2) EPC, without any ranking or distinction. Any such prior disclosure may be used as the starting point for the assessment of inventive step, and also as supplementary prior art in alternative scenarios with different starting points."
• " The selection of a starting point serves the purpose of assessing inventive step and is performed by the body deciding on inventive step, which makes its selection from the cited prior-art disclosures that are eligible under Article 56 EPC. Depending on the circumstances of the individual case, either only one starting point or several alternative starting points will have to be considered."
• "In the case at hand, the only line of argument presented by the appellant [opponent] in the appeal proceedings with regard to a lack of inventive step is based on an approach using the disclosure of D1 as the starting point. In this situation, no selection between different potential starting points is required. The only starting point to be considered by the board for the purpose of examining the merit of the appellant's inventive step objection is D1."
•  "The practice of selecting, in cases where this is appropriate, one among several potential starting points on the basis of its greater similarity to the claimed subject-matter and its intended purpose (the so-called closest prior art) serves efficiency by permitting a combined assessment."
• "The test is to establish if the claimed subject-matter would have been non-obvious even when starting from such a particularly "promising" starting point. Thus, in a situation where inventive step is ultimately to be acknowledged, carrying out a detailed assessment of inventive step according to the problem-and-solution approach with the closest prior art as the starting point may avoid having to perform an equally detailed assessment also for numerous alternative starting points that are comparatively more remote. "
•  The consideration in such a case is that since an inventive step can be acknowledged in a scenario starting from the closest prior art, it can also be acknowledged, for at least the same reasons, starting from the more remote alternative starting points, without the need for a detailed analysis in each of these cases.
• "Obviously, this shortcut only works in cases where it can be confirmed that the same reasons for acknowledging an inventive step are indeed also applicable to the scenarios based on the alternative starting points. The reasoning addressing the alternative scenarios must at least set out why this criterion is met.
• "Nonetheless, comparative remoteness does not prohibit the consideration of any prior disclosure as a starting point in a detailed step-by-step assessment according to the problem-and-solution approach. If a chosen starting point is "too remote" from the claimed subject-matter in terms of structural features and purpose, the problem-and-solution approach will simply not result in a finding of obviousness."
• As a comment the phrase "will simply not result" may hide some complexity.
• "In view of its purpose as described above, the concept of the "closest prior art" is not relevant in a situation where an inventive step cannot ultimately be acknowledged (see point 1.9.1 above, last sentence). If the assessment of inventive step from a given starting point results in a finding of obviousness, this starting point is evidently close enough to the claimed invention to lead to a conclusion that decides the question of inventive step."
• "Since, in the case at hand, the assessment with D1 as the starting point resulted in a finding of obviousness (as set out below), it is not relevant whether another piece of prior art might be even closer to the claimed subject-matter.

EPO 

The link to the decision can be found after the jump.