T 1050/22 - Discordant examples, and lists of possible upper and lower limits

Key points

• "In the present case, as explained above and starting from the disclosure in D5, feature (e) represents a first selection from the list of ranges which may emerge from the endpoints shown in claim 3 and page 7, while feature (g) represents a further selection from a second list of ranges that may be created on the basis of the endpoints shown in claim 1 and page 8 of D5. In the absence of any pointer to the particular combination of claim 1 of the main request, the combination of the range amounts for features (e) and (g) as claimed represents added subject-matter. The Board does indeed not identify any passage of the description or any example as possible pointer for the combination of such selections. Examples A, M and N, which were cited by the respondent, correspond to the only examples wherein the compounds and their amounts match with the claimed compounds and amounts. Most of the remaining examples, in particular examples B-K, show however discordant compositions, so that the examples cannot be seen as a clear pointer to the defined combination of features."
• " The selection of originally explicitly disclosed limit values defining several (sub)ranges to define an individual range may not necessarily generate subject-matter extending beyond the original disclosure, but the further combination of such individual range with another individual range emerging from a second list of ranges and relating to a different feature is not considered to be derivable from the original disclosure, unless there is a clear pointer to such a combination (see for instance T 1511/07 point 2.1,, T 1731/18, point 1.5 of the reasons, and the Case Law of the Boards of Appeal, 10th edition, 2022 II.E.1.6.2.a). In the present case, the basis for the definition of the indicated combination of ranges is even less evident due to the presentation in the claims and the description of D5 of lists of upper and lower limits rather than defined ranges (Cf. T 1408/21 point 1.4 and see the Case Law of the Boards of Appeal, 10th edition, 2022 II.E.1.6.2.c). "
• "A relevant pointer is usually a specific indication or teaching in the original application directing the skilled person to a specific combination. Such specific indication can originate from the original claims and/or from disclosed specific embodiments, in particular when the examples of the application as filed present an uniform disclosure with regard to the concerned combination of features and all fall under the scope of the claims. However, the presence of discordant examples may well indicate that the examples do not provide any clear pointer to the combination of features. 
• "Consequently, the main request does not meet the requirements of Article 76(1) EPC."

EPO 

The link to the decision and an extract of it can be found after the jump.

T 1952/21 - Is AI / machine learning as such technical?

Key points

• Inventive step is at issue for a claim directed to a "machine learning system" comprising generic hardware and some sotware.
• The Board: "The application relates to reinforcement learning. In reinforcement learning, an agent explores the environment according to a policy, determining which action the agent takes (e.g. move right) at every juncture as a function of its current state (e.g. its position in the environment). The agent receives rewards, positive or negative. In this way it can "learn" the value of the various actions and states. The goal of training is to maximize a value function which reflects the expected sum of rewards given a certain action. The application builds upon the method of D1, called A3C (asynchronous advantage actor-critic). That method separately approximates the policy and value models as neural networks. The raw input (describing the environment) is preprocessed in sequence by a feed forward network. The result is fed to the value and the policy networks. Developments of that method [i.e. the distinguishing feature of claim 1, as I understand it], termed NoisyNet A3C in the current application, inject randomness into the training by using stochastic weights (e.g. by adding random noise or using stochastic models) in the policy and value networks. This allows for further exploration of the parameter space )." [initernal citations omitted]
• The decision does not seem to explicitly identify the distinguishing features of claim 1 over D1. Claim 1 recites: "wherein said feed-forward neural network comprises stochastic units". This may be the relevant feature.
• The Board extensively summarizes the applicant's arguments, but I'm more interested in the Board's reasoning.
• The Board: "The Board remarks that pseudorandom number generators were known to the person skilled in the art. Their use, in general or in the more specific context of "stochastic units" [] does not change in substance the computer, which remains as "deterministic" as any conventional computer. So the Board cannot see a contribution on this level."
• I'm not sure if "well known" and "non-technical" are the same under the EPO approach to inventive step (cf. the US approach in Alice, 573 U.S. 208)
  
• "The system for reinforcement learning as claimed is a neural network, comprising various sub-networks, implemented on a computer. The network, as a whole, defines a mathematical function mapping inputs into outputs. Effectively, the claim is to a mathematical method implemented on a computer."
• I guess this observation is true for any type of software?
• "the Board holds that the Enlarged Board decision G 1/19, addressing the patentability of computer-implemented mathematical models for simulation, should be the starting point when assessing the technical character of reinforcement learning. It is commonly accepted that a large part of the findings in G 1/19 apply to any computer implemented inventions.
• " In G 1/19, the Enlarged Board of Appeal stated (reasons 137) that (simulation) models by themselves are not technical but that "they may contribute to technicality if, for example, they are a reason for adapting the computer or its functioning, or if they form the basis for a further technical use of the outcomes of the simulation". However, "such further use has to be at least implicitly specified in the claim"."
• The Board finds there is no implicit further technical use in the case at hand.
• " The Board has already explained above that the functioning of the computer, or the computer itself, are not adapted. "
• Regrettably, I can't find the 'above' quickly.
• "This conclusion is consistent with that in the case T 702/20, which is in many ways similar to the present one, where this Board (in a different composition) decided, also following G 1/19, that a trained machine learning model, namely a neural network, can "only be considered for the assessment of inventive step when used to solve a technical problem, e.g. when trained with specific data for a specific technical task" []."
• "The Appellant also argued that reinforcement learning was technical based on an analogy with the case law regarding cryptography, in particular RSA [T 1326/06]
• From that case: "Nach Meinung der Kammer handelt es sich beim sicheren Austausch von elektronischen Nachrichten um eine technische Wirkung, die zu erzielen als eine technische Aufgabe angesehen werden muss. RSA löst diese Aufgabe mit mathematischen Mitteln. Mit RSA gelang ein Durchbruch in der Entwicklung der Kryptografie: RSA wird als das erste praktikable, konkret implementierbare asymmetrische Kryptosystem angesehen und ist heute in zahlreichen kryptografischen Sicherheitssystemen eine zentrale Komponente. Die RSA zugrundeliegende Mathematik dient somit unmittelbar der Lösung eines konkreten technischen Problems."
•  "The Board notes that [...] RSA and reinforcement learning are different and serve different purposes. In particular, RSA and other cryptographic methods have a specific, and at least implied, purpose, namely data security. This is not the case for reinforcement learning. So the findings regarding RSA cannot directly be transferred to reinforcement learning."
• This raises the question: why is 'data security' technical and 'machine learning' not?
• To me, as a simple chemist, ChatGPT feels just like database management technology, turbo code interleavers for wireless communication, and copy/paste (clipboard) on the computer: I have (basically) no idea how it works, but it definitely makes my computer more useful, even though they are perhaps not all prize-winning.
• Whether introducing randomness for "further exploration of the parameter space " in the given context is obvious or not, I don't know. 
• "The Board accepts that the use of the term technical in the case law of the Boards of Appeal may differ from its use elsewhere in society, especially from its colloquial use. However, this does not mean that the Boards of Appeal interpret the law incorrectly: it is common place that the legal interpretation of a term may differ from its colloquial meaning. In particular, the Boards use the term "non-technical" to denote matter excluded under Article 52(2) and (3) EPC. Any alternative interpretation of the terms "technical" and "non-technical" can only be used to justify the patentability of subject-matter to the extent that it does not contradict the law, in particular the exclusion of mathematical methods."

The link to the decision and an extract of it can be found after the jump.

T 2138/21 - Requests that would not have been discussed

Key points

• The Board comes to the admissibility of requests that were filed by the proprietor/respondent with the reply to the appeal. The Board: "Nor is it of any relevance for the present appeal proceedings whether the patent proprietor had filed auxiliary request 1b (or 1b') in the proceedings before the opposition division. Since the opposition division found that higher ranking auxiliary request 1a fulfilled all requirements of the EPC, lower ranking auxiliary request 1b (or 1b') would not have been discussed, even if it had been filed already at the point in time [during the first instance proceedings] suggested by the opponent. In any case the Board would be confronted with a request which the opposition division had not considered."
• " It is clear that the objection that claim 1 of auxiliary request 1 contravenes Article 123(2) EPC, due to only a part of granted claim 5 having been incorporated, is rendered moot by the inclusion of all features of claim 5. The opponent argued however that procedural economy was impeded by the need to discuss auxiliary request 1b, if it was admitted into the appeal proceedings.
• This is not convincing as the need to discuss it would be the same if auxiliary request 1b had already been submitted in the proceedings before the opposition division. Filing the request only with the reply to the opponent's statement of grounds of appeal does thus not make any difference for the procedural economy of the present proceedings. The Board can thus see no reason why auxiliary request 1b would not have been admitted into the proceedings."
• The request is admitted (with minor further amendments) and is also held to be allowable.
• 
  
• I note that the request was clearly responsive to an objection against a higher-ranking request and substantiated (to the extent necessary) when filed in appeal. In such a case, following the present Board, it should not matter if the request was filed in the first instance proceedings or (as the Board held) should have been filed in the first instance proceedings. The latter point is quite a departure from Art. 12(6), second sentence, RPBA; though this depends on the interpretation of the term "should" in that sentence.
• The Board's reasoning makes sense.
• However, assuming that the request was newly filed with the reply to the appeal, the opponent/appellant would have to reply to it for the first time with the rejoinder. The RPBA then give the appellant only one month to file a rejoinder, with the possibility of requesting an extension.
• Indeed, in this case, the opponent presented a new inventive step attack during the oral proceedings before the Board, which attack was not admitted. However, it is unclear to me if that development was related to the amendments made in Auxiliary Request 1b. 
• T1220/21 : "In this respect, the Board notes that the first auxiliary request was not addressed at the oral proceedings before the opposition division, because the opposition division rejected the opposition. Thus, even if the objection had been raised in the first instance, the Board would not have before it a decision that could be reviewed. Under these circumstances, arguments based on Article 12(2) RPBA 2020 and the primary purpose of the appeal (review of the first instance proceedings), are not suitable for justifying not admitting the objection. Furthermore, D3 is prima facie relevant and not entirely new, as it was cited at least in combination with D2 during the opposition proceedings. The Board therefore exercises its discretion under Article 12(4) RPBA 2020 to admit the inventive step objection based on D3 as the closest prior art filed with the grounds of appeal, at least for the discussion of auxiliary request 1. "

EPO 

The link to the decision and an extract of it can be found after the jump.

J 0001/24 - Appeal against grant and divisional

Key points

• If a patent is granted, what is the last day for filing a divisional application? The day before the publication of the mention of the grant in the Bulletin (G 1/09).
• For any trainees reading this post: the Bulletin can be found here: https://www.epo.org/en/searching-for-patents/legal/bulletin/download 
• However, what if the mention of the grant is deleted by a later notice in the Bulletin? This may happen e.g. in case of a stay of proceedings under R.14.
• * Note that the Bulletin is (supposed to be) inalterable. Hence, a new notice is published in a later issue of the Bulletin stating that the publication of the mention of the grant is deleted.
• Then, no divisional application can be filed during the stay, but if there is some time between the resumption of proceedings and the new mention of the grant in the Bulletin, a divisional application could be filed.
• In this case, the proprietor filed an appeal against the decision to grant the patent. The EPO then, as a matter of fact, rescinded the publication of the mention of the grant (after receipt of the Notice and payment of the appeal fee but before receipt of the Statement of grounds). 
• You can find the deletion of the mention of the grant here: https://archive.epo.org/epo/pubs/bulletin/2021/bulletin2121.pdf#page=2822 .
• The mention of the grant itself can still be found here: https://archive.epo.org/epo/pubs/bulletin/2021/bulletin2111.pdf  on page 1163.
• Small detail: the Bulletin contains three instances of the mention of the grant: sorted by publication number, by applicant name and by patent classification. Question to readers: why? (experienced patent attorneys, feel free to tell stories in the comments about how the Bulletins were used by patent attorney firms and in-house departments in the past).
• The proprietor (then applicant again) filed the statement of grounds, subsequently two divisional applications, and then withdrew the appeal.
• The Receiving Section decided that the division application "will not be treated as a divisional application".  The applicant appealed, resulting in this decision by the Legal Board. 
• As the divisional application was not yet published (in 204) (even though it was filed in 2021), the publication of the decision is anonymised. However, the "datasheet" part of the published decision includes the title of the application, "ELECTRONIC DEVICE WITH METAL FRAME ANTENNA", which easily leads to EP 19209269.0 being the parent application. Because the Legal Board allowed the appeal and, therefore, the divisional application should be published soon, I feel free to mention the parent application number here. 
• As a small detail, the decision indicates that the Receiving Section issued an interlocutory decision to that effect (which allowed a separate appeal). However, I wonder what would have happened if no appeal had been filed? As it is an interlocutory decision, the proceedings are supposedly continued with search and examination, perhaps on the basis of the application being a normal patent application (which then has invalid priority and lack of novelty over the already published parent case).
• Turning to the appeal at hand, J 28/03 had held that an appeal against a decision to grant does not allow the filing of a divisional application during the appeal. 
• However, as the present Board observed, in J 28/03, the publication of the mention of the grant was not deleted. 
• The current practice of the EPO of deleting the mention of the grant in case of an appeal by the proprietor against a grant decision, is a reason for the Legal Board to consider that the application is pending in the sense of Rule 36 during such an appeal. 
• Note, the Legal Board does not make this effect dependent on whether the mention of the grant is deleted or not.
• "The current practice of the EPO treats appeals against the grant of a patent as appeals validly filed, with the consequence that the date of the mention of the grant is deleted in such a case. If later the appeal is withdrawn or turns out to fail, there will be a new date of publication of the grant. This is a requirement for the effectiveness of the grant of a patent (Article 64(1) EPC). The present Board considers that it is inconsistent to consider an appeal in two different ways: first for the mention of the grant to be deleted, the appeal only needs to be admissible [*] and second for the suspensive effect to apply is dependent on the outcome of the appeal.
• The Legal Board appears to point out that the "first instance" acts inconsistent by, on the one hand, considering the appeal against the grant to be validly filed (and therefore deleting the mention of the grant) and, on the other hand, considering the appeal to be insufficient to make the application pending again in the meaning of Rule 36.
• Note that the decision to delete the mention of the grant seems to be taken "for" the Examining Division (see here).
• * - Since the mention of the grant was deleted before the filing of the Statement of grounds, admissibility of the appeal is not a strict requirement, but rather something similar to "deemed to have been filed" (i.e., a timely filed notice of appeal of the proprietor and payment of the appeal fee) (note, an appeal by a third party will be inadmissible, not deemed to not have been filed, but is likely insufficient to trigger the deleting of the mention of the grant).
  
  
• "There is no basis in Article 106(1) EPC for such an approach. In the established case law of the Boards of Appeal [], an example of a clearly inadmissible appeal that should have no suspensive effect, is an appeal without basis in the EPC, e.g. filed by a third party. [*] The EPC has no provision restricting appeals of the applicant against the grant of a patent. Such an appeal cannot therefore be seen as clearly inadmissible. As a consequence such an appeal has suspensive effect according to Article 106(1), second sentence, EPC. That means for the present case that the parent patent application was still pending when the divisional application was filed."

• I am not sure if this also applies to appeals of the applicant filed well after the expiry of the appeal period, but for sure, we will find out that in a future decision.
• * - see G 2/19 about an appeal by a third party against the grant of a patent based on clarity objections. In such a case, no oral proceedings are to be held either. 
• Note, under G 1/09, pendency in the sense of Rule 36  does not depend on the suspensive effect of an appeal (such that an appeal can be filed in the appeal period after a decision to refuse a patent application). 
  
  
• Note that it seems that under the present decision, filing a Statement of grounds is not necessary. Hence, a divisional application can be filed during the appeal period by filing a Notice of Appeal and paying the appeal fee. If the appeal is subsequently withdrawn before the expiry of the period for filing the Statement of grounds, the appeal fee is refunded (Rule 103(1)(b)). 
  
  
• Finally, the appeal in the parent case is interesting in itself, see the statement of grounds. The applicant wished to amend the description to delete the statement that Figure 24 was not according to the claims; this statement was added by the Examining Division in the Intention to grant (properly marked). All the currently hot issues of claim interpretation and adapting the description to the claims are at play already. Whether the applicant would have met the "adversely affected" requirement of Art. 107 for admissibility of the appeal in view of Rule 71(5) remains an open question as the appeal was withdrawn before the Board gave a preliminary opinion.

EPO  J 1/24 - J1/24 - J 0001/24

You can find the link to the decision and an extract of it after the jump.

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

Key points

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

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

T 1854/16 - Applying Rule 99(2) EPC to individual grounds

Key points

•  Both the patentee and opponent appeal in this opposition appeal.
• "In the disputed decision, the Opposition Division concluded that the opposition grounds under Article 100(a) EPC in combination with Articles 52(2)(c) and 53(c) EPC against the patent as granted were unfounded"
• "The opponent did not contest this part of the decision during appeal proceedings."
• "Hence, the Board has no power to consider this part of the decision under appeal."
• As a comment, the  Board does not indicate the legal basis. It does mention Rule 99(2) in a further paragraph of the decision; see below.
• 
  
• "In the disputed decision, the Opposition Division concluded that the opposition grounds under Articles 100(c) EPC, 100(b) EPC, and 100(a) in combination with Articles 52(1) and 54 EPC (lack of novelty) against the patent as granted were unfounded In the disputed decision, the Opposition Division concluded that the opposition grounds under Articles 100(c) EPC, 100(b) EPC, and 100(a) in combination with Articles 52(1) and 54 EPC (lack of novelty) against the patent as granted were unfounded "
• "With the statement of grounds, the opponent explicitly maintained the corresponding objections, but only provided a copy of its arguments in its notice of opposition []. No explanation was given as to why the decision of the Opposition Division in this regards was wrong."
• " Since - contrary to Rule 99(2) EPC - no reasons are provided for setting aside the findings of the Opposition Division with regard to these aspects, these opposition grounds are not admissibly raised in the appeal. The Board has no power to review the Opposition Division's findings on these points."
• The Board considers the opponent's submission regarding inventive step, i.e. the opponent's appeal is not inadmissible. 
• As a comment, Rule 99(2) EPC is about the admissibility of the appeal. The Board applies this rule so as to provide for the partial (in)admissibility of the appeal* without a discretion to hear later submissions on the matter as envisaged by Art. 13 RPBA. Established case law, however, is that there is no concept of partial admissibility of an appeal. See e.g. T 1320/19 or T1679/21: “Zum einen kennt das EPÜ und die dazu ergangene Rechtsprechung das Konzept einer teilweisen Unzulässigkeit nicht. Sofern ein Einwand gegen die angefochtene Entscheidung in einer der Regel 99(2) EPÜ entsprechenden Weise vorgetragen wurde, ist die gesamte Beschwerde zulässig."
• As a comment, and in connection with the * above, Rule 99 is cited by the Board in connection with the patentee's main request, but the opponent's appeal concerns only Auxiliary Request 1'' (the set of claims held allowable by the OD). So the provision seems to be cited against the opponent as the respondent, if I understand the case correctly. 
• The fact that the opponent also files an appeal does not make that it must address claim requests held unallowable by the OD already in its statement of ground, it seems to me.
• As a comment, this decision is remarkable in firstly in citing Rule 99(2) for individual grounds of opposition, and secondly for possibly applying it against the opponent in its capacity as respondent. 

EPO T 1854/16 

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

T 0431/21 - Discretion under Rule 137(3) EPC

Key points

•  "The examining division, in exercise of the discretion provided by Rule 137(3) EPC, decided not to consent to the amendments introduced in the main request and in the auxiliary requests 1 to 13, all requests filed on 28 July 2020. "
• "The Board comes to the conclusion that [] the examining division exercised its discretion under Rule 137(3) EPC in an unreasonable manner thereby exceeding the limits of the discretion, and that the deficient reasoning in the contested decision gives rise to a substantial procedural violation in the meaning of Article 113(1) EPC and Rule 111(2) EPC detrimental to the appellant's (applicant's) right to be heard,"
• "the Board agrees that the criterion that an amended set of claims is "prima facie" not allowable (so called "clear non-allowability") is, in general, an accepted principle (amongst others) to be taken into account in the assessment of whether consent under Rule 137 (3) EPC should be given to the amendment. However, the Board concurs with the appellant (applicant) that the examining division did not duly balance this criterion with the equally relevant principle of the legitimate interest of the appellant to obtain a valid patent."
• "that the requests dated 28 July 2020 were filed in due time, i.e. within the time limit set according to Rule 116(1) EPC, and that they are convergent, as also acknowledged by the examining division in its decision (see page 4). In fact each lower raking auxiliary request is further limited with respect to the preceding higher ranking request by incrementally introducing additional features. "
• "he amendments filed by the appellant (applicant) in response to the summons to oral proceedings represent a fair attempt to overcome the "prima facie" objections raised therewith by the examining division under Articles 84 and 123(2) EPC"
• "In particular, in order to respond to the "prima facie" objection of the examining division that several features were allegedly essential for understanding the invention and for achieving the claimed technical effect and hence, as such, could not be omitted from the independent claims, the appellant (applicant) incrementally introduced in the main request and in the auxiliary requests at stake further technical features, "
• "In the Board's view, as the amendments are considered at least to go in the right direction, the decision of the examining division to assess "prima facie", i.e. without discussing any of them in detail, that they were all unsuitable for overcoming the objections raised is not justified."
• " the Board shares the appellant's (applicant's) view that discussing the alleged "clear non-allowability" for each request separately, as wished by the appellant (applicant), would have been fair and appropriate and therefore should have not been denied by the examining division at the oral proceedings. "
• "Finally, the objection of the examining division that the fact that no adapted description was concurrently filed resulted in the impossibility to interpret the claims in the light of the description is not convincing and in itself does not justify the rejection of all the amendments under Rule 137(3) EPC. In fact the Board cannot see why, in the event that an interpretation of the scope of the claims in the light of the description was required and justified, also the originally filed description could not be used."
• For all the reasons above the Board thus concurs with the appellant (applicant) that the examining division exercised its discretion under Rule 137(3) EPC in an unreasonable manner and thereby exceeded the proper limits of its discretion.
  
  
• Turning to when features are "essential" for Art. 84: "In particular, it was correctly argued [by the applicant] that in order to assess [whether] a feature was essential or not, the technical problem addressed by the application must be considered, whereby any feature which did not contribute to solve this technical problem was not an essential feature and therefore did not need to be recited in the independent claim/s which otherwise would be unduly limited in scope. "
  
  
• On the right to be heard: " the Board concludes that the examining division should have addressed the arguments provided by the appellant (applicant) in the decision under appeal and explained why they were considered not convincing, and not simply list the objections at stake and assert that the right to be heard was respected, as recited in the contested decision, page 6 onwards." ... the Board agrees with the appellant (applicant) that the reasoning presented in the section of the decision dealing with the alleged "clear non-allowability" issue in view of Article 84 EPC (see page 6, fourth full paragraph onwards) fails to explain why the detailed arguments presented in writing by the appellant (applicant) in support of the allowability of the requests filed on 28 July 2020 are not convincing.In fact in the relevant passages of the decision the examining division does not address or rebut these arguments in any way, but simply asserts the contrary.
  
  

EPO 

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

T 1989/18 - No need to adapt the description (?)

 Key points

•  There is currently some controversy between the uses and the EPO persons in charge of the Guidelines as to how (precisely) the description must be adapted to the (amended) claims before grant in particular if non-claimed embodiments must be deleted or prominently marked as not according to the invention.
• Board 3.3.04 takes position in this decision, curiously enough issued with code [D] and without headnote (credits to the DeltaPatents blog; also extensively discussed by IPKat).
• The applicant/appellant (in house counsel) argued that: “The EPC did not require that parts of the description of an application which were no longer covered by the set of amended claims on which an examining division intended to grant a patent had to be marked as "non-related disclosure" or even had to be deleted when adapting the description to those claims.”
• The Examining Division refused the application because the applicant did not adapt the description as required according to the Ex. Div.
• The Board: “Article 84 EPC only mentions the description in the context of the additional requirement that it must support the claims. Under this requirement, the subject-matter of the claim must be taken from the description, it being inadmissible to claim any subject-matter which is not described.  ... Thus, Article 84 EPC cannot serve as a legal basis for the refusal.”
• “As per Rule 42(1)(c) EPC (Rule 27(1)(d) EPC 1973 and Rule 27(1)(c) EPC 1973, before and as of 1 June 1991, respectively) the description shall disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, and state any advantageous effects of the invention with reference to the background art. ”
• “However, in the absence of an objection of lack of unity under Article 82 EPC, the board fails to see how the above-mentioned provision could be the legal basis for requiring the applicant, as a general rule, to bring the description in line with claims intended for grant, and to remove passages of the description that disclose embodiments which are not claimed. ”
• “The board has also considered Rule 48(1)(c) EPC (Rule 34(1)(c) EPC 1973) as a possible legal basis requiring the adaptation of the description. Under Rule 48(1)(c) EPC, a European patent application shall not contain any statement or other matter obviously irrelevant or unnecessary under the circumstances. According to both the wording and history of this provision, it is concerned not with the contents of granted patents but with patent applications. ”
• “ In view of the above considerations, the board fails to see how the aforementioned provisions of the EPC, or any others, can lead to the requirement that embodiments disclosed in the description of an application which are of a more general nature than the subject-matter of a given independent claim must constitute potential subject-matter of a claim dependent on that independent claim. The board accordingly concludes that the decision under appeal is erroneous and is to be set aside.”
• As a comment, credits to the applicant for challenging the established first instance practice.
• However, I'm not sure if this decision will become established case law. Let's see if other Boards follow.
• Board 3.3.09 recently in T 1399/17, not cited in the present decision: “ Article 84 EPC requires that the claims be supported by the description. This also applies to claims which have been amended in opposition (Article 101(3)(a) EPC). A mandatory feature of claim 1 is that the dietary fat be a blend of natural fats. However, the specification of the patent as amended in the oral proceedings does not reflect this. Therefore, it casts doubts on the scope of the claim. ... On the basis of this alone, it is manifest that the description of the patent does not comply with the requirement of Article 84 EPC. Consequently, the main request is not allowable.”
• The present decision does not engage with T1808/06, headnote and r.2:  "In order to meet the requirement of Article 84 EPC that the claims have to be supported by the description, the adaptation of the description to amended claims must be performed carefully in order to avoid inconsistencies between the claims and the description/drawings which could render the scope of the claims unclear."

T 1989/18 -

https://www.epo.org/law-practice/case-law-appeals/recent/t181989eu1.html

Reasons for the Decision

Admissibility of the appeal

1. The appeal complies with the requirements of Article 108 EPC and Rule 99 EPC and is admissible.

T 2619/17 - Late-filed-objection is late filed

 Key points

•  The present decision confirms a trend of a few other cases of this year.
• The opponent appellant files D21 with the Statement of grounds (under RPBA 2007). The patentee objects to the admissibility for the first time during the oral proceedings. The opponent request to not admit this objection. 
• The patentee had commented on D21 in the written proceedings without contesting admissibility.
• The Board: “ Die Beschwerdegegnerin konnte keinerlei Gründe aufzeigen, dass außer­gewöhnliche Umstände vorlagen, die einen solch verspäteten Antrag rechtfertigen könnten. Das Fehlen von außergewöhnlichen Umständen wurde im Übrigen von der Beschwerdegegnerin explizit bestätigt. Die Kammer hat daher entschieden, den Antrag auf Nichtzulassung der D21 nicht zu berücksichtigen (Artikel 13 (2) VOBK 2020).”
• D21 is admitted, found to be novelty-destroying and the patent is revoked.
• see e.g. also T 0847/20 r.3.1.

T 1038/18 - (I) The respondent's rejoinder in appeal

 Key point

• The opponent appeals. 
• “ With the letter dated 1 March 2019 filed in reply to the respondent's reply to the statement of grounds of appeal the appellant [opponent] submitted for the first time during the proceedings that the priority of the patent was not validly claimed in respect of the claimed invention, that consequently document D3 (publication date of 27 May 2010) considered during the first-instance proceedings as constituting state of the art within the meaning of Article 54(3) EPC constituted state of the art within the meaning of Article 54(2) EPC in respect of the patent in suit (filing date of 1 March 2011), and that the subject-matter of claim 1 of auxiliary request 2 did not involve an inventive step over document D1 as closest state of the art in combination with document D3.”
• “The respondent [patentee] objected that the appellant's submissions relating to the validity of the priority and the combination of documents D1 and D3 were submitted too late and could already have been submitted with the statement of grounds of appeal, especially in view of the fact that the claims of auxiliary request 2 corresponded to the claims of the third auxiliary request submitted during the first-instance proceedings.
• The Board, in a very important analsyis: “The board notes, however, that document D3 was considered by the appellant during the first-instance proceedings in support of the ground for opposition of lack of novelty raised in respect of the patent as granted and that, as far as this ground for opposition is concerned, it was irrelevant at that time whether document D3 constituted state of the art within the meaning of Article 54(3) EPC or within the meaning of Article 54(2) EPC. In addition, in the present case the opposition was rejected by the opposition division, and the appellant was only required in the statement of grounds of appeal to substantiate why they considered non-convincing the reasons given by the opposition division in respect of the patent as granted. Consequently, there was no need at that time to consider whether the priority was validly claimed, i.e. whether document D3 constituted state of the art within the meaning of Article 54(2) EPC. The question of the validity of the priority and of the status of document D3 as state of the art became only pertinent when subsequently the respondent, in reply to the statement of grounds of appeal, filed auxiliary requests, and in particular the amended claims of the then auxiliary request 3 and now auxiliary request 2. Therefore, there was no need for the appellant to submit the issues under consideration already with the statement of grounds of appeal, and the submission of the mentioned issues in reply to the respondent's reply to the statement of grounds of appeal are, in the board's view, justified in the circumstances of the case.”

• “It is also noted that the claims of auxiliary request 2 correspond to the claims of the third auxiliary request submitted during the first-instance proceedings, and that the appellant [opponent] could precautionarily have filed submissions in respect of the mentioned claims with the statement of grounds of appeal. However, contrary to the respondent's view, there was no need for the appellant to have followed such an approach. 
• “in particular, as submitted by the appellant by reference to decision T 919/17 (point 1 of the reasons), it cannot be expected from the appellant [/opponent] in the circumstances noted above to speculate at that point in time which lines of defence the respondent [/patentee] would adopt, let alone to anticipate that the respondent, in reply to the appeal, would re-submit in appeal the same claims of auxiliary requests previously submitted during the first-instance proceedings. 
• Analogous considerations apply to the respondent's submissions relating to the dependent claims and the facts that claim 1 of the present auxiliary request 2 results from the combination of claim 1 as granted with the feature of dependent claim 2 as granted and the appellant already objected in the opposition notice (section VII) and in the statement of grounds of appeal (point VIII.2) to the patentability of the features of the dependent claims. The fact that the appellant [opponent] already submitted arguments in support of the mentioned objection in respect of dependent claims [in the first instance proceedings and in the SoG] does, in the board's view, not imply that the appellant's case was then to be seen as complete as regards the features of the dependent claims or that the appellant's case was then subsequently necessarily confined to these submissions.”
  
  
• The Board, in a further important remark: “It follows from the above considerations that the submissions relating to the issue of the validity of the claimed priority and to the issue of inventive step in view of the combination of document D1 with document D3 were filed by the appellant in reply to the respondent's reply to the statement of grounds of appeal in the exercise of their right to be heard and to submit comments in respect of the amended claims submitted with the mentioned respondent's reply to the statement of grounds of appeal. In these circumstances, the board considers that the mentioned submissions, although constituting an addition to the appellant's case in appeal, do not constitute an amendment of their appeal case within the meaning of Article 13(1) RPBA 2020, i.e. an amendment that may be admitted only at the discretion of the board, because the submissions are, in the mentioned circumstances, part of the appellant's case in appeal and are to be taken into account in the proceedings - i.e. without a consideration of the mentioned submissions being subordinated to a discretionary decision of the board.”
• I'm not sure if only changes of a party's appeal case which can be held inadmissible without violating Art. 113 (1) EPC, are amendments to the appeal case in the sense of the RPBA.

https://www.epo.org/law-practice/case-law-appeals/recent/t181038eu1.html

3.2 Inventive step over the embodiment of Fig. 16a to 16c of document D1 as the closest state of the art

3.2.1 Amendment to the appellant's case after notification of the summons - Article 13(2) RPBA 2020

In the statement of grounds of appeal the appellant, in addition to raising an objection of lack of novelty of the device of claim 1 over document D1 and submitting arguments in support of the objection, also raised an objection of lack of inventive step of the mentioned device over document D1, without however submitting arguments in support of this objection. Subsequently, with a letter filed after notification of the summons to oral proceedings before the board, the appellant submitted substantive arguments in support of their view that the subject-matter of claim 1 did not involve an inventive step over document D1. These arguments constitute an amendment to the appellant's case in appeal within the meaning of Article 13(2) RPBA 2020.

The respondent objected that the appellant's arguments of lack of inventive step over document D1 were not, but could precautionarily have been, submitted with the statement of grounds of appeal, that the arguments were submitted at a late stage of the appeal proceedings, and that for these reasons these arguments of lack of inventive step should not be admitted into the proceedings.

The appellant submitted that the issue of inventive step over document D1 as closest state of the art was already addressed during the first-instance proceedings and in particular by the opposition division in the decision under appeal, that the objection was already raised in the statement of grounds of appeal, and that with the statement of grounds of appeal the appellant submitted arguments in support of their view that the features of claim 1 identified by the opposition division's as being new over document D1 were disclosed in document D1. In these circumstances - as already stated in the statement of grounds of appeal - there was, according to the established case law ("Case Law of the Boards of Appeal", EPO, 9th edition (2019), section IV.C.3.4.2), no need to present at that time arguments relating to inventive step. Furthermore, the preliminary assessment of novelty presented by the board deviated substantially from that of the opposition division so that it was justified to react to the preliminary opinion of the board by submitting substantive arguments of lack of inventive step.

The board notes that in the communication annexed to the summons to the oral proceedings the board expressed the preliminary opinion that, contrary to the opposition division's view (see point 3.1.2 above, second paragraph), document D1 disclosed first and second microimage components having different colour densities and that, also contrary to the opposition division's view, document D1 did not disclose a coloured layer as claimed, and in particular a layer such that the second microimage components "appear in a colour dependent [...] on the [...] coloured layer" (see point 3.1.5 above). Therefore, the board's preliminary opinion substantially deviated from the opposition division's assessment of novelty. In particular, the preliminary opinion was, on the one hand, favourable to the appellant's submissions as regards the claimed feature relating to the microimage components having different colour densities but, on the other hand, the appellant was confronted with the board's preliminary opinion that the different colour of the claimed layer would constitute, contrary to the opposition division's view, a distinguishing feature of the claimed device over document D1 and that this feature would constitute the sole distinguishing feature of the claimed device.

In the board's view these considerations justified, in the circumstances submitted by the appellant and mentioned above, that the appellant, in reply to the preliminary opinion expressed by the board, submitted for the first time during the appeal proceedings arguments of lack of inventive step over document D1 in respect of a claimed feature that did not correspond to the features identified by the opposition division as new, but was subsequently identified in the board's preliminary opinion as the sole distinguishing feature over document D1. Consequently, the mentioned considerations constitute in the board's view cogent reasons justifying exceptional circumstances under which the board, in the exercise of its discretion under Article 13(2) RPBA 2020, considered appropriate to admit the appellant's arguments of lack of inventive step over document D1 into the proceedings.

[...]

5. Auxiliary request 2

5.1 Novelty

Claim 1 of auxiliary request 2 differs from claim 1 of the main request in that the claim further requires that the second microimage components are formed as a screened pattern. It was undisputed that this feature was new over document D1. Therefore, the device of claim 1 of auxiliary request 2 is new over the device of document D1 in the distinguishing feature already identified in point 3.1.5 above, and in that the second microimage components are formed as a screened pattern (Articles 52(1) and 54(1) EPC).

5.2 Addition to the appellant's case in appeal in reply to the respondent's reply to the statement of grounds of appeal - Consideration of Article 13(1) RPBA 2020

5.2.1 With the letter dated 1 March 2019 filed in reply to the respondent's reply to the statement of grounds of appeal the appellant submitted for the first time during the proceedings that the priority of the patent was not validly claimed in respect of the claimed invention, that consequently document D3 (publication date of 27 May 2010) considered during the first-instance proceedings as constituting state of the art within the meaning of Article 54(3) EPC constituted state of the art within the meaning of Article 54(2) EPC in respect of the patent in suit (filing date of 1 March 2011), and that the subject-matter of claim 1 of auxiliary request 2 did not involve an inventive step over document D1 as closest state of the art in combination with document D3.

The respondent objected that the appellant's submissions relating to the validity of the priority and the combination of documents D1 and D3 were submitted too late and could already have been submitted with the statement of grounds of appeal, especially in view of the fact that the claims of auxiliary request 2 corresponded to the claims of the third auxiliary request submitted during the first-instance proceedings. In addition, in the statement of grounds of appeal the appellant already referred to their first-instance submissions relating, among other issues, to the issue of novelty over document D3 under Articles 52(1) and 54(3) EPC and to the patentability of the dependent claims, and all these submissions were silent as to the validity of the priority and the new attack of inventive step. Therefore, the new appellant's submissions constituted a significant deviation from the case previously presented by the appellant and should not be admitted into the proceedings.

5.2.2 The board notes, however, that document D3 was considered by the appellant during the first-instance proceedings in support of the ground for opposition of lack of novelty raised in respect of the patent as granted and that, as far as this ground for opposition is concerned, it was irrelevant at that time whether document D3 constituted state of the art within the meaning of Article 54(3) EPC or within the meaning of Article 54(2) EPC. In addition, in the present case the opposition was rejected by the opposition division, and the appellant was only required in the statement of grounds of appeal to substantiate why they considered non-convincing the reasons given by the opposition division in respect of the patent as granted. Consequently, there was no need at that time to consider whether the priority was validly claimed, i.e. whether document D3 constituted state of the art within the meaning of Article 54(2) EPC. The question of the validity of the priority and of the status of document D3 as state of the art became only pertinent when subsequently the respondent, in reply to the statement of grounds of appeal, filed auxiliary requests, and in particular the amended claims of the then auxiliary request 3 and now auxiliary request 2. Therefore, there was no need for the appellant to submit the issues under consideration already with the statement of grounds of appeal, and the submission of the mentioned issues in reply to the respondent's reply to the statement of grounds of appeal are, in the board's view, justified in the circumstances of the case.

It is also noted that the claims of auxiliary request 2 correspond to the claims of the third auxiliary request submitted during the first-instance proceedings, and that the appellant could precautionarily have filed submissions in respect of the mentioned claims with the statement of grounds of appeal. However, contrary to the respondent's view, there was no need for the appellant to have followed such an approach. In particular, as submitted by the appellant by reference to decision T 919/17 (point 1 of the reasons), it cannot be expected from the appellant in the circumstances noted above to speculate at that point in time which lines of defence the respondent would adopt, let alone to anticipate that the respondent, in reply to the appeal, would re-submit in appeal the same claims of auxiliary requests previously submitted during the first-instance proceedings. Analogous considerations apply to the respondent's submissions relating to the dependent claims and the facts that claim 1 of the present auxiliary request 2 results from the combination of claim 1 as granted with the feature of dependent claim 2 as granted and the appellant already objected in the opposition notice (section VII) and in the statement of grounds of appeal (point VIII.2) to the patentability of the features of the dependent claims. The fact that the appellant already submitted arguments in support of the mentioned objection in respect of dependent claims does, in the board's view, not imply that the appellant's case was then to be seen as complete as regards the features of the dependent claims or that the appellant's case was then subsequently necessarily confined to these submissions.

5.2.3 It follows from the above considerations that the submissions relating to the issue of the validity of the claimed priority and to the issue of inventive step in view of the combination of document D1 with document D3 were filed by the appellant in reply to the respondent's reply to the statement of grounds of appeal in the exercise of their right to be heard and to submit comments in respect of the amended claims submitted with the mentioned respondent's reply to the statement of grounds of appeal. In these circumstances, the board considers that the mentioned submissions, although constituting an addition to the appellant's case in appeal, do not constitute an amendment of their appeal case within the meaning of Article 13(1) RPBA 2020, i.e. an amendment that may be admitted only at the discretion of the board, because the submissions are, in the mentioned circumstances, part of the appellant's case in appeal and are to be taken into account in the proceedings - i.e. without a consideration of the mentioned submissions being subordinated to a discretionary decision of the board.