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

Key points

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

EPO 

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

T 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 2091/18 - Cancelling independent claim and case amendment

 Key points

•  The patentee cancels device claims 6-14 during the oral proceedings, keeping only claims 1-5 directed to the process, in a new request filed during oral proceedings before the Board.
• The Board considers this to be a case amendment in the sense of the RPBA. The Board disagrees with a number of other decisions which took a different position.
• "Für den Rückschluss, dass die Streichung von Ansprüchen das Beschwerdevorbringen nicht ändere, insofern sich dadurch keine geänderte Sachlage (T 995/18, T 981/17, T 1792/19, T 1857/19) bzw. keine (völlige) Neugewichtung (T 995/18, T 981/17) ergebe, findet sich nach Ansicht der Kammer in der Verfahrensordnung keine Stütze."
• The present Board is of the view that the question of whether a submission constitutes a case amendment in the meaning of Article 13(2) RPBA, is to be distinguished from the considerations regarding the further course of proceedings, as such considerations may be relevant for the subsequent question of whether there are exceptional circumstances. 
• The Board applies Article 13(2) RPBA and admits the request inter alia because the Board had raised new issues regarding specifically the device claims in the preliminary opinion.

T 2091/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t182091du1.html

Entscheidungsgründe

Zulassung des Hauptantrags

1. Der dieser Entscheidung zugrundeliegende Hauptantrag wurde erstmals zu Beginn der mündlichen Verhandlung vor der Beschwerdekammer eingereicht. Er unterscheidet sich von dem Patent in der erteilten Fassung, das der angefochtenen Entscheidung, den Einspruch zurückzuweisen, zugrunde lag, lediglich dadurch, dass die Vorrichtungsansprüche 6 bis 14 gestrichen worden sind. Damit werden in dem nun vorliegenden Hauptantrag nur die Verfahrensansprüche 1 bis 5 in der erteilten Fassung weiterverfolgt.

2. Artikel 13 (2) VOBK 2020, der gemäß den Übergangsbestimmungen des Artikels 25 (1) und (3) VOBK 2020 vorliegend anwendbar ist, implementiert die dritte Stufe des im Beschwerdeverfahren anzuwendenden Konvergenzansatzes (s. Zusatzpublikation 2 zum ABl. EPA 2020, S. 33, Erläuterungen zu Artikel 13 Absatz 2). Die Vorschrift bestimmt, dass Änderungen des Beschwerdevorbringens eines Beteiligten nach Ablauf einer von der Kammer in einer Mitteilung nach Regel 100 Absatz 2 EPÜ bestimmten Frist oder, wenn eine solche Mitteilung nicht ergeht, nach Zustellung der Ladung zur mündlichen Verhandlung grundsätzlich unberücksichtigt bleiben, es sei denn, der betreffende Beteiligte hat stichhaltige Gründe dafür aufgezeigt, dass außergewöhnliche Umstände vorliegen.