T 2473/17 - A long sentence

Key points

• The applicant files a new request in appeal. The Board does not admit it. 
• The Board, in one sentence: “Considering i) that the new main request was filed to overcome the objection of lack of novelty over D1 (i.e. the ground of refusal for the application) and thus cannot be regarded as a reaction to an unexpected development in the proceedings,
  ii) that the added wording "continuously curved" has no explicit basis in the application as filed and, by the Appellant's own admission, can only be derived from the figures, and thus gives rise to issues under Article 123(2) and 84 EPC (in particular, what should be understood by "continuously curved" serpentine: with straight portions or not, with a constant radius of curvature or a variable one , etc.) which would require further discussion, and
  iii) that D1 (figure 2) apparently also shows a serpentine divider having a smooth, continuously curved shape, without cusps or angles introducing discontinuities, i.e. that D1 apparently discloses what can be regarded as a continuously curved serpentine divider (in its broadest interpretation, this term would not exclude straight line portions), whereby the amendment is not such as to prima facie overcome the objection of lack of novelty over D1 in respect of the previous second auxiliary request Version 1, the Board takes the view that, having regard to the current state of the proceedings and for reasons of procedural economy, the new main request is not to be admitted to the appeal proceedings pursuant to Article 13(1) RPBA.” (indents in original). 
• As a comment, drafting a judgement in basically one sentence with a number of "considering" statements is the traditional (and current) French way of drafting judgments, but the EPO normally does not use it..

EPO T 2473/17 -  link

Reasons for the Decision

1. The appeal is admissible.

2. The Appellant's main request was filed during oral proceedings after novelty over D1 was discussed in respect of all pending requests at the beginning of the oral proceedings, after deliberation of the Board, and after the Chairman informed the Appellant that the subject-matter of claim 1 of all requests - including the second auxiliary request Version 1, filed with letter dated 13 September 2019 - lacked novelty in view of D1.

T 0184/17 - Let's admit new grounds in appeal (exceptionally)

Key points

• In this opposition appeal, the Board decides that claim 1 is novel over E1. The opponent then would like to argue that even if E1 does not directly and unambiguously disclose the feature at issue, E1 at least makes the feature obvious. 
• "The respondent-opponent submits that, if claim 1 is considered new for the lack of an unambiguous disclosure of a process for preparing a beverage from tea leaves [in E1], it anyhow lacks an inventive step." E1 describes a detailed process for making drinks and includes a general remark that the processes of E1 can be used for making coffee and tea.
• The patentee argues that inventive step is a new ground of opposition in appeal. "since the appellant-proprietor does not consent to its introduction into the appeal proceedings, the board has no authority to examine it, see G10/91".
• "In the present case, the ground of inventive step was neither raised and substantiated in the notice of opposition nor discussed during opposition proceedings."
• "The new objection relies on the same passages and teaching of the document as the unsuccessful novelty objection, duly raised and substantiated with the notice of opposition. In other words, the lack of inventive step attack as raised in appeal stays within the factual and evidentiary framework relied upon by the opponent in the notice of opposition [for novelty]"
•  "In conclusion, the board holds that even when the ground of inventive step was neither raised and substantiated in the notice of opposition nor discussed during opposition proceedings, an objection of lack of inventive step can exceptionally be examined in the appeal proceedings without the agreement of the patentee, if it stays within the same factual and evidentiary framework of a novelty objection properly raised and substantiated in the notice of opposition. This does not mean that the ground of lack of inventive step starting from the same prior art is always implicit in a properly substantiated allegation of lack of novelty. It rather applies exclusively to a case such as the present one, where, after having validly raised lack of novelty in opposition on the basis of a given document and passages cited therein, the ground of lack of inventive step is subsequently invoked in appeal based only on that document and the same passages, and where therefore the factual and evidentiary framework is substantially the same."
• As a comment, this decision appears to hollow out the holding of G10/91. Whatever the merits of G10/91 (I'm skeptical about that), I'm not sure if the approach of the present Board contributes to legal certainty for patentees. I doubt whether G10/91 envisaged Technical Boards creating exceptions to its holding. The fact that the Enlarged Board in G7/95 created an exception does not mean (in my view) that Technical Boards can create further exceptions as they deem necessary based on fairness. 
• In earlier decision T 597/07 cited by the Board, the inventive step attack was admitted not by way of exception but based on the Board holding that "the objection of lack of inventive step is not a fresh ground for opposition in the present case". 

EPO T 0184/17 - link

4. New ground of opposition

The respondent-opponent submits that, if claim 1 is considered new for the lack of an unambiguous disclosure of a process for preparing a beverage from tea leaves, it anyhow lacks an inventive step. According to the respondent-opponent, the skilled person, drawing on the teachings of the invention in E1 already cited in the above novelty objection, would adapt as a matter of obviousness the cited process described on pages 29-33 for preparing a beverage from tea leaves in the sense of the contested claim.

The appellant-proprietor contests that the ground of inventive step was neither raised nor substantiated in the notice of appeal and thus constitutes a fresh ground for opposition. Since the appellant-proprietor does not consent to its introduction into the appeal proceedings, the board has no authority to examine it, see G10/91 (OJ 1993, 408 and 420).

T 0434/15 - Stem cell harvesting from blood

Key points

• This opposition appeal is about a method "to obtain progenitor and/or stem cells" from a patient, the method comprising a step of "harvesting said progenitor and/or stem cells". The Board concludes that the claim is directed to a surgical method because of this step, in view of G1/07.
• The Board first explains that "[a]pheresis is a method in which blood is removed from a person, passed through an apparatus for separating and collecting a particular constituent of the blood (in the present case, stem/progenitor cells) and re-transfused without the collected constituent."
• The Board concludes (based on a document D18) that "[apheresis] has to be carried out with extreme care to avoid damage to the remaining blood and to the stem/progenitor cells that are removed for further use."
• "Consequently, apheresis is a substantial physical intervention involving considerable health risks."
• The patentee had submitted a declaration of an expert stating that he worked in a hospital that "performed about 200 apheresis sessions a year. It was the second largest centre in the UK performing adult stem cell transplantation.".
• The Board: "the fact that a certain method is routine for a highly specialised centre cannot automatically lead to the conclusion that such a method would generally be a safe and routine technique."
• The Board concludes that "[t]here are considerable health risks involved. Furthermore, apheresis cannot be considered to be a generally safe, simple, routine procedure. Consequently, apheresis has to be seen as a method of surgery within the meaning of Article 53(c) EPC."

EPO T 0434/15 (Plerixafor ) - link

III. Independent claims 1 and 9 of the patent as granted read as follows:

"1. A method to obtain progenitor and/or stem cells from a subject, which method comprises
(a) administering to said subject an amount of a compound sufficient to mobilize said progenitor and/or stem cells into the peripheral blood of said subject, followed by
(b) harvesting said progenitor and/or stem cells,
wherein said compound is 1,1'-[1,4-phenylene-bis-(methylene)]-bis-1,4,8,11-tetraazacyclotetradecane or a pharmaceutically acceptable salt or metal complex thereof."

 Reasons for the Decision

4.2 Methods for treatment by surgery (Article 53(c) EPC)

4.2.1 The following reasoning applies to methods according to claims 1 and 6, i.e. methods in which the progenitor/stem cells are harvested by apheresis.

4.2.2 Decision G 1/07 of the Enlarged Board of Appeal (see OJ EPO 2011, 134) has established a certain direction for the consideration of whether certain method steps are to be considered as methods of treatment of the human body by surgery. The exclusion of such methods from patentability should be justified on grounds of public health, the protection of patients and the freedom of the medical profession to apply the treatment of choice to its patients (see G 1/07, reasons, point 3.4.2.4, third paragraph).

T 0815/18 - Claim amendments changing CPA inadmissible

Key points

• In this examination appeal, the Board concludes that the Main Request is not inventive in view of  D2. The applicant then files a new Main Request at the end of the oral proceedings. The Board does not admit this request.
• " The appellant further argued that, because of [the] amendments, D2 did not represent the closest prior art anymore since it did not relate to microwave radio transmissions but to mobile communications." 
• “The board holds that, even if this technical argument were accepted, amendments to a claim aiming to change the closest prior art, considered as such during the whole examination proceedings, introduces subject-matter which has not been discussed so far and or probably even searched and could not be dealt with without the adjournment of oral proceedings.” 
• As a comment, in this case, the features were taken from the description, so in a way it introduced new subject-matter which have not been discussed so far. That may be enough for holding inadmissible amended claims filed at the end of the oral proceedings. Nevertheless, I tend to agree that the fact that the claim amendments aim to switch the closest prior art document, may provide an additional reason for holding requests inadmissible (also if filed earlier in the procedure). 
• This decision also illustrates that the CPA is to be determined for the claim(s) at issue, not for the patent application as a whole. 

EPO T 0815/18 -  link

Reasons for the Decision

1. The appeal is admissible (see point II above).

2. Main request - Admissibility

2.1 This request was filed late by the appellant at the end of the oral proceedings before the board, after the other requests had been examined, and replaced the previous main request which was thus withdrawn.

2.2 In the oral proceedings, the board had previously expressed the opinion that claim 1 of the previous main request did not meet the requirements of Article 56 EPC in view of D2. During discussion of the previous main request, the board held that D2 discloses the following

[...]

For these reasons, during oral proceedings the board concluded that the subject-matter of claim 1 of the previous main request did not involve an inventive step, in view of D2.

2.3 Claim 1 of the main request differs in substance from claim 1 of the previous main request in that the line interface is a baseband wireline interface and the radio transmission is a microwave radio transmission, i.e. that the radio channels operate in the microwave range.

The appellant argued that these amendments were supported by the description in page 1, line 21 and from page 1, line 24 to page 2, line 6, respectively. The board notes, however, that these passages belong to the part entitled "Background of the invention" and that the terms "microwave" and "baseband" do not appear further in the description, so the board is not convinced that the requirements of Article 123(2) EPC are fulfilled.

The appellant further argued that, because of these amendments, D2 did not represent the closest prior art anymore since it did not relate to microwave radio transmissions but to mobile communications. The board holds that, even if this technical argument were accepted, amendments to a claim aiming to change the closest prior art, considered as such during the whole examination proceedings, introduces subject-matter which has not been discussed so far and or probably even searched and could not be dealt with without the adjournment of oral proceedings.

For these reasons, during the oral proceedings the board decided not to admit the main request into the proceedings (Article 13(3) RPBA).

T 2893/18 - File inspection exclusion appeal

Key points

• This is an unuasal appeal about a request to exclude documents from the public part of the file.
• " By letter dated 18 December 2017, the patent proprietor indicated that it had been informed that opponent 2 intended to make written submissions in preparation for the oral proceedings." The patentee then requests that the letter of the opponent is excluded from the public file and that the letter is not sent to the other opponent.
• First oral proceedings before the OD then take place. The OD decides to admit the documents at issue in the proceedings. The OD then concludes that second oral proceedings are to be held.
• " The present appeal was filed by the patent proprietor following a communication annexed to the summons [issued 31.08.2018] to second oral proceedings in opposition proceedings." 
• The question is whether this appeal is admissible, in particular, whether there is a decision. 
• The Board: " although an implicit decision is not acknowledged as such in the Convention, its possible existence cannot be excluded either because there are circumstances where a decision can be inferred from the context rather than based on the form of a document" 
• " The appellant argued [] that the contested documents were not only listed in this communication but were also commented upon. Therefore, their content was - at least indirectly - made available to any third party reading the communication." 
• " Although the board acknowledges the logic supporting this argument, it can nonetheless not draw the same conclusion as the appellant." 
• " There is no mention at all of the request for their exclusion from file inspection, let alone a decision rejecting such a request. Indeed, the communication appears to only contain the opposition division's provisional opinion on the therein identified outstanding issues and does not seem to even hint at a decision on any issue. Moreover, the contested documents are still in the non-public part of the file." 
• " Thus, the present appeal was filed in the absence of a decision and therefore has to be rejected as inadmissible" 
• " The fact that the documents were communicated to the other opponents is not in contradiction with their provisional exclusion from public inspection." 
•  The other opponent is party to the appeal proceedings. " Regarding the appeal, as foreseen in Article 107, second sentence, EPC "any other parties to the proceedings shall be parties to the appeal proceedings as of right". The provision contains no exception and allows no different interpretation, nor could the appellant's arguments shed a different light or lead to a different understanding. Thus, the opponents are parties to the present proceedings."

T 2893/18 - link

Reasons for the Decision

Party status of opponents 1 and 3

1. The appellant argued, in its submissions of 3 July 2019, that the issues to be considered in the present appeal warrant the participation of only opponent 2 in the proceedings and the exclusion of the other two opponents. The appellant reasoned that opponents 1 and 3 should not have party status since the appeal was not concerned with the opposition itself but with the incidental issue of the exclusion from file inspection of documents submitted by opponent 2 and the correct procedure to be applied when deciding it. They should even have been excluded from participation in the discussion of this issue during the opposition proceedings to safeguard that the contested documents remained unavailable to the public.

2. As the opposition division correctly pointed out in its communication dated 22 December 2017, all documents submitted in the course of opposition proceedings and all exchanges between one party and the opposition division have to be communicated to all parties due to the inter partes nature of opposition proceedings (see also 5.2 below).

Regarding the appeal, as foreseen in Article 107, second sentence, EPC "any other parties to the proceedings shall be parties to the appeal proceedings as of right". The provision contains no exception and allows no different interpretation, nor could the appellant's arguments shed a different light or lead to a different understanding. Thus, the opponents are parties to the present proceedings.

Admissibility of the appeal

3. The appellant's case rests on the argument that the opposition division's communication dated 31 August 2018 contains the implicit decision to reject its request for the exclusion of documents D18-D37 from public file inspection.

T 0603/14 - Novelty attack to inventive step attack

Key points

• In this opposition appeal, the opponent had used D1 and D3 up to the oral proceedings before the Board only to support objections of lack of novelty of claim 1 and claim 25. During the oral proceedings, the Board concludes that the claims are novel and the opponent raises an objection of lack of inventive step based on the same documents. 
• The Board does not admit the new attack.  "At least the allegation that [these documents] led, in combination, to a lack of inventive step is to the Board a new fact." 
• As a comment, the particular approach of calling attacks 'facts'  is due to T1914/12.
• The Board: " the [opponent] did not give any reason for presenting that attack only towards the end of the oral proceedings rather than at such a time before the oral proceedings as to allow the Board and the respondent to appropriately address it. The annex to the summons stated clearly that any further comments, documents or requests should be at the disposal of the Board and the other party one month before the oral proceedings at the latest and should not surprise the other party and the Board. The [patentee] indicated that he would need an appropriate amount of time to react to the objection. Admittance of the objection at this late stage would therefore not have respected the required procedural efficiency. Rather it might even have borne the risk of having to adjourn the oral proceedings." 
• As a comment, "the purpose of the communication of a board of appeal pursuant to Article 15(1) RPBA is to prepare for the oral proceedings and it is not an invitation to the parties to make further submissions or to file further requests" (T0799/17). So the annex to the summons is not an invitation to make further submissions but the deadline given therein is still a deadline.

EPO T 0603/14 -  link

7. Admissibility of a late-filed inventive step objection

7.1 The Board exercised their discretion not to consider the late filed objection of lack of inventive step in view of D1 and D3.

7.2 The appellant raised this objection for the first time in the oral proceedings before the Board. The documents form part of the appeal proceedings.

7.3 The objection represents an amendment to the appellant's case and may as such, pursuant to Article 13(1) RPBA, be admitted and considered at the Board's discretion. Document D1 and D3 had up to that point only been used to support objections of lack of novelty of claim 1 and claim 25. At least the allegation that they led, in combination, to a lack of inventive step is to the Board a new fact.

7.4 The appellant did not present a convincing justification for the late submission of this alleged new fact. The Board's preliminary opinion on the disclosure of D1 did not introduce any new aspects into the discussion. It merely did not follow the appellant's conclusions. Even accepting arguendo that it did prompt the new objection, the appellant did not give any reason for presenting that attack only towards the end of the oral proceedings rather than at such a time before the oral proceedings as to allow the Board and the respondent to appropriately address it. The annex to the summons stated clearly that any further comments, documents or requests should be at the disposal of the Board and the other party one month before the oral proceedings at the latest and should not surprise the other party and the Board. The respondent indicated that he would need an appropriate amount of time to react to the objection. Admittance of the objection at this late stage would therefore not have respected the required procedural efficiency. Rather it might even have borne the risk of having to adjourn the oral proceedings. Even if one accepted that D1, having been cited to support an objection of lack of novelty, could have been expected to be used as a starting point for an objection of lack of inventive step, the other party cannot be expected to anticipate any arbitrary combination of D1 with other documents on file, such as D3, to be introduced into the proceedings. Furthermore, a document useful for assessing novelty is not necessarily a legitimate choice as closest prior art, see also T0181/17, reasons 7.4.

8. For the above reasons, the Board accedes to the respondent's main request and rejects the appellant's request.

Order

For these reasons it is decided that:

The appeal is dismissed.

T 0043/16 - OD should have admitted requests

Key points

• The OD had not admitted Auxiliary Request 1. The Board considers that the OD did so according to the wrong principles (G7/93). Oral proceedings before the OD were held on 13.10.2015. The Board notes that AR-1 was filed with letter of 18.12.2014. This letter was after the expiry of the period of Rule 79(1) EPC (The Rule 79(1) Communication was dated 21.02.2014. A first extension with 2 months was granted, i.e. until 21.08.2014. A second extension was denied. The Patentee's response was filed only in December 2014. 
• The Board: "Auch wenn sie [Auxiliary Request 1] formal nach Ablauf der nach Regel 79 (1) EPÜ gesetzten Frist eingegangen sind, sind sie Gegenstand sowohl der in der Ladung zur mündlichen Verhandlung geäußerten vorläufigen Meinung der Einspruchsabteilung, als auch der Eingabe der Einsprechenden vom 23. Juli 2015. Daher mussten sie als faktisch in das Einspruchsverfahren zugelassen gelten."
• As a first comment, I note that the Board appears to acknowledge that auxiliary requests filed after the expiry of the Rule 79(1) period are in principle late-filed. However, I find it rather weird that a late-filed request becomes admissible because the opponent comments in substance on it. The opponent can hardly be expected to restrict itself to only contesting admissibility, in view of the risk that the OD could admit the request. If I understand the present Board, if you wile a substantive rebuttal as an opponent, patentee's late-filed auxiliary requests automatically become admissible. What is the opponent supposed to do, then? Has the Rule 79(1) period any meaning, except for being a delay until the OD can issue summons?
• The OD had also decided to not admit Auxiliary Requests 3 to 6, filed after the Rule 116(2) date. The Board: Die Kammer stellt fest, dass die Nichtzulassung der Hilfsanträge 3 bis 6 lediglich damit begründet wurde, dass der Antrag nach Regel 116(2) EPÜ verspätet eingereicht worden war. [in particular: “Durch die Eingabe der Einsprechenden vom 23. Juli 2015 habe sich der Sachverhalt geändert, da die Einsprechende neue Einwände, zusätzliche Argumente und weitere Druckschriften eingereicht habe.”] Die Einspruchsabteilung berücksichtigte nicht, dass der Antrag durch eine Änderung des Streitstoffs veranlasst war, [...] . Hinsichtlich der Hilfsanträge 4 bis 6 setzte sie sich inhaltlich nicht erkennbar mit den geänderten Ansprüchen auseinander, bevor sie die Hilfsanträge 3 bis 6 als nicht zulässig verwarf. Die Einspruchsabteilung hat ihr Ermessen daher rein formalistisch ausgeübt.
• As a comment, I tend to agree that if the opponent submits new attacks and documents shortly before the Rule 116(2) date (and these are admitted), then the patentee must be given an opportunity to reply, with auxiliary requests if desired, under Article 113. Rule 116(2) indeed only applies if the proprietor “has been notified” of the grounds prejudicing the maintenance of the patent and invitation to submit amended claims has accordingly been issued. The Rule 116(2) date applies only for amended claims that are responsive to those objections notified in that invitation. 
• The OD had also decided to not admit the new Main Request, filed two weeks before the oral proceedings, which were the claims as granted (with the reply of 18.12.2014, the Main Request was amended claims). According to the Board, two weeks was sufficient for the opponent to consider this new request, because the claims as granted were already the subject of the Notice of opposition. "Somit war der Einsprechenden durchaus zuzumuten, sich etwa zwei Wochen vor dem Termin der mündlichen Verhandlung erneut mit den erteilten Ansprüchen und mit ihrer eigenen Argumentation auseinanderzusetzen, an der sich angesichts der erteilten Ansprüche nichts geändert haben sollte." 

EPO T 0043/16 -  link

Entscheidungsgründe

1. Die Beschwerde ist zulässig.

2. Die Beschwerdeführerin reichte zusammen mit ihrer Beschwerdebegründung erneut ihren Hauptantrag betreffend die erteilten Ansprüche, sowie die Hilfsanträge 1 bis 6 ein, die von der Einspruchsabteilung unter Verweis auf Regel 116 (2) EPÜ in das Einspruchsverfahren nicht zugelassen worden waren.

2.1 Daher hat die Kammer zu überprüfen, ob einzelne oder alle diese Anträge in das Beschwerdeverfahren zuzulassen sind. Gemäß Artikel 12(4) der Verfahrensordnung der Beschwerdekammern (VOBK) kann eine Kammer das Vorbringen eines Beteiligten in das Beschwerdeverfahren zulassen, auch wenn es von der ersten Instanz als verspätet nicht zugelassen wurde. Soweit nach Artikel 12 (4) VOBK im Beschwerdeverfahren über die Zulassung von Vorbringen zu entscheiden ist, das bereits im erstinstanzlichen Verfahren nicht zu gelassen wurde, entspricht dies einer Überprüfung der auf Regel 116 EPÜ gestützten Ermessensentscheidung der Einspruchsabteilung.

2.2 Nach ständiger Rechtsprechung der Beschwerdekammern ist bei der Überprüfung einer Ermessensentscheidung des erstinstanzlichen Organs zu beurteilen, ob es sein Ermessen nach Maßgabe der falschen Kriterien, unter Nichtbeachtung der richtigen Kriterien oder in willkürlicher Weise ausgeübt hat (siehe G 7/93, ABl. EPA 1994, 775, Entscheidungsgründe Punkt 2.6; T 640/91, ABl. EPA 1994, 918, Entscheidungsgründe Punkt 6.3; T 109/08, Entscheidungsgründe Punkt 4.1).

2.3 Daher wird die Kammer im Folgenden untersuchen, ob die Nichtzulassung der erneut im Beschwerdeverfahren vorgelegten Anträge von der Einspruchsabteilung nach Ausübung pflichtgemäßen Ermessens erfolgte, oder ob die Einspruchsabteilung ihr Ermessen fehlerhaft ausgeübt hat.

3. Hauptantrag

3.1 Die Beschwerdeführerin hat mit ihrer ersten Eingabe im Einspruchsverfahren geänderte Ansprüche eingereicht. Erst mit ihrer zweiten Eingabe im Einspruchsverfahren, mit dem Schriftsatz vom 28. September 2015, legte sie als Hauptantrag die erteilten Ansprüche vor, die sie auch im Beschwerdeverfahren als Hauptantrag weiterverfolgt.

T 0834/14 - Requests not admitted by OD

Key points

• The OD considers claim 1 of the main request to include a feature that lacks basis in the application as filed, as submitted by the opponent in the Notice of opposition. The OD had refused to admit auxiliary requests filed during the oral proceedings. The Board does not consider this to form a substantial procedural violation.
• "As mentioned by the Opposition Division in its decision (point 11.2), the opponent had already objected to the feature [x] in the notice of opposition (point II), and the [proprietor] had not reacted by amending claim 1 to overcome that objection [prior to the oral proceedings]. In the Board's opinion, the [proprietor] could have filed an amended version of the claims to address this objection together with its reply to the notice of opposition, or at the latest before the oral proceedings. Therefore, for that reason alone, the Board does not see any substantial procedural violation in forbidding the appellant to file additional requests during the oral proceedings. "
• For not admitting the new requests, it does not matter that the OD had also raised new objections during the oral proceedings.
• "the fact that there was one objection which had been in the file right from the start of the opposition proceedings and which could and should have been addressed earlier seems enough to justify the refusal to file new requests. Such a decision by the Opposition Division might be considered severe, but in the present situation it does not constitute a substantial procedural violation."

EPO T 0834/14 - link

6. Substantial procedural violation

In its statement of grounds, the appellant considered that given the objections raised for the first time during the oral proceedings and introduced into the proceedings by the Opposition Division, the appellant should have been given an opportunity to file amended requests. Moreover, since in the annex to the summons to the oral proceedings the Opposition Division did not comment on the feature "valve actuation flow path", the appellant considered that the Opposition Division did not see any problem with it, which was an additional reason to allow the filing of auxiliary requests. It also requested that in case of a remittal the composition of the Opposition Division be changed for reasons of equity.

T 1871/14 - Rule 137(5) and single general inventive concept

Key points

• The Board, about Art. 83 of the Main Request in this examination appeal: "[t]he only passage describing an embodiment of the invention on pages 47 to 58 of the 175 page A2-publication is completely silent about the contested claim feature of an area of the 1931 CIE chromaticity diagram. It also contains no indication as to whether the embodiment provides the claimed difference in correlated colour temperatures. The remaining 164 pages are nothing more than copies of claim wording and repetitions." The Board considers the invention to be insufficiently disclosed.
• Turning to AR-2, the Board notes that "[w]ith this request, filed with the statement of grounds of appeal, this technical concept [about a ratio of first and second power lines] has been claimed for the first time during the European phase of the application. Thus, this concept is not covered by the supplementary European search. Moreover, this concept does not combine with the invention as originally claimed in claims 1 to 15 as filed upon entry into the European phase to form a single general inventive concept, which like the claims of the present main and first auxiliary requests were characterised by properties of the light emitted by the device, such as correlated colour temperatures [...]. Therefore, the subject-matter of the second auxiliary request constitutes an inadmissible amendment in the sense of Rule 137(5) EPC. Should the appellant have wished to pursue subject-matter of this nature, they should have filed corresponding claims upon entry into the European phase of the application." 
• The Board however then combines this holding about Rule 137(5) with Article 12(4) RPBA: “In that context, with respect to Article 12(4) RPBA, because the second auxiliary request relates to a different invention not covered by the supplementary European search, it clearly could and should have been filed before the department of first instance. [] Consequently, the board exercised its power under Article 12(4) RPBA to hold inadmissible the second auxiliary request.”
• As a comment, I see no advantage in adding Article 12(4) RPBA for holding a request inadmissible that is already inadmissible under Rule 137(5) EPC. 
• On the other hand, I like how the  Board states that the two cumulative requirements of Rule 137(5) are met: “this concept is not covered by the supplementary European search. Moreover, this concept does not combine with the invention as originally claimed in claims 1 to 15 as filed upon entry into the European phase to form a single general inventive concept” (emphasis added). 

EPO T 1871/14 -  link

Reasons for the Decision

1. Admissibility of the appeal

The appeal was filed in due time and form and sufficiently substantiated. Thus, the appeal is admissible.

2. Main request and first auxiliary request

Clarity (Article 84 EPC)

2.1 The independent claims 1 and 11 according to the main request as well as independent claims 1 and 10 according to the first auxiliary request define the claimed subject-matter merely by a result to be achieved.

2.2 The appellant's argument, that the examining division had never raised an objection under Article 84 EPC against claim 1 does not take into account point 2.6.5 on page 14 of the contested decision, where former claim 2, the features of which are contained in the independent claims of the present main request and auxiliary request, was found not to comply with the requirements of Article 84 EPC, because it lacked essential features. Besides that, the appellant's argument has no bearing on the decision because the board can, according to Article 111(1), 2nd sentence EPC, exercise any power within the competence of the department which was responsible for the decision appealed. Thus, in appeal proceedings concerning a decision of an examining division, the board may even raise new objections which did not form part of the contested decision at all.

2.3 The board is also not convinced by the appellant's substantive arguments with respect to Article 84 EPC.

T 0430/17 - Remittal and withdrawal opposition

Key points

• The proprietor appeals against the revocation of the patent by the OD on the ground of insufficient disclosure. The  Board finds the patent to be sufficiently disclosed.
• The Board remits the case. However, as the only opposition was withdrawn during the appeal proceedings, the Board remits the case with the order for the OD whether to continue the procedure of own motion under Rule 84(2) s.2 EPC.

T 0430/17 -  link

2.5 In Anbetracht der obigen Ausführungen gelangt die Kammer zu dem Ergebnis, dass der Einspruchsgrund nach Artikel 100 b) EPÜ der Aufrechterhaltung des Streitpatents in der erteilten Fassung nicht entgegensteht.

Da die weiteren Einspruchsgründe von der Einspruchsabteilung noch nicht geprüft wurden und zwischenzeitlich der einzige Einspruch zurückgenommen wurde, wird die Angelegenheit an die Einspruchsabteilung zurückverwiesen zur weiteren Prüfung, ob sie das Verfahren von Amts wegen fortsetzt (Artikel 111 (1) EPÜ).

Entscheidungsformel

Aus diesen Gründen wird entschieden:

1. Die angefochtene Entscheidung wird aufgehoben.

2. Die Angelegenheit wird an die Einspruchsabteilung zurückverwiesen zur Ausübung ihres Ermessens nach Regel 84 (2), Satz 2 EPÜ.

R 0007/17 - Petition for review

Key points

• This petition for review was filed 14.09.2017. The written decision was issued 16.12.2019. The petition for review "is unanimously rejected as clearly unallowable".
• To cite OJ 2007 SE 4 En p.130, “In the interest of a quick and effective screening of petitions for review which are clearly inadmissible or not allowable, special procedural provisions apply to the three-member panel []. The proceedings before this panel shall be as simple and short as possible.” “A quick screening procedure at the outset of review proceedings to sort out petitions which clearly cannot be successful is essential in order to avoid an inappropriate prolongation of legal uncertainty for third parties. It is also of great importance to counteract effectively intentional prolongation of proceedings by filing a petition for review.”
• I leave it to the judgement of the readers whether a two years procedure is a "quick" screening procedure. Let me observe that the application was filed in 2010, so that the "lifetime" of the patent was increased by roughly 30% by the petition for review procedure (from 7 to 9 years). Calculated from the grant of the patent in 2012, the increase was 40%.
• The decision contains a remark about the importance of the Technical Board asking for the parties' final requests: "When the chairman summarised the patent proprietor’s requests, not including auxiliary requests 5 to 8, he made clear that these requests did not form part of the appeal proceedings. The chairman then asked the parties if they had any further comments or requests. According to the minutes of the oral proceedings, there were none. At least at that time, the patent proprietor could have answered this question by filing additional auxiliary requests. It did not submit any." 

EPO R 0007/17 - link

Summary of Facts and Submissions

I. The petition for review concerns decision T 0360/15 of Technical Board of Appeal 3.2.01 of 17 May 2017 and despatched on 5 July 2017, revoking European patent No. 2298640.

II. The petition for review was filed by the patent proprietor (hereinafter “the petitioner”) on 14 September 2017. The corresponding fee was paid on the same day.

III. The petition is based on the grounds under Article 112a(2)(c) EPC that a fundamental violation of Article 113 EPC occurred in the appeal proceedings.

IV. In a communication accompanying the summons to oral proceedings dated 8 March 2019, the Enlarged Board expressed its provisional and non-binding opinion that no fundamental violation of the right to be heard occurred and that it intended to consider the petition for review at least in part clearly inadmissible and in any case clearly unallowable.

V. Oral proceedings were held on 13 June 2019.

...

T 1695/14 - Withdrawing and reintroducing requests

Key points

• The Boards finds that the proprietor's earlier requests where implicitly withdrawn during the written appeal proceedings by the filing of new auxiliary requests: “Die Übernahme der Bezeichnung mit römischen Ziffern und die klare Erläuterung, welche der ehemaligen Anträge mit welchen Änderungen und welcher Bezifferung bzw. Rangstelle weitergeführt werden, lässt nur den Schluss zu, dass die übrigen vormaligen Hilfsanträge nicht weiterverfolgt werden sollten. ” 
• The Board concludes that the requests can be resubmitted and that their admissibility is then decided on the basis of the moment of resubmitting them. However, in the discretionary decision whether or not to admit the requests, the Board can take into account that the opponent has earlier in the procedure already engaged with the request, for instance if a request is dropped at the beginning of the oral proceedings and is later resubmitted. However, in the present case, the patentee had withdrawn the requests a few weeks before the oral proceedings, so that there was no need for the opponent to prepare for a discussion of those requests.
• The Board also notes the large number of auxiliary requests.
• “Würden die Anträge zugelassen, so würde das bedeuten, dass die übrigen Beteiligten sich in unzumutbarer Weise vor der mündlichen Verhandlung auf sechzehn Anträge (ein Hauptantrag und fünfzehn Hilfsanträge) hätten vorbereiten müssen und dann spontan auf die in der Verhandlung (wieder)gestellten vormaligen Hilfsanträge hätten reagieren müssen, was nicht zumutbar wäre.”

EPO T 1695/14 -  link



EPO  Headnote

• Die Rücknahme eines Antrags kann ausdrücklich oder konkludent erfolgen. Eine konkludente Antragsrücknahme liegt vor, wenn sich aus den Umständen zweifelsfrei ergibt, dass bestimmte Anträge nicht weiterverfolgt werden sollen.
•  Werden Anträge, die im Beschwerdeverfahren zunächst gestellt und nachfolgend ausdrücklich oder konkludent zurückgenommen worden waren, später erneut eingereicht (wieder aufgegriffen), richtet sich ihre Zulassung nach den verfahrensrechtlichen Normen der VOBK, die für die Zulassung eines gänzlich neuen Antrags maßgeblich sind.

4. Hilfsantrag I (MV 13:30 Uhr) - Artikel 13 (1) VOBK

4.1 Der unabhängige Anspruch 1 von Hilfsantrag I (MV 13:30 Uhr) entspricht jenem des mit der Beschwerdebegründung der Patentinhaberin eingereichten Hilfsantrags I. Diesen ursprünglichen Hilfsantrag hat die Patentinhaberin im Verlauf des schriftlichen Verfahrens jedoch nicht weiterverfolgt. Vielmehr hat sie in ihrem Schriftsatz vom 14. Juni 2019 auf Seite 2, 4. Absatz erläutert:

"Um den Einwänden der Beschwerdekammer gerecht zu werden, werden neue Hilfsanträge I, II und XIII bis XV eingereicht, in welchen die Bedeutung der ,,zusammenhängenden Heizbereiche" des bisherigen Hauptantrags weiter spezifiziert werden. Der bisherige Hilfsantrag IV wird unverändert als neuer Hilfsantrag V weitergeführt. Die bisherigen Hilfsanträge I, und III bis X werden ferner als neue Hilfsanträge III, IV und VI bis XII weitergeführt, wobei die gegenüber dem Hauptantrag hinzugefügten Merkmale des Hilfsantrags I auch bei den neuen Hilfsanträgen III, IV und VI bis XII hinzugefügt worden sind."

4.2 Diese Ausführungen machen unmissverständlich deutlich, dass die Patentinhaberin ihre bisherigen Anträge durch die mit Schriftsatz vom 14. Juni 2019 eingereichten Anträge ersetzen wollte. Die Übernahme der Bezeichnung mit römischen Ziffern und die klare Erläuterung, welche der ehemaligen Anträge mit welchen Änderungen und welcher Bezifferung bzw. Rangstelle weitergeführt werden, lässt nur den Schluss zu, dass die übrigen vormaligen Hilfsanträge nicht weiterverfolgt werden sollten. Die mit der Beschwerdebegründung eingereichten Anträge sollten daher abgesehen von dem Hauptantrag und dem seinerzeitigen Hilfsantrag IV nicht bzw. nicht in unveränderter Fassung weiterverfolgt, sondern durch andere Anträge ersetzt werden.

T 0570/14 - Opposing only some claims

Key points

• In the Notice of opposition, only claims 1-4 and 8-19 were opposed (also in Box V of Form 2300E).
• The Board finds that claims 5-7 as granted are therefore not opposed and the request directed to only these claims is allowed without examination by the Board. "Since no opposition proceedings are open against these claims, the obligation under point 19 of G 9/91 is not applicable, with the Board having no power to examine these claims."
• Claims 5-7 as granted were dependent claims. The Enlarged Board in G9/91 held that "However, even if the opposition is explicitly directed only to the subject-matter of an independent claim of a European patent, subject-matters covered by claims which are depending on such an independent claim may also be examined as to patentability, [...]"
• The present Board adds that this "second sentence of the order of G 9/91 is not applicable to the present case because the claims intended to be opposed have been clearly specified."
• "Since in the present case the appellant/opponent expressly opposed claims 1 to 4 and 8 to 19, it follows that the above principle expressed by the Enlarged Board of Appeal does not give the Board the power to examine claims 5 to 7."

EPO T 0570/14 -  link

3. Extent of the opposition

The question of the extent of the opposition is important, since from a procedural point of view there would be no opposition proceedings open against non-opposed claims, with the consequence that the appellant/opponent, the Board and even the appellant/patent proprietor could not object to or amend these claims in any way.

The appellant/opponent considers that its statement in an accompanying letter to the notice of opposition filed on the same day and specifying that "John Gerard LEEMING, (...), hereby files Opposition to the above European Patent and requests that the patent be revoked in its entirety." was evidence enough that the patent as a whole was opposed. Also G 9/91 (order, second sentence) confirmed that as soon as an independent claim was opposed the dependent claims could be examined as well: "However, subject-matters of claims depending on an independent claim, which falls in opposition or appeal proceedings, may be examined as to their patentability even if they have not been explicitly opposed, provided their validity is prima facie in doubt on the basis of already available information."

T 0385/14 - Activated oocytes

Key points

• This is an opposition case. The OD had issued the decision 19.12.2013 finding the method of claim 1 unallowable as it involved stem cells derived from human embryonic stem cells.
• The CJEU decided on 18.12.2014 that "unfertilised human ovum whose division and further development have been stimulated by parthenogenesis does not constitute a 'human embryo'" (ECLI:EU:C:2014:2451).
• The Board: "In view of this ruling and the fact that a protocol to derive human parthenogenetic embryonic stem cells from parthenotes (activated oocytes) was made available by [WO 2003/046141] on 5 June 2003, the European Patent Office now considers that an objection under Article 53(a) EPC and Rule 28(1)(c) EPC [] cannot be raised in respect of an application pertaining to human pluripotent stem cells, [] if (i) the application has an effective date[] on or after 5 June 2003, and (ii) its technical teaching can be put into practice using human embryonic stem cells derived from parthenogenetically activated human oocytes."
• "The board sees no reason, in the context of the present case, to question [this] revised interpretation [by the  EPO].
• "Consequently, the method of claim 1 cannot be regarded as excluded from patentability under Article 53(a) EPC."
• As a comment: the "revised interpretation" appears to never have been published by the EPO. See e.g. T2365/13. I add that in T2365/13 actually had remitted the examination appeal without any substantive findings. 
• As a comment, the present Board appears to adopt the substantive position that activated oocytes are not "human embryos" in the sense of Rule 28 EPC without any examination of the technical merits of that position (I note that the opponent made no submissions on Rule 28). A question is whether the Board has a duty to consider the technical merits of the CJEU's position that oocytes are not "human embryos" in view of the reference to the EU Biotech directive in Rule 26(1) EPC, laid down by the Administrative Council, and the Board's task and independent responsibility under the EPC. 

EPO T 0385/14  link

Reasons for the Decision

Main request (claims as granted) - Articles 100(a) and 53(a) EPC and Rule 28(1)(c) EPC

1. In the decision under appeal, the opposition division, referring to decision G 2/06 of the Enlarged Board of Appeal (OJ EPO 2009, 306) and the Guidelines for Examination in the EPO, Part G, Chapter II-32.5.3(iii), found that the method of claim 1, as far as it involved the use of in vitro differentiated cardiomyocytes that were derived from a human embryonic stem cells, was excluded from patentability under Article 53(a) and Rule 28(c) EPC, because at the effective date such cells could be prepared exclusively by a method which necessarily involved the destruction of human embryos.

T 0273/16 - OD should have heard witness

Key points

• The opponent had invoked public prior use in the notice of opposition and had offered witnesses. The OD did not summon the witnesses, did not hear the witnesses, and rejected the opposition. 
• The Board recalls that according to established case law, the competent department of the EPO must, as a rule, grant a request of an opponent to hear a witness on an alleged public prior use, before deciding that the public prior use is not proven (CLBA III.B.2.6.4)
• The Board notes that the public prior use was properly substantiated in the notice of opposition. Moreover, the opponent repeatedly requested the hearing of the witnesses during the first instance proceedings. 
• The Board concludes that this a substantial procedural violation. The Board remits the case and orders reimbursement of the appeal fee. 

EPO  T 0273/16 -  link

3. Wesentlicher Verfahrensmangel,

Zurückverweisung an die Einspruchsabteilung,

Rückzahlung der Beschwerdegebühr

3.1 Die Beschwerdekammer wird gemäß Artikel 111 (1) EPÜ entweder im Rahmen der Zuständigkeit des Organs tätig, das die Entscheidung erlassen hat, oder sie verweist die Angelegenheit zur weiteren Entscheidung an dieses Organ zurück. Nach Artikel 11 VOBK verweist eine Kammer die Angelegenheit an die erste Instanz zurück, wenn das Verfahren vor der ersten Instanz wesentliche Mängel aufweist, es sei denn, dass besondere Gründe gegen die Zurückverweisung sprechen. Es steht somit im pflichtgemäßen Ermessen der Kammer, unter Würdigung aller Umstände des Einzelfalls darüber zu befinden, ob eine Sache zurückzuverweisen oder sachlich zu entscheiden ist.

T 0819/15 - Identity appellant

Key points

• This is a straightforward case where the appeal was filed in the wrong name. The Board allows a correction in the identity of the appellant in line with G1/12.
• " the notice of appeal has been filed by the representative of the opponent in the first-instance proceedings, under the same internal reference, referring to the same patent, the same patent proprietor and mentioning the correct date of the impugned decision []. Thus sufficient elements were provided to indicate that a mistake occurred in the naming of the appellant and that a correction of this name is allowable." 
• " The correction of the notice of appeal does not reflect a later change of mind as to whom the appellant should be, but on the contrary only expresses what was intended when filing the appeal". 
• The appeal is admissible (and successful, the patent is revoked). 

EPO T 0819/15 -  link

Reasons for the Decision

1. Admissibility of the appeal

1.1 It is undisputed that, within the two-month period under Article 108, first sentence, EPC, the representative of the opponent in the first-instance proceedings filed notice of appeal which did not contain the name and address of any of the parties to the first-instance proceedings. Rather the notice of appeal contained the name and address of another legal person.

With the grounds of appeal, the same representative requested correction of the appellant's name and address. The board's registrar dispatched a communication according to Rule 101(2) EPC and the representative filed a corrected notice of appeal within the specified period.

1.2 According to decision G 1/12, OJ EPO 2014, A114, such a deficiency can be corrected under Rule 101(2) EPC, if the true intention was to file on behalf of the legal person who should have filed the appeal. The board assesses the evidence supporting such "true intention" in accordance with the free evaluation of evidence.

1.3 The board notes that the notice of appeal has been filed by the representative of the opponent in the first-instance proceedings, under the same internal reference, referring to the same patent, the same patent proprietor and mentioning the correct date of the impugned decision (see also decision T 540/09, Reasons, point 1). Thus sufficient elements were provided to indicate that a mistake occurred in the naming of the appellant and that a correction of this name is allowable.

1.4 Upon this basis the board finds that the true appellant was identifiable on expiry of the two-month period under Article 108, first sentence, EPC. The true intention of the appellant was to file the notice of appeal in the name of Per Aarsleff A/S, the opponent in the proceedings before the opposition division. The correction of the notice of appeal does not reflect a later change of mind as to whom the appellant should be, but on the contrary only expresses what was intended when filing the appeal (see G 1/12, loc. cit. and Case Law of the Boards of Appeal, 9th edition 2019, V.A.2.5.2 a) and also V.A.2.4.1 a)).

1.5 These findings are confirmed by the facts that the actual appellant was the only party affected by the rejection of the opposition and that the file shows no indication that the appellant had or was seeking to transfer his status as opponent to a third party. In addition, the legal person named in the notice of appeal has, as far as the board is aware, no connection whatsoever to the opponent or the subject matter of this case, neither is there any similarity between the name of this legal person and that of the opponent.

1.6 In view thereof, the appeal is admissible.

T 2239/15 - MPEG standards public

Key points

• This is a slightly older decision (online 27.09.2019). The Boards concludes that D1 and D2 were public. D1 and D2 "are proposals submitted, in the framework of MPEG, by individuals affiliated with the appellants, for consideration by experts". MPEG is a working group composed of experts who are delegates accredited by national standards bodies. " A meeting [of MPEG] may, in particular, involve discussion of the contents of draft documents ("input documents", also referred to as "m" documents) which are made available to the participants on a password-protected MPEG-dedicated server, some time before the meeting. "
• "The 'Experts' in MPEG are drawn from a diverse, world-wide range of companies, research organisations and institutes."

• The question now is whether D1 and D2 became public by submitting it to the working group.
• The Board: " the whole set-up of the system puts particular emphasis on the need to keep input documents and the content of discussions rather confidential, it also acknowledges the necessity of some consultation with affiliated organisations for developing a technically sound standard that can be accepted by the relevant community. Consequently, the MPEG set-up did not guarantee or even envisage absolute confidentiality within the relatively small group present at meetings, but did, in fact, envisage a wider discussion among experts in the elaboration of standards fit for purpose."
• "Based on the evidence submitted []it cannot be concluded that absolute confidentiality existed among the members of the MPEG working group responsible for drawing up and discussing D1 and D2."
• "Given the heterogeneous nature of WG 11, the lack of any explicit, signed confidentiality undertaking and the consensus-building nature of its work, including the actual involvement of an indefinite number of experts from National Standards Bodies, it can be concluded that the authors, by submitting documents D1 and D2 to the members of WG 11, made their contents available to the public, at the latest by the end of their respective MPEG meetings."
• The Board also notes various complaints of applicants to the DQMS directorate of the EPO trying the EPO to convince to not cite the standard documents in search reports. The director of DQMS had written in one letter that such documents "should not be consulted in searches or cited as prior art". The appellant claims the protection of legitimate expectations. The Board notes that this principle applies only to procedural law and "has no bearing on substantive law" and "cannot render patentable what otherwise would not be". 

EPO Headnote

• A disclosure is regarded as made available to the public if, at the relevant date, it was possible for members of the public to gain knowledge of its contents and there was no bar of confidentiality restricting the use or dissemination of such knowledge (T 877/90).
• In the absence of an explicit confidentiality agreement, a bar of confidentiality cannot be seen to have been in place, in the present case. In view of the collaborative nature of the development process and the consensus-building procedure inherent to MPEG, confidentiality could not be guaranteed.
• The evidence points to a system designed to guarantee a certain "privacy" of its data while at the same time being sufficiently pragmatic and flexible to allow consultation with other parties in order for it satisfactorily to fulfil its mission.

EPO T 2239/15 -  link

Reasons for the Decision

[...]

Relevance of documents D1 and D2

2. The contents of both documents are highly relevant to the patentability of the claimed subject-matter. Reference is made in this respect to Figures 1 and 2 and to sections 2 and 3 in D1; and to Figures 1 and 2 and section 2 in D2. All in all, the Board concurs with the view of the Examining Division, as developed in section 3 of the impugned decision, that the subject-matter of claims 1, 18 and 19 is disclosed in both documents.

3. The appellants did not challenge the findings of the Examining Division with regard to the disclosures of D1 and D2, but only referred to their submissions in first instance, to the effect that they were not publicly available.

About MPEG

4. The question of the public availability of documents D1 and D2 is directly linked to the procedures of MPEG (Moving Picture Coding Experts Group ISO/IEC JTC1/SC 29/WG 11) when elaborating new standards for the encoded representation of moving pictures and audio signals. In addition to the facts established by the Examining Division, the Board's reasoning is based upon the following factual background.

5. MPEG operates in the framework of the joint ISO/IEC Technical Committee (JTC 1) on Information Technology. It is, formally, Working Group 11 (WG 11) of Subcommittee 29 (SC 29) of JTC 1. It is composed of experts, i.e. delegates accredited by national standards bodies, who have been selected to participate in the regular meetings organised by MPEG (cf. A35, pages 7, 10). The conditions for becoming member of a national delegation depend on the national bodies.

6. In the course of a meeting, which normally lasts for a full working week, the participants come together to discuss the development of new standards, their contents, and possible improvements or corrections. It may take several meetings, before a proposal is considered ripe for publication as a new International Standard (IS). A meeting may, in particular, involve discussion of the contents of draft documents ("input documents", also referred to as "m" documents) which are made available to the participants on a password-protected MPEG-dedicated server, some time before the meeting. Discussions may require the consultation of other experts, who have more specific knowledge of the topics addressed than the delegates themselves have, but who are not actually present at the meetings. Each meeting ends with a closing, plenary session, at which the committee reviews and reports on the week's progress and approves resolutions and documents ("output documents", also referred to as "w" documents) (cf. A23, slides 30, 34, 38).

T 0131/15 - Scope of protection

Key points

• This opposition appeal is about whether amended claims involve an extension of protection (Article 123(3) EPC).
• " Thus, in the [amended claims], the two light paths are offset by a small angle, and if the "opposite direction" defined in claim 1 of the granted patent were interpreted in a precise geometrical sense (i.e. strictly antiparallel) [i.e. without any offset], there could be no doubt that claim 1 of the present request would introduce embodiments not falling within the claim. " 
• "Adopting the narrow definition of "opposite direction", as advocated by the opponent, would therefore have the effect that none of the disclosed embodiments [of the description] would fall within the scope of protection of the claim." 
• However, " in determining whether the requirements of Article 123(3) EPC 1973 are met, it is not sufficient to look only at the claims in isolation" (citing G2/88)
• " In the present case, a definition of "in the opposite direction" can be derived from the description and drawings (see paragraph [0021]), according to which this expression means that the transmitted and received beams follow substantially the same path, with a small deviation to take account of the physical sizes of the transmitter and receiver. " 
• " Since this definition has been incorporated into [amended claim 1], it follows that the scope of protection conferred by the claim has not been extended, and the requirements of Article 123(3) EPC 1973 are met." 
• A further point is whether to remit the case. The Board does not remit the case. " Given the age of the case (filing date: 13 December 2002  [decision 10.10.2019]) and the requirement of legal certainty, both for the parties and the public, a further delay would not be appropriate." 

Note 29.03.2021: T 1127/16 stated that: “such a comprehensive and intricate test as suggested in T 131/15 could arguably place an undue burden on third parties when trying to establish the "true" (i.e. intended) scope of protection conferred by a granted patent,”

EPO T 0131/15 -  link

EPO  Headnote

Where an expression in a granted claim, taken literally and in isolation, would have the effect of excluding all of the disclosed embodiments from the scope of protection, but where a definition of the expression may be derived from the patent itself which would locate (at least some of) the disclosed embodiments within the ambit of the claim, and provided this definition is not manifestly unreasonable, having regard to the normal meaning of the words used in the expression, then in judging compliance with the requirements of Article 123(3) EPC, the scope of protection should normally be considered to include at least that which would fall within the terms of the claim understood according to this definition.

5. Article 123(3) EPC 1973

5.1 Article 123(3) EPC 1973 states the following:

"The claims of the European patent may not be amended during opposition proceedings in such a way as to extend the protection conferred."

5.2 Claim 1 of the granted patent comprises the following feature (emphasis added by the Board):

"the first receiver (6;7) being arranged to receive light from the first transmitter (4) which has been reflected by the banknote and which is also travelling in said sensing plane (P2), but in the opposite direction from the light emitted by the transmitter (4)."

5.3 Claim 1 of the present request defines the following (emphasis added by the Board):

"the first optical receiver (6; 7) being adjacent the first optical transmitter (4)"; and

"the first receiver (6; 7) being arranged to receive light from the first transmitter (4) which has been reflected by the banknote and which is also travelling in said sensing plane (P2) in substantially the same path, but in the opposite direction from the light emitted by the transmitter (4), the small path difference being as a result of the fact that the physical sizes of the transmitter and receivers cause a small angle to be subtended between the light paths at the banknote."

5.4 Thus, in the present request, the two light paths are offset by a small angle, and if the "opposite direction" defined in claim 1 of the granted patent were interpreted in a precise geometrical sense (i.e. strictly antiparallel), there could be no doubt that claim 1 of the present request would introduce embodiments not falling within the claim. This would also be the case even if the scope of the granted claim were considered to extend to, but not further than, the sort of small deviations arising, for example, from manufacturing tolerances.

T 0317/19 - Debit order can be corrected

Key points

• The Notice of appeal was filed mentioning in the Form 1038 the correct appeal fee indicated but the box for "Method of payment" did not indicate a method but stated "Not specified" (I recall that the EPO online filing software allows for this and only gives a very small warning symbol). 
• The Board allows the request for correction under  Rule 139. 
• “In its decision G 1/12, the EBA has already affirmed that a correction of errors under Rule 139, first sentence, EPC in documents filed with the EPO generally applies.”
• “The board concludes that the requirements for the correction requested are met, and thus that the correction is to be allowed. As a consequence, the appeal is retroactively deemed to have been filed, the correction under Rule 139 EPC having effect ex tunc.”
• The Board here departs from T170/83 r.8 and GL A-X, 7.1.1 which state that “Payment is a matter of fact whereby a certain amount is transferred to and put at the disposal of the EPO. It is not, therefore, a procedural declaration which may be corrected pursuant to Rule 139. The same applies to debit orders.”
• The Board in T170/83 had held that “the running of deposit accounts falls outside the grant or opposition procedures it is not governed by Rule 88, lst sentence, EPC [1973 = Rule 139 EPC 2000]”  in order to allow a debit order in Dutch. I think that the decision of the current Board makes more sense and implies that the ADA is not outside the general principles of the EPC (see also here) although the present Board does not expressly say so. 
• As a comment, it is a bit of pity that the present Board does not engage with T170/83 which in my view is the pertinent case law. 
• Note 09.01.2020: today J 8/19 was issued with the same holding that debit orders can be corrected under Rule 139. The reasoning is verbatim the same as in T317/19.

EPO T 0317/19 - link

Summary of Facts and Submissions

I. The appeal lies against the decision of the examining division posted on 21 September 2018 refusing European patent application No. 11 760 353.0.

II. On 21 November 2018, the appellant filed a notice of appeal which contained the following sentence: "We are paying the appeal fee from our deposit account no. 28050721 by way of the attached fee sheet". It was accompanied by a filled out Form 1038E (titled "Letter accompanying subsequently filed items"). This form indicated in the "Fees" box the appeal fee ("011 Appeal fee for an appeal filed by an entity other than those referred to in Rule 6(4) and (5) EPC") and in the box for "Amount to be paid" the amount of EUR 2 255. However, the box for "Method of payment" did not indicate a method but stated "Not specified". Consequently, the debit order was not carried out. The balance of the deposit account at this date was well above the amount of the appeal fee.

III. In a communication dated 21 January 2019, the examining division informed the appellant that, pursuant to point 5.1.3 of the "Arrangements for deposit accounts" (ADA), the EPO was only accepting debit orders submitted in electronically processable XML format and that debit orders submitted in any other way were considered invalid and therefore not to be carried out.

IV. With a letter dated 30 January 2019, the appellant submitted that it was paying the appeal fee again from its professional representative's deposit account by way of an attached fee sheet. Form 1038E electronically filed on 30 January 2019 together with the above letter contained correctly filled out boxes for the "Amount to be paid" and for the "Method of payment" indicating "Debit from deposit account" as well as the deposit account number and the account holder. As a consequence, the amount of EUR 2 255 was debited from the above account on the same day.

V. In that same letter, the appellant requested a correction under Rule 139 EPC of Form 1038E filed on 21 November 2018 to specify the representative's EPO deposit account in the method of payment box. As an auxiliary measure, the appellant requested re-establishment of rights under Article 122 EPC and paid the corresponding fee.

VI. Oral proceedings were held before the board on 22 October 2019. The appellant's final requests were that the request for correction under Rule 139 EPC be allowed and that the appeal be deemed to have been filed.

VII. The appellant's arguments where relevant to the present decision may be summarised as follows:

T 1299/15 - Plausibility in mechanical field

Key points

• A mechanical engineering case about sufficiency of disclosure. The claim requires (in translation) an adjustable device with a helical support that can be extended or compressed in the radial direction. The patent does not give any example or detailed information about this device.
• The Board finds that the burden of proof has been shifted to the patentee. "Da in der Patentschrift aber kein Ausführungsbeispiel für die Verstelleinrichtung beschrieben ist, konnte die [opponent] den Nachweis der mangelnden Ausführbarkeit nicht anhand eines beschriebenen Ausführungsbeispiels führen, sondern nur mit Plausibilitätsüberlegungen stützen, was sie (siehe Punkt VIII.) auch getan hat. Damit ist die Beweislast zum Nachweis des Gegenteils auf die Patentinhaberin [...] übergegangen."
• As a comment, I'm not sure if this Board 3.2.05 uses "plausibility" in the same way as it is used in the case law about "plausibility"  of medical use claims. In the case law about medical uses, the question is rather whether the application as filed makes it plausible that the claimed molecule indeed is effective in treating the disease at issue.

EPO T 1299/15 -  link

1.7 Die Beschwerdeführerin meint, dass die Verwirklichung einer solchen Verstelleinrichtung das normale fach­männische Können übersteige, bzw. dass der Fachmann dazu erfinderisch tätig werden müsste.

Nach ständiger Rechtsprechung trägt die Einsprechen­de, hier Beschwerdeführerin die Beweislast für den Nachweis einer behaupteten mangelnden Ausführbarkeit. Da in der Patentschrift aber kein Ausführungsbeispiel für die Verstelleinrichtung beschrieben ist, konnte die Beschwerdeführerin den Nachweis der mangelnden Ausführbarkeit nicht anhand eines beschriebenen Ausführungsbeispiels führen, sondern nur mit Plausibilitätsüberlegungen stützen, was sie (siehe Punkt VIII.) auch getan hat. Damit ist die Beweislast zum Nachweis des Gegenteils auf die Patentinhaberin, hier Beschwerdegegnerin übergegangen.

[...]

1.9 Die Kammer kommt in Folge der Ausführungen der Parteien zum Schluss, dass die Verwirklichung einer Verstellein­richtung, mit welcher der spiralförmige Träger in radialer Richtung auseinander- oder zusammenfahrbar ist, wegen der dabei entstehenden Bewegungen der Windungen (siehe Punkt 1.5.2) auch für einen Maschinen­bau­ingenieur äußerst komplex ist.

Im Streit­patent gibt es aber keinerlei Anhaltspunkte, wie die verschie­denen Anforderungen an die Verstell­einrichtung (Anzahl der Arme und Reibungsproblematik bezüg­lich der Formgenauigkeit der Spiralform des Trägers bzw. bezüg­lich der Einstellbarkeit des Trägers, damit die Dioden auf den jeweils benachbarten Bereichen in Längsrichtung des Trägers betrachtet wechselweise umfänglich gegen­ein­an­der versetzt sind) zu lösen sind.

Es wurde seitens der Beschwerdegegnerin auch nicht vor­getragen bzw. belegt, dass derartige Verstellein­rich­tun­gen dem Fachmann bereits als solche bekannt wären.

Es mag durchaus sein, dass der Fachmann für die einzelnen in Punkt 1.6 beschriebenen Probleme Lösungen findet, wie es die Beschwerdegegnerin ausgeführt hat (siehe Punkt 1.8). Die Kammer hat allerdings große Zweifel, ob ein Maschinenbauingenieur eine Verstellein­richtung schaffen könnte, die keines der genannten Probleme aufweist, ohne erfinderisch tätig zu werden.

Da die Beweislast auf der Beschwerdegegnerin übergegan­gen ist, gehen die genannten Zweifel zu ihren Lasten.