T 1224/24 - When the EPO forgets the drawings and the proprietor notices in time

Key points

• The appeal lies from the decision of the examining division to grant a European patent on the basis of the application documents indicated in the communication under Rule 71(3) EPC dated 13 December 2023.
• The appeal was filed on 03.07.2024. The DTG was dated 03.05.2024. The mention of the grant was 29.05.2024.
• The Board: "The appeal is admissible since the appellant is adversely affected by the omission of 48 out of 52 drawings in the decision to grant. The granted version of the patent corresponds neither to the text submitted by the applicant, nor to a text agreed upon or deemed approved by the applicant." 
• "A review of the file history reveals that while several versions of the description and claims were submitted by the applicant on 16 September 2021, 2 August 2022, 10 August 2022, and 13 September 2023, the figures or drawing sheets were never amended or partially withdrawn. This indicates that the drawings forming part of the applicant's request for grant were those filed with the request for entry into the European phase-namely, the original drawing sheets 1/52, 2/52, 4/52 to 27/52, 29/52 to 36/52, 38/52, 39/52, and 41/52 to 52/52, along with the amended drawing sheets 3/52, 28/52, 37/52, and 40/52, which were submitted on 27 September 2020 upon entry into the European phase. All these drawings were correctly published in the A1 application."
• "The communication under Rule 71(3) EPC dated 13 December 2023 proposed amendments to the description and to claim 1 but did not indicate that the text intended for grant differed from the applicant's request regarding the drawings. Furthermore, no prior communication from the examining division proposed amendments to the drawings filed by the applicant, or contained any comments on them. All communications stated that, for the figures, the examination was carried out on the amended drawing sheets 1/4-4/4 as filed upon entry into the regional phase before the EPO. However, the file contains no explicit approval from the applicant for the removal of the remaining 48 originally filed drawings. It appears that neither the members of the examining division nor the appellant realized that the original drawing sheets 1/52, 2/52, 4/52 to 27/52, 29/52 to 36/52, 38/52, 39/52 and 41/52 to 52/52 were omitted and only the amended drawing sheets 3/52, 28/52, 37/52 - renumbered 1/4- 4/4 - were considered by the examining division."
• " In accordance with T 1003/19 (catchword and point 2.4 of the reasons), T 1823/23 (point 1.9 of the reasons), T 2081/16 (point 1.4 of the reasons), the Board considers that the legal consequence set out in Rule 71(5) EPC can only apply if the communication under Rule 71(3) EPC reflects the examining division's intention regarding the application documents on which the patent is to be granted."
• "Under normal circumstances, it can be assumed that the text referred to in a communication under Rule 71(3) EPC reflects the examining division's intention regarding the text on which the patent is to be granted. However, this is not the case when objective elements in the communication and/or in the text annexed to the it, such as significant discrepancies between the communication and the "Druckexemplar", or within the "Druckexemplar" itself, clearly indicate that the text does not correspond to the examining division's intention (see T 1003/19, points 2.4.3 and 2.4.4)."
• "  the Board concludes in the present case that neither the documents referred to in Form 2004C nor the "Druckexemplar" reflected the text in which the examining division intended to grant the patent. Hence the text communicated to the applicant with the communication of 13 December 2023 did not correspond to the text intended for grant under Rule 71(3) EPC."
• " If the applicant is not communicated the text intended for grant under Rule 71(3) EPC, the legal consequence outlined in Rule 71(5) EPC does not apply. Therefore, the applicant's subsequent filing of translations and payment of fees for grant and publishing do not imply approval of the communicated text."
• " A decision to grant under Article 97(1) EPC, based on a text that was neither submitted nor agreed upon by the applicant, as is this case (see points 1.1- 1.11 above), does not comply with Article 113(2) EPC. Therefore, the decision under appeal is to be set aside."
• " the board considers that the present decision does not deviate from G 1/10, which determined that Rule 140 EPC cannot be used to correct the text of a patent, but did not concern the interpretation of Rule 71 (5) EPC. Therefore, Article 21 RPBA does not apply. The Board fully agrees with and refers to the reasoning in T 2081/16 (point 3) and T 1003/19 (point 4)."

EPO 

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

T 0803/17 - Appellate review of admissibility of opposition

Key points

•  The Notice of opposition was filed stating the name of the opponent without the legal form (without mentioning Ltd.). A request for correction is filed and allowed by the OD, and the OD takes a separate interlocutory decision that the opposition is admissible (link). The admissibility of the opposition is no further discussed in the final decision rejecting the opposition.
• The interlocutory decision is issued as a "Communication pursuant to Article 113" and is not signed and only stamped "for the opposition division".
• The objection of the proprietor is that there are two companies at the given address, namely Calibre Search Ltd. and Calibre Search (Manchester) Ltd. and that it would be unclear which one was the opponent.
• The interlocutory decision did not allow a separate appeal, such that it can be appealed with the final decision (Article 106(2) EPC).
• This case also illustrates that a document not being labelled as a decision can still be a decision in the sense of Article 106 EPC.
• The OD rejects the opposition. The opponent appeals (against the final decision).
• The respondent disputes the admissibility of the opposition.
• The opponent argues that the respondent can not object to the admissibility of the opposition.
• The Board: "In any case, as the Opposition Division did not allow a separate appeal under Article 106(2) EPC on the decision on the admissibility of the opposition contained in the communication dated 15 April 2016, that decision could only be appealed together with the Opposition Division's final decision. Hence, [...] it follows from this link that the Opposition Division's decision on the admissibility of the opposition and the underlying reasoning is to be treated as an issue which is part of the Opposition Division's final decision."
• The prohibition of information in peius does not apply because it does not apply to the individual grounds for the decision. 
• The Board: "Under the principle of the prohibition of reformatio in peius it is unlawful to worsen the position of the appellant because of its own appeal. The principle of the prohibition of reformatio in peius does, however, not apply separately to each point or issue decided (Case Law of the Boards of Appeal, 10th edition 2022, V.A.3.1.1). The yardstick for determining whether the position of an appellant, because of its own appeal, is worsened in a way which is incompatible with the principle of the prohibition of reformatio in peius is the order of the decision under appeal, in particular the order's legal effect on the appellant (see T 1437/15, Reasons 3.2.2, with reference to G 9/92, Reasons 14 and 16)."
• " If an opposition is considered inadmissible in the appeal proceedings, an appellant whose opposition was rejected in the decision under appeal as unallowable would not be in a worse position than if it had not appealed, as in both cases the patent would be maintained as granted. The legal reasons leading to this result, including whether the opposition is rejected as inadmissible or unallowable, do not fall within the scope of the principle of the prohibition of reformatio in peius (see T 384/08, Reasons 2 and 3, first sentence)."
• "In the present case, the admissibility of the opposition can therefore be considered"
• I note that the Board does not have to decide on the question of whether, if an interlocutory decision holding the opposition admissible and allowing a separate appeal, is not appealed by the patentee, the patentee can bring up the admissibility question in an appeal procedure regarding the final decision. 

EPO 

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

T 0660/16 - Review of case-management measure

Key points

• "On appeal, the patent proprietor argued that the opposition division should not have heard the witness. " 
• "Opponent 1 argued that the opposition division's decision to hear the witness could not be contested." 
• "Contrary to the view of opponent 1, the board has to examine the patent proprietor's request to review the correctness of this part of the opposition division's decision. An order to take evidence is neither an appealable decision under Article 106(1) EPC nor an interlocutory decision allowing a separate appeal within the meaning of Article 106(2) EPC. Instead, it is a case-management measure that precedes a substantive decision and cannot be reviewed as long as the proceedings are still pending. The review may occur once a substantive decision (in this case the opposition division's interlocutory decision referred to at point I. above) is issued (Case Law of the Boards of Appeal of the EPO, 9th edition, 2019, Chapter V.A.2.2.2 b)(xiii))." 
• That paragraph in the CLBA cites just one decision: T 1954/14  (post). That case was an appeal against a summons by the OD to hear a witness. The appeal was rejected as inadmissible. In my view, that is not quite the same as a decision that the decision to summon a witness, can be challenged in appeal.
• Article 106(2) indeed provides that "a decision which does not terminate proceedings as regards one of the parties can (...) be appealed together with the final decision (...)" (omitting the part about leave to appeal), but I'm not sure if this covers a case management "measure" as such (note, the Board does not say "case management decision"). On the other hand, where a case management decision/order/measure results in a substantial procedural violation, this may be a ground for setting aside the substantive decision. 
• Assuming for the moment that the Board meant to review the first instance proceedings for an alleged substantial procedural violation, a further issue is that there must both have been a procedural error of the OD, and an adverse effect of that error for the patentee. Harmless errors do not amount to a substantial procedural violation. I'm not sure if hearing a witness as such can adversely affect a party, provided that the parties are given enough time to comment on and rebut the evidence given by the witness.
• The Board also reviewed the substance of the factual findings by the OD regarding the public prior use.
• As a separate issue, if the order to take evidence was an interlocutory decision not including a leave for separate appeal, the present case illustrates that the phrase  "only be appealed together with the final decision" in Art.106(2) in fact may mean "may be appealed with the next interlocutory decision that includes a leave to appeal" - in the present case, the proprietor should indeed not have waited for the final decision of the OD to maintain the patent in amended form after the payment of the fee and filing of the translated amended claims of Rule 82. 
• On inventive step over the public prior use: "the product of the public prior use would have been available to the skilled person in May 2006. There is nothing that would prevent the skilled person from using a real product, with all its features established above, as the closest prior art."
• "The board fails to see an inventive step in adjusting the moisture content to a range that is conventional in the field of manufacturing pellets and that is not associated with a technical effect."
• 
  

EPO T 0660/16 

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

T 2377/19 - Comparable to a clearly inadmissible appeal

 Key points

• In this opposition appeal, a Notice of appeal was filed including a request for oral proceedings, but no Statement of grounds.
• Similarly as in T 1573/20, the Board finds that " There was no contentious matter on which the appellant had to be heard according to Article 113(1) EPC. Oral proceedings would thus have had no legitimate aim. The situation is therefore comparable to the "clearly inadmissible appeals" considered in decisions G 1/97 and G 2/19. (cf. T 1573/20, point 5 of the reasons). Thus no oral proceedings had to be held." 
• However, as an addition to my blog post about T 1573/20, I would like to note that the Board only says that the situation is " comparable to the "clearly inadmissible appeals" considered in decisions G 1/97 and G 2/19". The Board does not say if the appeal is " clearly inadmissible". So, possibly, oral proceedings can also be dispensed with, even if requested, if the appeal is comparable to a clearly inadmissible appeal.
• It may be asked until when a divisional application can be filed, if the appeal is against a refusal decision (as in T 1573/20), in fact a divisional application was filed in the underlying case in that appeal, pending as EP3685667. The divisional application was filed on 12.03.2020. In that case, the Notice of appeal was filed on 07.01.2020, the decision to refuse was issued 07.11.2019. The reason is that the Board said in G 2/19 that clearly inadmissible appeals, at least of the type at issue in the appeal leading to the referral of G 2/19, have no suspensive effect. The possibility to file divisional applications during the appeal period is not depending on the suspension effect of appeals (G1/09), I am not sure if G 2/19 modifies the holding of J23/13 r.8 that the divisional application can be filed until the expiry of the period for filing the Statement of grounds. The reasoning in J23/13 r 8.3 is not explicitly restricted to appeals against refusals but probable must be understood in that way in view of G2/19 dealing with appeals against grant decisions.
• Note that e.g. recent decision T0574/21 applies the reasoning that the “the request for oral proceedings is deemed withdrawn or superseded by the subsequent failure to react to the Board's communication [regarding the missing Statement of grounds]” in line with T1042/07.

T 2377/19 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t192377eu1.html

Reasons for the Decision

1. No written statement of grounds of appeal was filed within the time limit provided by Article 108, third sentence, EPC in conjunction with Rule 126(2) EPC. In addition, neither the notice of appeal nor any other document filed contains anything that could be regarded as a statement of grounds pursuant to Article 108 EPC and Rule 99(2) EPC.

2. Request for oral proceedings

2.1 The appellant requested oral proceedings should their request not be granted, i.e. in the case that the appeal would be dismissed. In the absence of any submission that could be regarded as a statement of grounds of appeal the issue of dismissal of the appeal was not a subject of the appeal proceedings. There was no request for oral proceedings in the case of a decision concerning the admissibility of the appeal.

2.2 Despite the absolute nature of the right to oral proceedings under Article 116 EPC, the board concluded that oral proceedings were not required in the present circumstances. The board notes that the appellant did not file any observations in reply to the communication of 17 January 2020. In particular, the appellant did not contest the finding there that no statement of grounds of appeal had been received. Therefore, holding oral proceedings would have served no other purpose than confirming the (undisputed) preliminary finding that no statement of grounds of appeal had been filed, and announcing the decision afterwards. There was no contentious matter on which the appellant had to be heard according to Article 113(1) EPC. Oral proceedings would thus have had no legitimate aim. The situation is therefore comparable to the "clearly inadmissible appeals" considered in decisions G 1/97 and G 2/19. (cf. T 1573/20, point 5 of the reasons). Thus no oral proceedings had to be held.

3. Therefore, the appeal has to be rejected as inadmissible (Rule 101(1) EPC).

Order

For these reasons it is decided that:

The appeal is rejected as inadmissible.

T 2441/18 - Search fee refund appeal

 Key points

• The applicant filed an appeal against the interlocutory decision of the Examining Division to not refund three paid additional search fees. The decision was made separately appealable by the Examining Divisional. The application was a Euro-direct application, not a Euro-PCT application.
• The Board finds that claim 1 is novel over D1 and the other claims are novel over D1 as well because of the same feature that is not taught in D1.
• The claims therefore have unity of invention: “Somit kann die einzige allgemeine erfinderische Idee, die der Anmeldung zugrunde liegt, nicht als durch den zitierten Stand der Technik vorweggenommen angesehen werden und die Einheitlichkeit (Artikel 82 EPÜ) des beanspruchten Gegenstands liegt vor.”
• The Examining Division has taken no action during the course of the appeal (three years), in line with GL E-X,3 noting that: “The [first instance] proceedings must be suspended until the decision has become final”
• There is no refund of the appeal fee.

T 2441/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t182441du1.html

Sachverhalt und Anträge

I. Die Beschwerde der Patentanmelderin (Beschwerdeführerin) richtet sich gegen die Zwischenentscheidung der Prüfungsabteilung, dem Antrag nach Regel 64(2) EPÜ, drei zusätzlich entrichtete Recherchegebühren nach einem Einwand nach Art. 82 EPÜ zurückzuerstatten, nicht stattzugeben.

II. Die Patentanmeldung ist auf ein Galvanisierverfahren gerichtet.

Anspruch 1 lautet:

"Verfahren zum Herstellen eines gehärteten Formteils mit den Schritten: [...]

IV. Die Rechercheabteilung erhob einen Einwand wegen mangelnder Einheitlichkeit der Anmeldung (Artikel 82 EPÜ) und lud die Anmelderin ein, 5 weitere Recherchegebühren zu bezahlen.

Sie argumentierte, der Oberbegriff des Anspruchs 1 sei in der D1, Abs. [0029]-[0031] offenbart und der kennzeichnende Teil ginge implizit aus Abs. [0032] hervor. Damit wäre der Gegenstand des Anspruchs 1 nicht neu. Die abhängigen Ansprüche würden 6 Gruppen bilden, die 6 potentielle Erfindungen repräsentierten. Die Vorrichtungsansprüche wurden analog zu den Verfahrensansprüchen aufgeteilt und den entsprechenden Gruppen zugeordnet.

V. Die Beschwerdeführerin bezahlte daraufhin unter Protest drei zusätzliche Recherchegebühren.

VI. Nach einem Antrag nach Regel 64(2) EPÜ, drei Recherchegebühren zu erstatten, bestätigte die Prüfungsabteilung die Auffassung der Rechercheabteilung und erließ die angefochtene Zwischenentscheidung.

G 2/19 - Manifestly / clearly inadmissible

Key points

• G 2/19 is available in English since some time (OJ 2020 A87).

Exceptions to the right to oral proceeding

• The Enlarged Board: "Given the variety in the scope of application of Article 116(1), first sentence, EPC, its nature cannot be considered to be, as it were, absolute. The legislator clearly intended it to serve as a basic rule governing the typical cases facing the departments of the European Patent Office in their everyday practice. However, it cannot be ruled out that exceptions to this basic rule may be made where – as in the case underlying this referral – its application would make no sense in the specific circumstances of an individual case." 
• “Article 116(1), first sentence, EPC is to be interpreted narrowly, such that a purely formal position as de facto party to appeal proceedings is not enough to confer a right to require that oral proceedings be held if the person requesting them has no standing to appeal, because they were not a party to the foregoing proceedings in the legal sense, or if – as is also the case here – the grievance they invoke is not appealable. Instead, a board called on to examine their request may immediately refuse it as inadmissible in writing and, as the Enlarged Board put it in G 1/97 (see point 6, last paragraph, of the Reasons), without further procedural formalities.”
• " the boards are not bound under Article 116(1), first sentence, EPC to grant a request for oral proceedings where the appeal is clearly inadmissible."

Exceptions to the suspensive effect of appeals

• On cases wherein an appeal has no suspension effect (which is relevant under Rule 36 EPC for the filing of divisional applications, although the Board does not expressly say so):
• “A means of redress is clearly inadmissible where, for example, it is initiated by a person who has no standing to do so (here: a third party within the meaning of Article 115 EPC) or with the aim of seeking relief for a grievance which the European Patent Convention not only does not recognise but in fact excludes as a subject of appeal under Article 106(1) EPC (here: an alleged lack of clarity to be removed from the patent claims for the purposes of Article 84 EPC).” 
• “Moreover, it logically follows that the initiation of a means of redress which, owing to such circumstances, is clearly inadmissible can have no suspensive effect.” 
• “Article 106(1), second sentence, EPC provides generally that appeals have suspensive effect but, like Article 116(1), first sentence, EPC, has basic character (see B.II.2 above). It is tailored to the standard case of an appeal filed by a party to the preceding proceedings who was adversely affected by a decision issued in them and who is seeking redress for a grievance which is appealable as such. There is, however, no legitimate interest in also lending suspensive effect to a means of redress, such as an appeal filed by a third party against unclear claims, which has no basis in the European Patent Convention and which is therefore clearly inadmissible. Accordingly, an exception to the general rule in Article 106(1), second sentence, EPC must be made.”
• Although the appeal at issue is ‘clearly inadmissible’, according to the Enlarged Board  “the criterion of a "manifestly inadmissible appeal" introduces an imprecise legal notion not taken from the European Patent Convention”.
• “The first question [as formulated by the referring Board], by contrast, amounts to a generalisation applying to all cases in which an appeal appears to be "manifestly inadmissible". Compared with what specifically needs to be clarified for the purposes of the underlying case, an answer to this question is only of extraneous and rather academic interest. That is insufficient to find the question admissible, especially as its reference to the criterion of a "manifestly inadmissible appeal" introduces an imprecise legal notion not taken from the European Patent Convention, which, therefore, does not offer a more detailed basis for defining it more precisely. Nor does the interlocutory decision define it in more detail.”
• I note that “it is apparent from the referring board's reasons for its interlocutory decision that it reards the request for a legal remedy initiated by J. as manifestly –that is, clearly – inadmissible”.

On Third Party Observervations

• On Article 115: “a third party is protected only in so far as the department of the European Patent Office concerned is obliged to take note of its observations”.

On holding oral proceedings

• " At first glance, there may well appear to be a connection between observing or infringing the right to be heard and the geographical location and timing of a judicial hearing. Parties seeking justice may perceive the choice of an entirely unusual place or date as an unwillingness to address their concerns and so regard it as adversely affecting them in the exercise of their rights to a degree that is unacceptable for legal purposes."
• " At best, such a matter [the place of oral proceedings] can be reviewed in appeal proceedings under Article 106 ff EPC in the context of whether the boards' move to Haar is liable to impair the protected or protectable subjective standing of a party to proceedings to exercise its rights before them."
• " Users of the European Patent Organisation's services can legitimately expect that the European Patent Office's departments will not perform acts at whatever other place they choose."

EPO G 2/19 - link OJ 2020 A87)

Reasons for the decision

A. Admissibility

I. Article 112(1)(a) EPC provides that in order to ensure uniform application of the law or if an important point of law arises, a board of appeal must, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the Enlarged Board of Appeal if it considers that a decision is required for the above purposes.

An additional, unwritten prerequisite for admissibility of a referral is that appeal proceedings initiated by an admissible appeal are pending before the referring board, unless the referral concerns some aspect of the very matter of admissibility. The point of that exception is that the boards would otherwise have no way of referring questions of fundamental importance for the admissibility of an appeal to the Enlarged Board (G 2/04, OJ EPO 2005, 549, point 1.2 of the Reasons; G 1/12, OJ EPO 2014, A114, point 9 of the Reasons).

II. Under Article 112(1)(a) EPC, it is primarily up to the referring board to examine whether the admissibility requirements are met (see G 1/14, point 2 of the Reasons).

T 0767/18 - Appeal fee only

Key points

• In this examination appeal case, only a debit order for the appeal fee was filed (in the proper format). The Board decides that the debit order is not an implicit notice of appeal. 
• The Board: "It follows from the above that the debit order in the present case does not constitute the notice of appeal required to institute appeal proceedings. Nor is there any other document on file which contains anything that could be regarded as notice of appeal. Nor has the applicant submitted that notice of appeal was filed in the present case. The board therefore concludes that the decision of the examining division has not been appealed at all."
• The order is that: "For these reasons it is decided that: 1. No appeal has been filed. 2. The reimbursement of the fee for appeal is ordered." 
• As a comment, oral proceedings had not been requested. Note that the Board furthermore does not decide that the appeal is deemed not to have been filed.
• The debit order for the appeal was filed by an in house professional representative.

EPO T 0767/18 - link

Summary of Facts and Submissions

I. In its decision posted on 27 November 2017, the examining division refused European patent application No. 13 716 288.9 pursuant to Article 97(2) EPC.

II. On 6 February 2018, the appeal fee was paid by means of an electronically filed debit form. Said form cited the above application number, and contained the name and address of the representative of the applicant.

T 2313/15 - Only arguments before OD

Key points

• In this opposition appeal, the patentee did not submit auxiliary requests before the OD and did not request oral proceedings. The OD revoked the patent only on the ground of lack of novelty of one claim over D2, without holding oral proceedings. In appeal, the patentee defends that the claims as granted are novel over D2, and also over D1 and D3, with success. The Board considers the claims as granted novel and remits the case. The opponent appears overall unhappy with the procedural course of action. The opponent challenges admissibility of the appeal,  protests against the remittal, and requests an apportionment of costs.
• As to admissibility, the Board: "In a case such as the present one, where the appeal lies against a decision based on a sole ground (lack of novelty) a statement of grounds is sufficiently substantiated in the sense of Rule 99(2) EPC if it addresses that sole ground in a manner for the Board and the other party to understand why the Appellant considers the decision to be incorrect." "The Respondent-Opponent has rather argued that the Appellant [patentee] in their statement of grounds should have dealt with all grounds raised in opposition. This view however has neither a basis in the Convention nor is it supported by jurisprudence."
• As to the remittal: "The Respondent-Opponent requests the Board to make a final decision rather than remit the case to the Opposition Division." "In the present case all grounds of opposition under Article 100 EPC had been raised against all of the claims of the patent, based on various citations. The Opposition Division, however, issued its decision immediately, without oral proceedings, based only on the single ground of lack of novelty of claim 15 over a single document [D2, see r.3]. " 
• " In the light of the above, the Board considers that having a final decision without remittal would largely exceed the primary function of the appeal proceedings as judicial review of a first instance decision to such an extent that outweighs, in the present case, the public interest for procedural economy and the legitimate wish of the Respondent-Opponent to have such decision made by the Board." 
• As to the request for apportionment of costs (i.e. that the patentee pays the costs to be made by the opponent in the future second proceedings before the OD): the Board sees no ground.
• The fact that patentee dealt with all of opponents attacks before the OD " only by argument, without submitting auxiliary requests and without requesting oral proceedings, is a legitimate defence against an opposition, though it runs the calculated risk of an immediate contrary decision." 

• " Thus, the Appellant-Proprietor had no particular obligation to request oral proceedings before the Opposition Division. Their right to appeal or to file further requests on appeal is not affected by the mere fact that they did not request oral proceedings [before the OD]. The Board fails to see any legal basis for the implied assertion of the Respondent that the rights of the Appellant-Proprietor in the appeal proceedings are somehow more restricted because they did not request oral proceedings." 

EPO T 2313/15 -  link

Reasons for the Decision

1. Admissibility of the appeal

1.1 The Respondent-Opponent objects that the statement of grounds only addresses novelty of claim 15 and is therefore not a complete case in the sense of Article 12(2) RPBA. On this ground the appeal is, according to the Respondent, inadmissible.

1.2 Concerning the disputed aspect of the admissibility, the extent of the required reasoning and sufficient substantiation, this is governed by Article 108 and Rule 99(2) EPC. The examination of the question whether the requirements of Article 108 EPC, third sentence in combination with Rule 99(2) EPC are met is made on the basis of the contents of both the statement of grounds of appeal and of the decision under appeal, T 162/97, see Case Law of the Boards of Appeal, 2016, 8th. edition (CLBA), IV.E.2.6.3. In a case such as the present one, where the appeal lies against a decision based on a sole ground (lack of novelty) a statement of grounds is sufficiently substantiated in the sense of Rule 99(2) EPC if it addresses that sole ground in a manner for the Board and the other party to understand why the Appellant considers the decision to be incorrect. That the present statement of grounds addresses the sole ground for revocation, and in sufficient detail, is undoubtedly the case. Nor has it been argued that this would not be so.

1.3 The Respondent-Opponent has rather argued that the Appellant in their statement of grounds should have dealt with all grounds raised in opposition. This view however has neither a basis in the Convention nor is it supported by jurisprudence. Neither of the two decisions cited by the Respondent is indeed concerned with the question of admissibility of an appeal. T 396/98 deals with the issue of the extent to which an opposition division's decision is binding on the corresponding appeal board, see Reasons, point 2 - i.e. whether the board can also review findings of the opposition division that were in favour of the appellant party-, which is not related to the question of admissibility of the appeal. T 240/04, on the other hand concerns the question of admittance of an auxiliary request, see Reasons points 16.1-16.3.

1.4 As otherwise all formal requirements of Article 108 and Rule 99 EPC are met, the Board concludes that the appeal is admissible.

G 0002/19 - Exceptions to the right to oral proceedings

Key points

• The full written decision in G2/19 was recently issued. The order was already announced during the oral proceedings:
  1. A third party within the meaning of Article 115 EPC who has filed an appeal against a decision to grant a European patent has no right to have its request for an order that examination proceedings in respect of the European patent are re-opened for the purpose of removing allegedly unclear claims (Article 84 EPC) heard at oral proceedings before a board of appeal of the European Patent Office. An appeal filed in such a way has no suspensive effect
  2. Oral proceedings before the boards of appeal at their site in Haar do not infringe Articles 113(1) and 116(1) EPC.
•  As to the place of oral proceedings, the EBA notes that the starting point is that the place and time of oral proceedings can have a connection with the right to be heard. Choosing a place or time that is entirely out of the ordinary can give the impression as a defective willingness (of the Board) to engage with the party's concerns. However, this is not seriously debated with regards to the relocation of the place of oral proceedings from Munich to Haar. 
• So the next time the Board summons you in Tokio and/or on Sundays, you can invoke Articles 113 and 116.
• The EBA notes that Article 116(1) EPC allows for exceptions; the circumstances of the underlying case justify such an exception. The EBA notes that Article 116(1) EPC applies to all kinds of procedures before the EPO. 
• "Diese Vielfalt im Anwendungsbereich spricht dagegen, Artikel 116 (1) Satz 1 EPÜ gleichsam Absolutheitscharakter beizulegen. Die Norm ist vom Konventionsgeber ersichtlich als Grundsatzregelung für die typischen Fallgestaltungen gedacht, mit denen die Verfahrensorgane des Europäischen Patentamts in ihrer täglichen Praxis konfrontiert sind. Ausnahmen vom Grundsatz sind aber nicht ausgeschlossen, wenn die Anwendung aufgrund der besonderen Umstände des Einzelfalls sinnwidrig wäre. So verhält es sich im Ausgangsverfahren."
• The EBA notes that the appellant is not a party to the grant proceedings (Article 115) and hence is not entitled to appeal (Article 107). 
• The EBA makes an interesting remark about Article 115, namely that the Examining Divisions are obliged to take note of the Third Party Observations. The EBA then states that  "Ungeachtet der Frage, inwieweit ein Verstoß dagegen justiziabel ist," the Examining Division had taken note of the TPO's at issue, according to the file. As a comment, I wonder if this means that answer 1 above is not absolute, i.e. that appeal is in fact possible in the event that the file does not show that the ED had taken note of the TPO's.
• The EBA discussed one decision of a national court, namely BGH X ZR 95/05. As a comment, I don't know if there are no decision of other national courts (FR, GB, NL) on the topic. It is always particular to see only a German national decision being discussed in German language EPO proceedings.
• Now for the reasons why there is an exception to Article 116(1) in this case:
"Artikel 116 (1) Satz 1 EPÜ ist vielmehr dahin einschränkend auszulegen, dass die bloße formale Position als faktischer Beteiligter am Beschwerdeverfahren nicht ausreicht, um die Durchführung einer mündlichen Verhandlung verlangen zu können, wenn der Petent, wie hier, nicht zur Beschwerdeeinlegung befugt ist, weil er im Rechtssinne nicht am vorangegangenen Verfahren beteiligt war oder wenn er – was hier zugleich vorliegt - einen der Beschwerde nicht zugänglichen Gegenstand verfolgt. "
• In the above, "Petent" means petitioner. I'm not sure why the EBA uses that term instead of "appellant" ("Beschwerdeführer"). The two grounds are hence 1) the appellant was not a party to the first instance proceedings and 2) the appellant 'pursues an object which is not accessible to the appeal'
• The effect is that the Board can reject the appeal as inadmissible "ohne Einhaltung weiterer prozessualer Formalitäten" (as in G1/97), i.e. without oral proceedings and (in view of G1/97) without giving the appellant an opportunity to comment under Article 113 EPC.
• The appeal also lacks suspensive effect. The EBA finds that Article 106(1) s.2 has a general character, just as Article 116. "Es besteht hingegen kein anerkennenswertes Interesse daran, die aufschiebende Wirkung auch einem Rechtsbehelf beizulegen, der, wie die Beschwerde eines Dritten wegen unklarer Ansprüche, keinen Rückhalt im Europäischen Patentübereinkommen hat und deshalb offensichtlich unzulässig ist. Dem ist durch eine entsprechende Ausnahme von der Grundsatzregelung in Artikel 106 (1) Satz 2 EPÜ Rechnung zu tragen. 
• As a comment, the referral was completely silent on the suspensive effect. I am not sure if there is precedent for the EBA answering more questions than those referred. 
• As to admissibility of the referral, the EBA finds that the second question (answer 1 above) is admissible. The fact that the appeal is inadmissible, does not make the referral inadmissible (contrary to the President's submissions). The first question of the TBA is inadmissible, because the second question already fully covers the Board's need for clarification. In contrast, the first question of the TBA involved a generalisation to all cases wherein the appeal appears inadmissible "at first sight". The EBA notes that this is an undefined legal term, which is not derived from the EPC and which is not defined in the referral decision.  
• Yet, the EBA considers the appeal to be an "offensichtlich unzulässigen Rechtsbehelfs". As a comment, apparently, this legal concept is sufficiently clear, in view of the EBA whereas the legal concept of "at first sight" inadmissible appeal (used by the TBA in its first question) was not, according to the EBA. "Offensichtlich unzulässig ist ein Rechtsbehelf etwa dann, wenn er von einer zur Rechtsmitteleinlegung nicht befugten Person stammt (hier: Dritter im Sinne von Artikel 115 EPÜ), oder wenn damit ein Beschwerdeziel verfolgt werden soll, das vom Europäischen Patentübereinkommen nicht als Gegenstand einer Beschwerde nach Artikel 106 (1) EPÜ anerkannt, sondern ausgeschlossen ist (hier: Beseitigung von vermeintlichen Undeutlichkeiten der Patentansprüche im Sinne von Artikel 84 EPÜ)."  (emphasis added).
• As a comment, the word "etwa" ("for example") may indicate that the exception also applies to other kinds of inadmissible appeals. It seems to me that the EBA only gives two examples of  " "offensichtlich unzulässigen Rechtsbehelfs" and I have found no definition of the term in G2/19. Moreover, the EBA does not seem to indicate what is the difference between a normally inadmissible appeal and an "offensichtlich unzulässigen Rechtsbehelfs". Comments (especially of German native speakers) are welcome; I have to say that I don't find G2/19 a very easy read.
• The EBA states that  "Ergänzend ist klarzustellen, dass die Einlegung eines aufgrund solcher Umstände offensichtlich unzulässigen Rechtsbehelfs konsequenterweise keine aufschiebende Wirkung entfaltet." So, "offensichtlich unzulässigen" appeals lack suspensive effect. This is a useful addition to the literature (e.g. Visser, Art.106(1):2 and the MGK discussed therein). However, in my view, the EBA's reasoning would have benefited from a definition of "offensichtlich unzulässigen" appeals rather than the indication of two examples. The underlying issue could be whether a patentee can appeal (timely) against the grant of his own patent (in order to file a divisional application during the appeal proceedings).
• Edited 04.10.2019 19:30

EPO G 2/19 G2/19 G0002/19 G 0002/19 - link

Headnote

(link)

1. A third party within the meaning of Article 115 EPC who has filed an appeal against a decision to grant a European patent has no right to have its request for an order that examination proceedings in respect of the European patent are re-opened for the purpose of removing allegedly unclear claims (Article 84 EPC) heard at oral proceedings before a board of appeal of the European Patent Office. An appeal filed in such a way has no suspensive effect.
2. Oral proceedings before the boards of appeal at their site in Haar do not infringe Articles 113(1) and 116(1) EPC.

Sachverhalt und Anträge

I. Vor der Technischen Beschwerdekammer 3.5.03 ist das Verfahren T 831/17 anhängig, das sich auf die Erteilung des europäischen Patents Nr. 2 378 735 (im Folgenden: Streitpatent) am 12. Januar 2017 bezieht. Auf die Erteilung ist am 8. Februar 2017 im Europäischen Patentblatt hingewiesen worden. Das Streitpatent geht auf eine Teilanmeldung aus der früheren europäischen Patentanmeldung Nr. 06113477.1 (im Folgenden: Stammanmeldung) zurück und betrifft ein Verfahren zum Betreiben eines Mobilfunknetzes mit mehreren nebengeordneten Ansprüchen. Patentanspruch 1 lautet:

T 1849/12 - Appeal without appealable decision

Key points

• With the "staying of proceedings" being in place for referral G3/19 (Pepper) (link), some patent applications for plants may face the third "staying" (with the first and second staying being for Broccoli / Tomato I and II). Hence this decision (already from 19.03.2013) might be of renewed interest. 
• The translation below is from the (former) K's Law Blog (post).
• In this examination appeal, the search report was positive. The applicant then requested an early grant and auxiliary an appealable decision. The Examining Division then sent a Communication explaining that there was no legal basis for an appealable decision. The applicant then filed an appeal, hence before a decision to refuse the application.
• The Board held that the appeal was admissible. The Communication is "a final and legally binding statement on the request of the appellant, which, as to its content, has the nature of a decision within the meaning of A 106(1).". The decision is an interlocutory decision which was not made separately appealable by the ED. "The EPC does not contain an explicit provision [that allows to determine] in which cases a separate appeal against so-called interlocutory decisions has to be allowed.  Rather, the legislator has given the deciding department discretion to decide [on that matter]". The Board reviews this exercise of discretion and concludes that "that the ED, when refusing the request that an appealable decision be issued has insufficiently taken account of an essential aspect and has exercised its discretion in an erroneous way. Therefore, the communication of the ED is to be considered to be separately appealable." 
• However, the Board does not allow the appeal because the need for a top-up search would prevent grant of a patent before 18  months from the priority date. 

EPO T 1849/12 - link


Translation
[2.1.3] However, the Board shares the opinion of the appellant that its request for a Rule 71(3) communication being issued immediately has been dealt with conclusively in the impugned communication and has been refused in a final manner by the ED. This is because, within the framework of the examining proceedings, the ED has made a final and legally binding statement on the request of the appellant, which, as to its content, has the nature of a decision within the meaning of A 106(1).


As this decision has resulted in the refusal of the request of the appellant to have the patent and the rights under A 64 related to it granted soon, [the appellant] is also adversely affected.

Admission of the separate appeal

[2.2.1] Pursuant to A 106(2), a decision which does not terminate proceedings as regards one of the parties can only be appealed together with the final decision, unless the decision allows a separate appeal.

The EPC does not contain an explicit provision [that allows to determine] in which cases a separate appeal against so-called interlocutory decisions has to be allowed.  Rather, the legislator has given the deciding department discretion to decide [on that matter], according to its duties (Travaux préparatoires to the EPC 1973, Report on the second session of the Coordination Committee, May 15-19, 1972, document BR/209/72, point 67).

It is undisputed that a first instance department which, in application of the EPC, has to take discretionary decisions has a margin of discretion which the Board of appeal has to respect. The Board may only should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion cf. G 7/93 [2.5-6]).

[2.2.2] The impugned communication of the ED, which is to be qualified as a decision, does not terminate the examination proceedings with respect to the appellant. The ED has expressly refused the auxiliary request of the appellant for an appealable decision and has justified this by referring to the lack of an appropriate legal basis.

When doing so, it apparently has not sufficiently taken account of the fact that the request of the appellant, to allow the patent to be granted soon, by immediately issuing a R 71(3) communication, could not have been granted in a meaningful way in case a successful appeal had been filed after the final decision on the grant. Thereby it has adversely affected [the appellant] by issuing its communication, in a way that cannot be remedied by means of an appeal after the final decision.

[2.2.3] Nor could the appellant avail itself of another legal remedy provided by the EPC against the impugned communication. Under these circumstances, the ED should have allowed a separate appeal because only an appeal could offer the appellant an opportunity to remedy the adverse effect within the framework of a judicial examination of the refusal of its request. This is all the more so because the EPC does not provide for an appeal against inaction of the EPO (cf. J 26/87).

[2.2.4] Thus the Board comes to the conclusion that the ED, when refusing the request that an appealable decision be issued has insufficiently taken account of an essential aspect and has exercised its discretion in an erroneous way. Therefore, the communication of the ED is to be considered to be separately appealable.

[2.3] As the appeal satisfies all the other requirements of A 106 to A 108 and R 97 and R 99, it is admissible.

T 1389/18 - Interruption of proceedings

Key points

• The Board confirms that the Legal Division can also retroactively conclude that an interruption of proceedings took place under Rule 142 EPC (this was not contested by the parties). In this case, the LD had found an interruption of proceedings due to insolvency proceedings being opened against one of the parties. The difficulty of the case that the LD found this on 04.01.2018, with effect of 01.08.2017, wheres oral proceedings had taken place on 12.09.2017 wherein the OD had pronounced the (interlocutory) decision that the patent can be maintained in amended form. Notices of appeals were filed on 15.01.2018 and 16.01.2018. 
• The Board concludes that any oral proceeding and any decision pronounced during such oral proceedings become non-existent if they take place during an interruption of proceedings.
• Hence, in the present case, with a retroactively found interruption of proceedings, there is no valid decision of the OD. Hence, the appeal is moot ("gegenstandslos"), the appeal proceedings are terminated "without a decision on the matter".
• As a comment, Rule 101(1) stipulates that an appeal is rejected as inadmissible if it does not comply with Article 106 EPC stating that "appeal shall lie from decisions".
• The Board refunds the appeal fee. The Board distinguishes from J 12/16, wherein the Legal Board had also found the appeal to be moot ("gegenstandslos") but had not refunded the appeal fee, because in J12/16 the appeal (concerning a request for registration of a transfer of an application) became moot during the appeal procedure (by the publication of the mention of the grant). 
• A further matter is that on the Legal Division had found on 31.07.2018 a further interruption of proceedings with effect of 01.06.2018 (again due to the insolvency of the patentee). The present Board finds that the Board needs to comply with this interruption, thereby distinguishing from T854/12 (r. 1.2.6.b; as a comment I think that there the reverse torpedo of the appeal procedure is meant). In T854/12, the Board found that it needs to decide itself on a possible interruption of proceedings in view of the devolutive effect of appeal. The present Board concludes that the devolutive effect is restricted for the case of a moot appeal, precisely in order to avoid that parties can "torpedo" the first instance proceedings simply by filing a  document called "appeal" thereby taking away the competence of the first instance departments. 

EPO T 1389/18 -  link


Headnote
1. Die Rechtsabteilung ist grundsätlich befugt, eine Unterbrechung des Verfahrens nach Regel 142(1)b EPÜ auch rückwirkend festzustellen (Gründe 4.).

2. Aus dem Wortlaut der geltenden Vorschrift "Unterbrechung des Verfahrens" und aus dem Gesamtzusammenhang der Regel 142 EPÜ kommt die Kammer zu dem Ergebnis, dass auch eine, während der Unterbrechung stattgefundene mündliche Verhandlung und eine in der Verhandlung verkündete Entscheidung der Einspruchsabteilung rückwirkend als nicht existent betrachtet werden müssen (Gründe 7.).

3. Dies bedeutet, dass es keine rechtswirksame Entscheidung der Einspruchsabteilung gibt. Folglich sind auch die Beschwerden vor der Kammer gegenstandslos, so dass das Beschwerdeverfahren ohne Entscheidung in der Sache beendet werden muss (Gründe 10.).

Sachverhalt und Anträge

I. Die vorliegenden Beschwerden betreffen die am 6. November 2017 zur Post gegebene Zwischenentscheidung der Einspruchsabteilung des Europäischen Patentamts betreffend die Aufrechterhaltung des Europäischen Patents Nr. 2220689 in geänderter Form.

II. Die für die Beschwerden relevanten Ereignisse lassen sich wie folgt zusammenfassen.

III. Am 12. September 2017 fand eine mündliche Verhandlung in Anwesenheit der Patentinhaberin und der Einsprechenden 1 und 4 statt. Am Ende der Verhandlung wurde die Zwischenentscheidung der Einspruchsabteilung verkündet. Die schriftliche Entscheidung wurde am 6. November 2017 zur Post gegeben, so dass die Beschwerdefrist am 16. Januar 2018 endete.

IV. Die Rechtsabteilung teilte den Parteien in einer Mitteilung vom 7. November 2017 mit, dass gegen eine der Patentinhaberinnen ein Insolvenzverfahren eingeleitet wurde. Damit musste die Rechtsabteilung prüfen, ob die Voraussetzungen für die Unterbrechung des Verfahrens nach Regel 142 (1) b) EPÜ vorlagen. Die Parteien erhielten Gelegenheit zur Stellungnahme, nach Aktenlage gingen jedoch keine Stellungnahmen beim EPA ein.

T 0756/14 - Leave to appeal

Key points

• The Board indicates that if a first instance department decides to allow an appeal against an interlocutory decision, this decision to allow an appeal should be included in the order of the decision.
• As a comment, this should also apply to decisions of the OD to maintain a patent in amended form (the substantive decision of the OD, which is taken before the translated claims are filed). 
• The interlocutory decision concerns the request for refund of a paid further search fee. The Board sees a substantial procedural violation in that the decision to refuse this request, is based for the first time on lack of unity of invention based on D3.
• As a note, the application was refused with a decision of 02.11.2012, which was appealed separately (case T2482/12). An interesting question is whether the case can be remitted to the ED for a decision on the refund of the additional search fee of all, in view the competence of the Board? Also, the ED's decision of the search fee was issued on 23.02.2012, the Notice of appeal was filed on 19.03.2012, so I wonder if the not the entire case is before the Board when the Examining Division took the refusal decision.  "On appeal, the department of first instance loses its competence for the further prosecution of the application for all contracting states - the appeal does not leave a part of the application pending in the first instance." (CLBA, IV.E.1.2 )
• Note 28.12.2018: appeal against an interlocutory decision refusing the request for refund of a search fee was of course accepted in G1/11 (with referral decision J21/09). 

EPO Headnote
Die Zulassung einer gesonderten Beschwerde gegen eine Zwischenentscheidung im Sinne des Artikels 106(2) EPÜ ist eine konstitutive Entscheidung der Prüfungsabteilung, die die Anfechtbarkeit im Beschwerdeweg erst begründet und daher in den Tenor aufzunehmen ist.

EPO T 0756/14 - link

Entscheidungsgründe

1. Gemäß Regel 103(1)(a) EPÜ wird die Rückzahlung der Beschwerdegebühr angeordnet, wenn der Beschwerde durch die Beschwerdekammer stattgegeben wird und die Rückzahlung wegen eines wesentlichen Verfahrensmangels der Billigkeit entspricht.

2. Die Beschwerdeführerin begründet ihren Antrag auf Rückzahlung der Beschwerdegebühr mit einigen vorgebrachten Verfahrensfehlern seitens der Prüfungsabteilung (siehe Begründung der Beschwerde, Abschnitt II, Seiten 3 bis 4).

T 0611/15 - Withdrawing other requests before OD

Key points

• The appeal of patentee is not admissible, because at the end of the oral proceedings before the OD, he had withdrawn all other requests other than the one the OD allowed. Hence, he was not adversely affected. 
• The patentee contested that he had withdrawn the other requests. However, the minutes of the OD said so.
• "  In the absence of any request for correction of the minutes, the Board has to assume that these statements accurately reflect the state of the Proprietor's requests at the end of the oral proceedings before the opposition division." 

EPO T 0611/15 - link

Reasons for the Decision

1. Admissibility of the Appeals - Article 107 EPC

1.1 Proprietor's Appeal

1.1.1 Under Article 107 EPC, first sentence, parties to proceedings may appeal a decision only if they are adversely affected by it. If an appeal does not comply with this requirement the Board of Appeal shall reject it as inadmissible, Rule 101(1) EPC. In the present case the question has arisen whether the Proprietor was adversely affected by the contested decision.

1.1.2 In the contested decision it is stated in paragraph 16 of section I - Facts and submissions that (emphasis added):

"Oral Proceedings were held on 17.10.2014 in the absence of the opponent. At the oral proceedings the granted patent was revoked. The proprietors withdrew all the filed requests and submitted a single additional request for further consideration. The opposition division maintained the patent in amended form based on this request".

T 1954/14 - Appeal against summons

Key points

• This is an appeal against a decision of the OD to hear witnesses about public prior use (the summons to the witnesses had been issued). The appeal is inadmissible because this decision is not a final decision (Article 106 EPC). 
• As a comment, the patentee has been successful to the extent that the proceedings were delayed by two years. 

EPO T 1954/14 - link

Sachverhalt und Anträge

I. Die am 27. August 2014 eingelegte und begründete Beschwerde richtet sich gegen die Entscheidung über eine Beweisaufnahme durch Zeugeneinvernahme (Regel 117 EPÜ) und die angebliche Entscheidung der Einspruchsabteilung bezüglich der prima facie Relevanz, wie enthalten in dem der Ladung beigelegtem Bescheid, beide Schriftstücke mit Datum vom 17. Juli 2014.

Entscheidungsgründe

1. Zulässigkeit der Beschwerde

1.1 Die vorliegende Beschwerde betrifft die Frage, ob die der Beschwerdeführerin von der Einspruchsabteilung zugestellte Ladung zur mündlichen Verhandlung vom 17. Juli 2014 zusammen mit der der Ladung beigefügten Mitteilung und der Entscheidung über die Beweisaufnahmen als eine Zwischenentscheidung mit gesonderter Beschwerdemöglichkeit (oder Zwischenentscheidungen mit gesonderten Beschwerdemöglichkeiten) zu bewerten ist.

1.2 Entscheidungscharakter der in Frage stehenden Schriftstücke

1.2.1 Nach Artikel 106 (1) EPÜ sind Entscheidungen der Einspruchsabteilung mit der Beschwerde anfechtbar. Da der Begriff der Entscheidung im EPÜ nicht definiert ist, stellt sich die Frage, ob den angegriffenen Schriftstücken der Charakter einer beschwerdefähigen Entscheidung zukommt. Es ist in der Rechtsprechung der Beschwerdekammern anerkannt, dass dies nicht primär von der Form oder Überschrift des Schriftstücks abhängt, sondern grundsätzlich von seinem im verfahrensrechtlichen Zusammenhang zu würdigenden Inhalt. Insbesondere stellt ein Schriftstück eine Entscheidung dar, wenn der behandelte Sachverhalt gegenüber einer Beteiligten abschließend geregelt wird.