T 0856/22 - Opponent must request postponement oral proceedings (?)

Key points

• The OD admitted D18, a document with experimental results filed by the proprietor in the procedure before the OD. The opponent appeals.
• " Document D18 was filed by the [proprietor] before the final date for making written submissions set by the opposition division under Rule 116 EPC. The opposition division therefore had discretion to admit and consider document D18, in particular if it was considered prima facie relevant, as is evident from point 14.1 of the decision under appeal. The opposition division thus applied the correct criterion of prima facie relevance (see also Case Law of the Boards of Appeal, 10th edition 2022 (Case Law), IV.C.4.5.3a)), [...] ."
• " Furthermore, the [opponent] did not request that the oral proceedings before the opposition division be postponed [i.e. adjourned] when document D18 was admitted, and no violation of the appellant's right to be heard - resulting from the admission of document D18 - is apparent. The opposition division therefore correctly admitted document D18 into the opposition proceedings."
• The opponent/appellant filed an experimental report D21 with the statement of grounds.
• The Board: "Furthermore, the appellant did not submit that the filing of document D21 was triggered by the admittance of document D18 during oral proceedings before the opposition division. In any case, had the appellant intended - in the opposition proceedings - to react to the admittance of that document by filing the experimental data now filed as document D21, it would have been their duty to request a postponement of the oral proceedings - either before or even during the oral proceedings - following the opposition division's decision to admit it. However, none of these measures was taken."
• Note, the 'in any case' observation is obiter.
• As a comment, in the case at hand, the appeal of the opponent is dismissed, but suppose the Board revoked the patent (i.e. found the patent to be invalid), any postponement of the oral proceedings before the OD would have added a few months to the lifetime of the patent. It can be seen that usually, the opponent has a legitimate interest in a swift decision of the OD in order to have an invalid patent finally revoked without undue delay. Assuming a procedural obligation of a party to request a postponement of the oral proceedings in opposition cases is, therefore, not without problems.

EPO 

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

T 1823/23 - Dropping the drawings in the Rule 71(3)

Key points

• "The communication under Rule 71(3) EPC however referred to the description and the claims but not to the drawings."
• The applicant realizes the error only after the grant and files a timely appeal.
• "In the present case, the documents indicated in the communication under Rule 71(3) EPC are however manifestly not in line with those resulting from the examination of the request on file, because the drawings formed part of the application as filed but were never withdrawn by the (now) appellant, and only the claims and the description were objected to by the examining division and amended by the appellant, but not the drawings."
  
• "In the case at issue, the communication under Rule 71(3) EPC does not contain any hint that any deletion or amendment were made by the examining division to the drawing sheets. There is thus a clear discrepancy between the description referring to the Figures and the absence of any drawing sheets in the text intended for grant, which should have been remarked upon by the examining division when allegedly deleting the drawing sheets, but apparently neither the members of the examining division nor the (now) appellant realised that the drawing sheets were missing and that the documents referred to in the communication pursuant to Rule 71(3) EPC did not correspond to those according to the appellant's request, which included the drawing sheets. Therefore, in line with decisions T 1003/19 and T 408/21, the board concludes that the examining division did not indicate in the communication according to Rule 71(3) EPC the text it intended to grant"
• "The examining division therefore did not communicate the text that it intended to grant. Following T 2081/16 (point 1.4.5 of the Reasons), T 408/21 (point 1.12 of the Reasons) and T 1003/19 (point 2.4.5 of the Reasons), Rule 71(5) EPC correspondingly does not apply, as in the step preceding the deemed approval the applicant has to be informed of the text in which the examining division intends to grant the patent according to Rule 71(3) EPC. Although the (then) applicant received a Rule 71(3) EPC communication, the documents indicated were not those which the examining division intended to grant."
• The appeal is allowable.
• "The fact that a narrow interpretation of Rule 71(3) and (5) EPC as proposed by the present board allows for an appeal to be treated as admissible should however not be misinterpreted as an invitation to neglect the applicant's duty to carefully check the documents submitted in the text intended for grant sent with the communication under Rule 71(3) EPC. The request for reimbursement of the appeal fee is therefore rejected."
• "The present board is aware of decision T 265/20"

EPO 

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

R 0013/22 - Patent revoked, opponent unhappy & diagnostic method

Key points

• The opponent was "European Society of Human Reproduction & Embryology". The title of the patent is "IMAGING AND EVALUATING EMBRYOS, OOCYTES, AND STEM CELLS." 
• The OD has ex officio raised an objection based on Art.53(a) with R.28(c) EPC regarding the commercial use of human embryos.
• In the decision, the OD found that the ground of Art.53(a) did not apply because there is a distinction in the EU biotech directive between inventions for diagnostic purposes applied to human embryos and useful to it, the latter not excluded from patentability.
• O2 raised an objection regarding Art.53(c), diagnostic methods.
• The OD found the claim to be allowable under Art.53(c) because the "third step"  of G 1/04, of diagnosis stricto sensu is not recited in the claim (this is the step that is a " purely intellectual exercise" according to G 1/04, but if you omit it from the claim, there is no objection under the diagnostic method prong of Art.53(c).
• Hence, the OD concluded the claim is allowable under Art.53(a) because it is a diagnostic method and, at the same time, found that it is not a diagnostic method and therefore allowable under Art.53(c). I refrain from comments on this point. 
• Claim 1 as granted is directed to:  "A method for assessing good or poor developmental competence of a human embryo". I have not studied what the patent suggests doing in case of poor developmental competence (potential in the application as filed) of an embryo, though the embryo appears to be in vitro when it is subjected to the measurements. 
• The proprietor disapproves the text of the patent shortly before the hearing in appeal. There was no preliminary opinion of the Board on the issue of Art.53.
• The opponent/appellant expressly requests oral proceedings and a decision on the issue of Art.53
• The Board revokes the patent under Art.113(2)  without giving reasons on Art.53.
• The opponent files a petition for review.
• The Enlarged Board: "The Enlarged Board is thus of the view that the non-holding of the oral proceedings, the non-consideration of the Article 53 EPC objection, and the non-referral of questions to the Enlarged Board of Appeal cannot be considered to have resulted in any prejudice to the Petitioner that would lead to the Petitioner being adversely affected by the decision to revoke the patent within the meaning of Article 112a(1) EPC." 
• " For a board to refer questions to the Enlarged Board of Appeal under Article 112a EPC certain conditions need to be fulfilled. Amongst these conditions is that the referral questions must not have merely theoretical significance. An example of such theoretical questions would be if the board could reach the same decision regardless of the answer (see G 3/98, para 1, and T 547/08, para 4, last para). Some further conditions are that the questions must be relevant for deciding the case in question (see T 2136/16, para 8.1 to 8.3); and that the answer to the referred questions must be essential for the board to reach a decision on the appeal in question (see T 154/04, para 2). None of these conditions apply in the present case. The Board was able to revoke the patent without needing an answer to the referral questions submitted by the Petitioner."
• As a comment, should proprietors withdraw all claim requests that the Boards consider unallowable if such withdrawal is procedurally possible at the end of oral proceedings (and if a petition for reviews is not considered) to avoid the creation of unfavourable case law?

EPO 

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

T 2610/18 - Rule 82(1) case

 Key points

•  Rule 82(1) is rarely applied in practice because most often parties request oral proceedings in opposition. However, in this case, no oral proceedings were requested and the OD issued the interlocutory decision that taking into account the amendments made by the proprietor, the patent and the invention to which it relates meet the requirements of the EPC. This decision was issued in writing about 10 months after the proprietor's response was forwarded to the opponent, without oral proceedings. No oral proceedings were requested (by the opponent; the patentee's amended main request was granted).
• The opponent appeals.
• The Board finds the above to be a substantial procedural violation, in particular of Rule 82(1) EPC.
• " The Board finds that the issuing of a communication under Rule 82(1) EPC was required in that specific situation. Rule 82(1) EPC reads as follows: "Before the opposition division decides to maintain the European patent as amended, it shall inform the parties of the text in which it intends to maintain the patent, and shall invite them to file their observations within two months if they disapprove of that text." Rule 82(1) EPC ensures that the right of the parties to be heard is respected in opposition proceedings before any decision is taken. In the present case, no objection against the amended main request was raised by the opponent and - evidently - the opposition division had no such objection either. However, contrary to the stipulations of Rule 82(1) EPC, the parties had not been informed of the opposition division's intention to maintain the patent on the basis of the amended main request and on the description and drawings as contained in the specification. Furthermore, the parties were not invited to comment on that text within a specified period as also foreseen in Rule 82(1) EPC."
• As a comment, the purport of Rule 82(1) is not very clear to me, except for the case where the OD proposes amendments of their own motion in written proceedings.
• Van Empel, para. 480, explain the original idea as follows: “It may also be, however, that the Opposition Division finds that the patent can be maintained, provided it is amended to some extent. Normally this amendment takes form progressively in the course of communications between the Opposition Division and parties concerned. However, at a certain moment the former should make up its mind and state that it is of the opinion that the patent as amended in the indicated way can be maintained. However, again the basic principle of Article 113(2) comes into play, and thus the Opposition Division must submit the envisaged text of the amended patent to the patentee for approval [].* Curiously, in this regard a similar position has been given to opponents. According to Rule 58(4) [EPC 1973], they also are requested to state their observations on the text which is envisaged by the Opposition Division."
• * = This obviously refers to the second alternative in Art. 113(2), i.e. to amendments proposed by the OD of own motion: " The European Patent Office shall examine, and decide upon, [] the European patent only in the text submitted to it, or agreed, by [] the proprietor of the patent", because if the patentee submitted the text, no further approval of the text by patentee is required under Article 113(2) EPC. 
• That's why the Rule 82(1) EPC communication can be dispensed with if the text is the one decided by the patentee and the opponent has been given the opportunity to comment. See G1/88, r.6: "Accordingly, Rule 58(4) EPC does not need to be applied when the patent proprietor has already given his express approval of the text in which the Opposition Division intends to maintain the patent in accordance with Article 102(3) EPC. Irrespective of this, the opponent must have had - or be given - sufficient opportunity, according to the circumstances, of commenting on the new text. He can be given this opportunity, especially where the written procedure is being used, through the application of Rule 58(4) EPC." 
• The Board is also critical that the OD had assumed that the description was not to be amended, even though patentee had not expressly stated so. This may indeed be an issue of Article 113(2) EPC. However, the patentee did not appeal and it find it not so clear whether an opponent can invoke a violation of Article 113(2). 

T 2610/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t182610eu1.html

Summary of Facts and Submissions

I. An appeal was filed by the opponent against the interlocutory decision of the opposition division dated 22 August 2018 in which the opposition division found that European patent No. 2 958 461 in an amended form met the requirements of the EPC.