T 0196/22 - Goldschmidt and Habermas

Key points

• "The question is then whether the Board should give a party time to formulate questions for a potential referral in regard of points that have already been discussed and decided. The Board takes the view that it should not, for the following reason: 
• Oral proceedings, and court proceedings, for that matter, are not a domination-free discourse in the sense of Habermas where issues are discussed in whatever order until a solution agreeable to everyone has been reached. Rather, proceedings are meant to put the deciding body, in this case the Board, in a position to decide about the issues in dispute. In order to do so, procedure is structured by different stages, and once a certain stage has been concluded, a party may no longer be able or allowed to undertake certain procedural acts: Once the time limit for filing an appeal has passed, an appeal can no longer be filed; once a party has presented its complete case with the grounds of appeal or the reply thereto, any amendments may, but do not have to be allowed, Art. 13(1) Rules of Procedure of the Boards of Appeal. This is good law and has a recognised doctrinal basis in academic writings, e.g. James Goldschmidt, Der Prozeß als Rechtslage, Berlin 1925.
• I don't know the book, but it is described as "a classic monograph on German procedural law".  See also T 0360/13.
• I'm not up to speed with Habermas and would appreciate suggestions from readers for a good explanation of "a domination-free discourse in the sense of Habermas".
• The legal member in T0360/13 and in the present case is Mr. Heath. 
• Where in oral proceedings an issue has been discussed, the Board closes the debate on this issue, deliberates thereupon and announces its conclusions. The Board may of course reopen the discussion on this issue. During the oral hearing on this case, the issue of synergy was addressed. While the Board was under the impression that a discussion on synergy was all the respondent had to say on inventive step, it transpired that the respondent had been under the impression that they should address issues other than synergy at a later stage. Due to this misunderstanding, the Board then reopened the discussion on inventive step which was then continued to hear the respondent's further submissions. Reopening the discussion was thus a necessity for guaranteeing the respondent's right to be heard. A Board can also reopen the discussion of its own motion if during its deliberation further issues of relevance come to light. However, the Board is unlikely to reopen the discussion once the parties have been properly heard and the Board feels in a position to form an opinion. It may do so, but it does not have to.  
• In the case at issue, the respondent's request for time in order to formulate questions to the Enlarged Board could have had no other purpose but to reopen a debate that already been concluded. Its only aim could have been for the Board to review its conclusions of its own motion, or to request guidance from the Enlarged Board and review its conclusions in light of such guidance. As the Board had already reached its conclusions, a reopening of the discussion was at the discretion of the Board, and the Board decided that no such reopening was opportune or necessary."
• 
  
• The application was filed as a PCT application in 2007. EP Entry in 2009, examination started in 2015 (!) Grant in 2019. 

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

G 4/19 - Double patenting

 Key points

• The Enlarged Board confirms the EPO's practice that applications can be refused for double patenting under Art. 125. The referring Board had doubted Art. 125 as the legal basis.
• The Enlarged Board: “Article 125 is dealt with in the Minutes of the Proceedings of Main Committee I [of the 1973 Diplomatic Conference], points 665. to 669., with points 665. to 668. being dedicated to the issue of double patenting, while point 669. records the unanimous opinion that the EPO may correct inadvertent errors [note: see Rule 139 EPC 2000]. ”
• “Point 665. is worded as follows in the English version: "In connection with Article 125, it was established at the request of the United Kingdom delegation that there was majority agreement in the Main Committee on the following: that it was a generally recognised principle of procedural law in the Contracting States that a person can be granted only one European patent for the same invention in respect of which there are several applications with the same date of filing."” “ the proper interpretation of this statement is rather that it "... followed from the ... principles of procedural law in the Contracting States that only one European patent [can be granted]...". ”
• “the preparatory documents demonstrate with overwhelming certainty that there was a real and effective agreement that the European Patent Office should prohibit double patenting by taking into account principles of procedural law generally recognised in the Contracting States, i.e. by a direct application of Article 125 EPC. Furthermore, there must have been a common understanding among the potential signatories to the Convention that this majority agreement was made on behalf of the Plenary of the Diplomatic Conference and recorded with the purpose of defining the scope of Article 125, and that therefore the principle expressed in the agreement [i.e. point 665 cited above] formed part of the Convention. ... the competent legislator, here the Diplomatic Conference, established that the prohibition on double patenting was a generally recognised principle as a question of fact, and in addition made it clear that this was a principle falling under Article 125 EPC as a matter of interpretation of the law, [and] the Office was thereby not only empowered to apply this principle but effectively also duty-bound to do so.”
• The above are some of the key paragraphs of the very thorough legal analysis of the Enlarged Board.
• The Enlarged Board also notes that Art. 123(2) (added subject-matter) is a ground for refusal even though it is comprised in Chapter I of Part VII of the EPC with the title ‘Common provisions governing procedure’. Hence, the term ‘procedural law’ in Article 125 does not exclude consideration of double patenting under that provision: “Thus the Enlarged Board concludes that, from a purely systematic point of view, Article 125 EPC may provide a legal basis for the regulation of double patenting - whether this means permitting or prohibiting it - even though a consideration of substantive issues such as "the same subject-matter" may be involved as well.”
• “The Enlarged Board reads Question 2.1 narrowly, and as essentially asking whether the possible legal basis in the EPC is equally applicable to the three identified constellations, or whether there may be reasons for treating them differently, for example by establishing an exception for one of them. Further questions which may arise in connection with double patenting, such as the question of the same invention or the same applicant, are not considered to be covered by the referral.”
• The interested reader may consult C-IV, 6.4, in particular the reference to C-VI,9.6 of the first edition of the Guidelines (1978) [not published on the EPO website currently], basically the GL then required the difference between the claims of the two application to ‘conceivably be of inventive significance’. (Note, I do not think the EPO should revert to the 1978 practice).

Headnote

1. A European patent application can be refused under Articles 97(2) and 125 EPC if it claims the same subject-matter as a European patent which has been granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC.

2.1 The application can be refused on that legal basis, irrespective of whether it a) was filed on the same date as, or b) is an earlier application or a divisional application (Article 76(1) EPC) in respect of, or c) claims the same priority (Article 88 EPC) as the European patent application leading to the European patent already granted.

2.2 In view of the answer to Question 2.1 a separate answer is not required.

Comment: headnote 1 should probably be understood in the question of the referral: based on the literal wording of hn.1 the granted European patent may also have a later effective filing date (under USA patent law, (obviousness-type) double patenting objections can apparently be based on later filed patent applications. 

G 4/19 - G 0004/19

https://www.epo.org/law-practice/case-law-appeals/recent/g190004ex1.html

Summary of facts and submissions

I. By its decision in appeal case T 0318/14 dated 7 February 2019 (OJ EPO 2020, A104) and issued in writing on 20 December 2019, Board of Appeal 3.3.01 referred the following questions to the Enlarged Board of Appeal:

"1. Can a European patent application be refused under Article 97(2) EPC if it claims the same subject-matter as a European patent which was granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC?

2.1 If the answer to the first question is yes, what are the conditions for such a refusal, and are different conditions to be applied depending on whether the European patent application under examination was filed

a) on the same date as, or

b) as a European divisional application (Article 76(1) EPC) in respect of, or

c) claiming the priority (Article 88 EPC) in respect of a European patent application on the basis of which a European patent was granted to the same applicant?

2.2 In particular, in the last of these cases, does an applicant have a legitimate interest in the grant of a patent on the (subsequent) European patent application in view of the fact that the filing date and not the priority date is the relevant date for calculating the term of the European patent under Article 63(1) EPC?"

II. The appeal before the referring Board (in the following "the Board") was against the decision of the Examining Division refusing European patent application No. 10718590.2 under Article 97(2) EPC in conjunction with Article 125 EPC. The Examining Division found that claim 1 of the sole claim request on file was directed to subject-matter which was identical to the subject-matter claimed in European patent No. 2 251 021, which was granted for the European patent application from which the application-in-suit claimed priority. Granting a second patent on this claim was held to be contrary to the principle of the prohibition on double patenting (in the following also referred to as just "the prohibition"), this being an accepted principle in most patent systems, as stated in the Guidelines. The applicability of the prohibition was furthermore confirmed by an obiter statement in the Enlarged Board of Appeal's decisions G 1/05 and G 1/06. The Examining Division held that the prohibition also extended to European applications claiming an internal priority from another European application, and that decision T 1423/07 was not applicable because the applicants were different in that case.

G 1/21 - Substantive conclusion (order)

The order issued by the Enlarged Board of Appeal reads as follows:

During a general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the boards of appeal in the form of a videoconference is compatible with the EPC even if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference.

https://www.epo.org/law-practice/case-law-appeals/communications/2021/20210716.html

“The Enlarged Board of Appeal limited the scope of its answer ... by confining its order to oral proceedings that are held during a period of general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises and moreover are conducted specifically before the Boards of Appeal.

Accordingly, in its order the Enlarged Board did not address the question whether oral proceedings by videoconference may be held without the consent of the parties in the absence of a period of general emergency. 

Nor did the order address the question whether oral proceedings by videoconference may be held without the consent of the parties in examination or opposition proceedings before the EPO's departments of first instance.”

G 4/19 - Referral - Double patenting - T 0318/14

Key points

• The Board refers question to the Enlarged Board about double patenting. The questions were already announced during the oral proceedings of 07.02.2019, see here. The Board has now issued the written decision to refer the questions.
• The questions are stated below. The more important thing is the extensive legal analysis of the Technical Board of Appeal, which stops shortly before concluding that there is no legal basis in the EPC for a prohibiting double patenting.
• "The main conclusions by the [Technical Board of Appeal]  can be summarised as follows:
• - There is no express provision in the EPC which prohibits double patenting.
• - It is not clear whether such a prohibition became an implicit part of the Convention by way of an agreed statement or similar instrument adopted at the Munich Diplomatic Conference.
  - The legislator did not introduce an express prohibition on double patenting at the Diplomatic Conference for the revision of the EPC in 2000. Article 139(3) EPC remained unchanged.
• - A prohibition on double patenting cannot be based on Article 60(1) EPC.
  - Neither Article 63(1) EPC nor Article 76(1) EPC offers scope for the idea of a prohibition on double patenting.
  - It is questionable whether Article 125 EPC is appropriate as a legal basis for a prohibition on double patenting. This provision cannot serve to introduce a new condition for patentability (or a ground for refusal). [...]
• - If a prohibition on double patenting with respect to European patent applications may be introduced at all, this could be by way of case law filling an unintended gap in the law. 
• However, in view of the policy considerations involved, it appears that a proper legislative procedure would offer a more favourable context for establishing a sound legal basis for a prohibition on double patenting."

The following questions are referred to the Enlarged Board of Appeal:

1. Can a European patent application be refused under Article 97(2) EPC if it claims the same subject-matter as a European patent which was granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC?

2.1 If the answer to the first question is yes, what are the conditions for such a refusal, and are different conditions to be applied depending on whether the European patent application under examination was filed
a) on the same date as, or
b) as a European divisional application (Article 76(1) EPC) in respect of, or
c) claiming the priority (Article 88 EPC) in respect of a European patent application on the basis of which a European patent was granted to the same applicant?

2.2 In particular, in the last of these cases, does an applicant have a legitimate interest in the grant of a patent on the (subsequent) European patent application in view of the fact that the filing date and not the priority date is the relevant date for calculating the term of the European patent under Article 63(1) EPC?


EPO T 0318/14 - T0318/14 - link

File wrapper here

EPO T0318/14 Double patenting
EPO G4/19 Double patenting
EPO G 4/19 Double patenting
EPO G 0004/19 Double patenting
EPO G0004/19 Double patenting
Note the case number was confirmed on 16.01.2020 (link).

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division by which European patent application No 10718590.2, based on an international application published as WO 2010/130661, was refused under Article 97(2) EPC "in conjunction with Article 125 EPC".

II. The examining division found that claim 1 of the sole claim request on file was directed to subject-matter which was "100% identical" to the subject-matter claimed in European patent No 2 251 021, which was granted on European patent application No 09159932.4, the priority document of the present application. This was held to be contrary to the principle of the prohibition on double patenting referred to in decisions G 1/05 and G 1/06.

T 0703/19 - XML debit orders and good faith

Key points

• In this opposition appeal, the patentee files a Notice of appeal and uses Form 1038E where the appeal fee is indicated, but the payment method is "not specified". As readers may know, this is something the EPO Online Filing Software allows and even can have as a default setting. You have to actively check "debit order" if you forget the filing software gives only a very subtle warning even if you have already specified a fee to be paid (a small white triangle, I believe). In this case, the appellant had checked the appeal fee but not checked "debit order". 
• The issue is not whether the debit order was valid. Rather, the appellant invokes the principle of good faith (EPO should inform parties of clear mistakes which they can still repair, G2/97) because the Notice was paid one month before the time limit and the Notice contained the express statement "Die Beschwerdegebühr wird hiermit via Online-Gebührenzahlung entrichtet". The appellant filed this request (and paid the appeal fee) after receiving the Rule 112 notice of loss of rights from the "Geschaftsstellenbeambtin".  
• The Board grants the request and considers the appeal fee to be timely paid.
• The Board notes that the ADA are not outside the scope of G2/97. "Allerdings hat die Tatsache, dass die Gebühr nun über die Online-Gebührenzahlung möglich ist und von den Vorschriften über das laufende Konto reguliert wird nicht zur Folge, dass damit jeglicher Anspruch auf Vertrauensschutz automatisch erlischt." 
• The Board recalls that in G2/97, the Enlarged Board had assumed that documents received by the EPO are read (by the EPO). The present Board concludes that users of the EPO may trust that a plausibility check is done (by the EPO) when an appeal is filed.
• In the present case, the error was clear to spot. In particular, because of the unambiguous statement in the appeal letter that the debit order was attached which provides the required statement of intention to pay with the filing of the notice of appeal. Moreover, there was still enough time before the expiry of the appeal period.
• " Die Beschwerdeführerin konnte daher erwarten, dass sie auf die fehlenden Angaben unter Rubrik "Zahlungsart" hingewiesen würde, was es ihr in Hinblick auf die über einen Monat vor Fristende erfolgte Einreichung der Beschwerde erlaubt hätte, die Beschwerdegebühr fristgerecht zu entrichten." 
• The above decision makes sense to me. I understand it also reflects first-instance practice. I really hope that the EPO updates the filing software to address this trap for parties (I am not sure if it is a bug or a feature, but this decision shows that there should be a better warning in the software in my view).
• Note that the oppositions were withdrawn already before the filing of the notice of appeal.

EPO T 0703/19 (07.08.2019) - link
ECLI:EP:BA:2019:T070319.20190807

Sachverhalt und Anträge

I. Mit der am 30. Januar 2019 zur Post gegebenen Zwischenentscheidung hat die Einspruchsabteilung festgestellt, dass das Patent in der Fassung des Hilfsantrags 1 die Erfordernisse des EPÜ erfüllt. Die beiden Einsprüche gegen das Patent wurden mit Schreiben vom 1. Februar 2018 sowie vom 11. September 2018 zurückgenommen.

II. Die Patentinhaberin (Beschwerdeführerin)legte am 8. März 2019, und somit innerhalb der dafür vorgesehenen Zweimonatsfrist (Artikel 108 Satz 1), auf dem Wege der Online-Einreichung des EPA Beschwerde gegen die Entscheidung der Einspruchsabteilung ein. Im Zuge der Online-Einreichung des EPA wurde das Formular 1038 mit dem Titel "Begleitschreiben für nachgereichte Unterlagen" generiert, dem auch die Beschwerdeschrift als PDF angehängt war.

III. In der Beschwerdeschrift machte die Beschwerdeführerin unter anderem folgende Angabe: "Die Beschwerdegebühr wird hiermit via Online-Gebührenzahlung entrichtet". Auf dem Begleitschreiben für nachgereichte Unterlagen finden sich Angaben bezüglich der Art der Gebühren ("Beschwerdegebühr für eine Beschwerde..."), des zu zahlenden Betrags ("EUR 2 255.00"), nicht aber zur Zahlungsart. Zu letzterer ist "Nicht angegeben" aufgeführt. Die Angabe der Kontonummer fehlt. Eine Abbuchung der Beschwerdegebühr von dem laufenden Konto der Vertreterin der Beschwerdeführerin fand nicht statt.

T 0360/13 - German law from 1925

Key points

• In this opposition appeal, the patentee filed a new auxiliary request just after the break for deliberation of the Board and just before the Board announced its decision (about clarity of the pending requests).
•  The Board does not admit the request, which does not seem very surprising under Article 15(5) RPBA. However, for some reason, the Board supports this decision by quoting a German book about procedural law published in 1925. I don't know the book, but it is described as "a classic monograph on German procedural law". 
• As a comment, Article 125 EPC refers to the "principles of procedural law generally recognised in the Contracting States", not to German procedural law. Furthermore, the book does not seem to be in the EPO file, and I personally would be a bit surprised if a book about national law is quoted for the first time in the written decision (though, of course, perhaps the book was discussed earlier in the case at issue). 

EPO T 0360/13 - link

2.5 Den Stand des Verfahrens betreffend kommt im vorlie­gen­den Fall erschwerend hinzu, dass der neue Hilfs­antrag in der mündlichen Verhandlung vor der Kammer erst nach Beendigung der sachlichen Debatte eingereicht wurde, als die Sache bereits entscheidungsreif war.

2.5.1 Der Vorsitzende der Kammer hatte nämlich nach der De­batte über die Klarheit des Merkmals (i) die Antrags­lage festgestellt und erklärt, dass sowohl Anspruch 1 des Hauptantrages als auch Anspruch 1 des damals vor­lie­gen­den Hilfsantrages dieses Merkmal enthielten. Daher wären beide Anträge nicht gewährbar, falls die Kammer zu dem Schluss käme, dass das Merkmal nicht klar wäre. Je nach Beratungsergebnis könnte es somit zu einer Endentscheidung kommen. Erst nach der Beratungs­pause, jedoch vor der Verkündung einer Entscheidung erklärte die Beschwerdeführerin, dass sie den damaligen Hilfs­antrag dahingehend ändern wolle, das diskutierte Merk­mal (i) zu streichen.