T 0267/18 - The term therapeutic agent is unclear

Key points

• The present decision deals with clarity of the term 'therapeutic agent', but first provides a useful summary of the rules for admissibility of amended claims filed during oral proceedings before the OD.
•  " Auxiliary Request 1 was filed and admitted during the oral proceedings in Opposition (see decision under appeal item 3.3.1). The amendments required no undue evaluation and complied with the requirements of Rule 80 EPC. Since the opposition division departed from its provisional opinion set out in the annex to the summons and finding on the novelty of the main request during the oral proceedings and concluded that the patent could not be maintained as granted, the filing of an auxiliary request, which intended to overcome the novelty objection, seemed justified as the subject of the proceedings had surprisingly changed for the patentee at a late stage of the proceedings." 
• " In principle, a decision taken by a department of first instance in the exercise of its discretion may be overruled by a Board of Appeal only if it is concluded that the department exercised its discretion in accordance with the wrong principles, without taking the right principles into account or in an arbitrarily or unreasonable way, thereby exceeding the proper limits of its discretion (see Case Law of the Boards of Appeal of the EPO, 9th edition, 2019, in the following "Case Law", V.A.3.5.1.b), and in particular decision G 7/93, OJ EPO 1994, 775, reasons 2.6)." 
• "  In exercising its discretion, the division had first to consider the reasons for filing the request at such a late stage in the proceedings, the allowability of the late-filed amendments, on a prima facie basis, and whether the parties and the opposition division could reasonably be expected to familiarise themselves with the proposed amendments in the time available. Since the amendments introduced in claim 1 of the auxiliary request 1 were filed in reaction to a change of the opposition division's opinion regarding novelty, were intended to overcome a novelty objection, did not require any further extensive assessment for both the opposition division and the opponent, and were "prima facie" allowable, they were admitted." 
• italics added. A pertinent question may be whether "the time available" is simply the time scheduled for the oral proceedings before the opposition division or something else.
• " Hence the board fails to see why the opposition division had exercised its discretion according to the wrong principles or in an unreasonable way." 
• " For this reason, it will not overrule the way in which the first instance has exercised its discretion. Furthermore, since the auxiliary request 1 was admitted by the opposition division in the proper exercise of its discretion and was decided upon by the opposition division, the board fails to see a legal basis for disregarding this request (see also Case Law, supra, V.A.3.5.4). It follows that since the aim of appeal proceedings is to review the decision under appeal in a judicial manner (Article 12(2) RPBA 2020), auxiliary request 1, the only request now on file, forms part of the appeal proceedings." 
• The duty of the Board to review decisions to admit a case amendment was also acknowledged in T 0960/15.
• However, the amendment is found to be unclear. " Since the term "therapeutic agent" is open to interpretation or ambiguous, claim 1 lacks clarity within the meaning of Article 84 EPC."

• " Although a skilled person is able in most cases to decide whether a certain amount of a specifically defined product has a therapeutic effect or not (see decision T 151/01 of 9 February 2006, reasons 2.1), the "therapeutic agent" used in claim 1 defines far more than a specific class of compounds in a specific quantity having a therapeutic effect for a disease. It defines any known or yet unknown biologically active compound capable of treating or alleviating at least one disease state or condition. It is not limited to agents that are approved by a competent regulatory authority and/or are on a publicly available list of therapeutics. Hence, the respondent's argument that the skilled person would be able to determine from a list of approved therapeutic products whether any agent is a therapeutic agent or not, is not decisive in resolving the present clarity issue." 

•  The claim is directed to a delivery vehicle for a medicament, as I understand it, and reads: "1. A fully intact eubacterial minicell derived from a eubacterial parent cell, wherein the minicell comprises biologically active compound which is a therapeutic agent and displays an antibody or antibody derivative directed to a surface antigen of a cell for cell- or tissue-specific targeting of said eubacterial minicell, wherein the biologically active compound and the antibody or antibody derivative are exogenous to the parent cell and distinct from each other."

   

EPO 

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

T 1609/20 - The covid extension for renewal fees

 Key points

• There is more in this decision than meets the eye.
• “During the appeal proceedings the European Patent Office issued a noting of loss of rights pursuant to Rule 112(1) EPC stating that the renewal fee for the eleventh year and the additional fee have not been paid in due time. The applicant / appellant requested to confirm that the renewal fee for the eleventh year and the additional fee were paid in due time.”
• “According to Rule 112(2) EPC if the party concerned considers that the finding of the European Patent Office is inaccurate, it may, within two months of the communication under Rule 112(1) EPC, apply for a decision on the matter. The European Patent Office shall take such decision only if it does not share the opinion of the party requesting it; otherwise, it shall inform that party. In this case the Board shares its opinion.”
• First of all, the Notice of loss of rights of 18.11.2020 was issued “for the Examining Division” and the appellant expressed surprise to receive a preliminary opinion of the Board on the matter.
• The Board is competent to decide on all matters pertaining to the application during the appeal, the so-called devolutive effect of appeal, and hence also on the renewal fee. However, the EPO's computer systems sending out the Notice of loss of rights are not programmed accordingly. 
• The appellant argued that all periods were extended until 2 June under the covid measures (OJ 2020 A60) and that the 6 month period for paying the renewal fee with surcharge, therefore, expired on 2 December 2020. OJ 2020 A75 was also cited.
• The Board's preliminary opinion was entirely negative: the deferred due date for the renewal fee did not change the start or end of the 6-month period for paying with surcharge, in line with J 4/91, and no legitimate expectations either.
• Because the present decision is empty of substantive reasons, we don't know why the Board changed its mind. I note that the EPO had sent out the Notice of loss of rights in a number of parallel applications of the same applicant, at least (p.1 of this letter) so presumably it was the EPO's position that the period for payment with surcharge was not postponed. But the present Board apparently prefers to not explain what happened and why the EPO's position was wrong. 
• Either J 4/91 is abandoned in the present decision (and an extension under Rule 134(2) does shift the due date / starting date for the 6-month period even if the extension is very long), or the EPO's Covid-related notices are not completely legally sound (see J10/20) and there is some hand waving under Article 125 EPC in the present decision, but the present decision obscures the Board's precise reasoning. 
• Typically high quality judgments are characterized by their clear reasoning, not by obscuring the legal reasoning.

T 1609/20

https://www.epo.org/law-practice/case-law-appeals/recent/t201609eu1.html

Summary of Facts and Submissions

During the appeal proceedings the European Patent Office issued a noting of loss of rights pursuant to Rule 112(1) EPC stating that the renewal fee for the eleventh year and the additional fee have not been paid in due time.

The applicant / appellant requested to confirm that the renewal fee for the eleventh year and the additional fee were paid in due time.

As a auxiliary measure it requested re-establishment in the time-limit to pay these fees and paid the fee for re-establishment. Finally it requested that fee for re-establishment be reimbursed if the renewal fee and the additional fee were considered to be paid in due time.

Reasons for the Decision

According to Rule 112(2) EPC if the party concerned considers that the finding of the European Patent Office is inaccurate, it may, within two months of the communication under Rule 112(1) EPC, apply for a decision on the matter. The European Patent Office shall take such decision only if it does not share the opinion of the party requesting it; otherwise, it shall inform that party. In this case the Board shares its opinion.

Since a decision on re-establishment was not to be taken, the fee for re-establishment has to be reimbursed.

Order

For these reasons it is decided that:

1. The appellant is informed that the renewal fee

for the eleventh year and the additional fee were

paid in due time.

2. The fee for re-establishment is reimbursed.

T 2069/18 - The rationale for renewal fees

Key points

• The applicant requests a refund of the renewal fees paid during seven years of inactivity of the EPO.
• The Board refuses the application. The invention appears to relate to user interface software for touch displays for vehicles.
• The Board considers the request for refund admissible but unallowable.
• The Board: “Der Antrag auf Rückzahlung von 7 Jahresgebühren ist entgegen der Auffassung der Prüfungsabteilung zulässig. Wie die Prüfungsabteilung als solches im Ergebnis zwar zutreffend gesehen hat, ist eine Rechtsgrundlage für einen solchen Antrag nicht gegeben. Dies hindert jedoch nicht die verfahrensrechtliche Zulässigkeit eines solchen Antrags, sondern gegebenenfalls seine Begründetheit.”
• The Board explains that the renewal fees ensure both that only economically valuable patent applications (and patents) are kept in force and, together with the other fees, the general financing of the EPO. The renewal fees become due independently of any activity of the EPO other than the mere keeping of the file (r. 7.11).
• The inactivity was from May 2007 to February 2016. The application was handled by in house counsel of the applicant.

EPO Headnote
Die ursprünglich mit Rechtsgrund angeforderten und gezahlten Jahresgebühren wandeln sich durch eine zögerliche Tätigkeit des Amts im Prüfungsverfahren nicht nachträglich in rechtsgrundlos geleistete um (Punkt 7 der Entscheidungsgründe).


EPO T 2069/18 -  link



6. Da keiner der vorliegenden Anträge gewährbare Ansprüche beinhaltet, bleibt die Beschwerde in dieser Hinsicht ohne Erfolg.

7. Antrag auf Rückzahlung von Jahresgebühren

7.1 Die Prüfungsabteilung hat mit der angefochtenen Entscheidung auch den Antrag der Anmelderin auf Rückzahlung von 7 Jahresgebühren wegen wenigstens 7jähriger Untätigkeit der Abteilung im Prüfungsverfahren als unzulässig verworfen. Dazu hat sie als Begründung ausgeführt, dass die von der Anmelderin zitierten Vorschriften keinerlei Rechtsgrundlage für die Rückzahlung der mit Rechtsgrund gezahlten Jahresgebühren ergäben.

T 2704/16 - Refund appeal fee only

Key points

• In this examination appeal, the applicant had requested a refund of the appeal fee. The applicant then submits a letter stating that the appeal was withdrawn and requesting a decision according to the state of the file. The Register then explained (in a telephone conversation) that this contradictory. The appellant then conformed the intention to request a decision according to the state of the file. 
• Subsequently, the renewal fee is not paid, also not with an additional fee.
• This makes that the application is withdrawn. The Board still decides on the request for refund of the appeal fee and refuses it, because the appeal was not (actively) withdrawn. 
• " A withdrawal of an appeal must be expressed in unambiguous terms. The appellant's statement in his letter dated 18 May 2018 that the appeal was withdrawn was in direct contradiction to the request for a decision according to the state of the file, because a withdrawal of the appeal leads to the decision of the department of first instance taking legal effect without a decision by the Board. In view of this contradiction the letter dated 18 May 2018 did not contain a valid request for a withdrawal of the appeal." 

Reasons for the Decision

1. This decision only concerns the appellant's request for reimbursement of the appeal fee. No substantive requests can be considered as the application is deemed withdrawn pursuant to Article 86(1) EPC. The request for oral proceedings is considered withdrawn in view of the subsequent request for a decision according to the state of the file.

2. The appellant has not given any reason as to why the appeal fee should be reimbursed. The Board cannot see any such reason either. The legal basis for reimbursement of the appeal fee is provided for in Rule 103 EPC. According to this rule the appeal fee may be reimbursed if a substantial procedural violation occurred in the proceedings before the department of first instance (and certain additional conditions are fulfilled - see Rule 103(1)(a) EPC) or if the appeal has been withdrawn at a certain stage of the appeal proceedings (Rule 103(1)(b) and (2) EPC). However, neither of these conditions have been fulfilled in the case before the Board - the appellant has neither alleged a substantial procedural violation nor has he withdrawn the appeal.

3. A withdrawal of an appeal must be expressed in unambiguous terms. The appellant's statement in his letter dated 18 May 2018 that the appeal was withdrawn was in direct contradiction to the request for a decision according to the state of the file, because a withdrawal of the appeal leads to the decision of the department of first instance taking legal effect without a decision by the Board. In view of this contradiction the letter dated 18 May 2018 did not contain a valid request for a withdrawal of the appeal. The appellant's letter dated 11 June 2018 clarified the appellant's intention to request a decision according to the state of the file and not to withdraw the appeal.

Order

For these reasons it is decided that:

The request for reimbursement of the appeal fee is refused.

T 0395/16 - Appeal and deemed withdrawn application

Key points

• In this examination appeal, the applicant requested a reimbursement of the appeal fee. During the appeal period, the application became deemed withdrawn due to failure to pay the renewal fee. Does the Board needs to decide on the request for reimbursement of the appeal fee?
• The Board finds that it does need to decide based on G 8/91. 
• The alleged procedural violation was that a decision was taken at the oral proceedings that the professional representative could not attend because " the lack of instructions from its client [the applicant] due to serious and unexpected health problems experienced by the [CEO] of the applicant during the period between the deadline for filing the written submissions and the oral proceedings" 
• The Board finds that "the examining division had no reason not to proceed in its absence and no substantial procedural violation was committed". The Board also recalls that " [where] oral proceedings are held the decision taken orally becomes effective by virtue of its announcement and cannot be amended even by the department that issued it" .

EPO T 0395/16 - link

Reasons for the Decision

1. The appeal is admissible.

2. As announced with email dated 25 July 2017 the appellant did not attend the oral proceedings. In accordance with Rule 115(2) EPC and Article 15(3) RPBA, the proceedings were continued in its absence.

3. According to Rule 103(1) (a) EPC, the appeal fee is reimbursed when a board deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

3.1 A review of the decision under appeal, as to its merits, is no longer possible as the European patent application no. 07710600.3 was deemed to be withdrawn under Article 86(1) EPC and hence the appeal to this respect is not allowable.

T 1402/13 - Pending and renewal fee

Decision of 31 May 2016

Key point

• Under the EPC 2000, an application is not pending during the period for paying the renewal fee with surcharge unless the renewal fee is paid during that period.
• Note: Rule 51(2) EPC is changed as of 1 January 2017 to stipulate that the deemed withdrawal takes effect at the expiration of the grace period (OJ 2016, A102)

EPO Headnote

1. Whereas under Article 86(3) EPC 1973 loss of rights did not occur before the additional period of six months had elapsed, under the present Article 86(1) EPC loss of rights ensues upon expiry of the normal due date unless use is made of the remedy available under Rule 51(2) EPC (Reasons 4 to 4.6).
2. Under Rule 103(1)(b) and (2) EPC the termination of appeal proceedings caused by a loss of rights due to the non-payment of renewal fees cannot be equated to a declaration of withdrawal of the appeal (Reasons 5 to 5.6).

3. In order to claim entitlement to reimbursement under Rule 103(2) EPC, the appellant is required, at a time when its application is still pending, to make a procedural declaration that leaves no doubt that withdrawal of the appeal is intended (Reasons 6).

EPO T 1402/13 - link

Hat tip: Laurent Teyssèdre

Summary of Facts and Submissions

I. The appeal lies from the decision of the examining division dated 17 December 2012 to refuse European patent application No. 04782625.0. The appeal was filed on 13 February 2013 and the statement of grounds was submitted on 24 April 2013.

II. The renewal fee for the 12th year fell due on 31 August 2015 and had not been paid by that date.

III. On 18 February 2016, the appellant submitted a declaration stating that it "hereby withdraws their Appeal against the decision of the Examining Division upon the condition that the withdrawal is received in time to qualify for at least a 50% refund of the appeal fee."

IV. On 25 February 2016, the board issued an interlocutory decision stating that as long as the renewal fee and the additional fee had not been paid the withdrawal of the appeal could not take effect, since the appeal procedure had already been terminated beforehand as a consequence of the loss of rights due to the failure to pay the renewal fee in due time.

V. With a letter of 8 March 2016, the appellant declared that it did not challenge the board's interlocutory decision regarding the conditional withdrawal of 18 February 2016 but, instead, requested a 50% refund of the appeal fee based on the deemed withdrawal effect of the application and hence of the appeal under Article 86(1) EPC due to failure to pay the renewal fee by the due date.

VI. By 31 August 2015 the board had neither issued a preliminary opinion nor set a date for oral proceedings.

Reasons for the Decision

The appellant's request is admissible but not allowable.

1. The appellant's request is admissible.

The subject-matter of this request has not become res judicata. The board's intermediate decision dated 25 February 2016 also deals with a request for a 50% refund of the appeal fee, but this request was based on a different factual situation. The appellant is not challenging the board's decision that the condition for the declaration of withdrawal was not fulfilled but, with reference to the board's reasoning, argues that the deemed withdrawal of the appeal that had occurred on 31 May 2016 alternatively justified a claim for refund. Thus, the present request does not concern the same subject-matter as the request underlying the board's intermediate decision.

2. The board is in a position to give a final judgment on the appellant's request.

Whereas when the intermediate decision was taken it was still possible that the legal fiction of the deemed withdrawal of the application would be reversed, it is now clear that the application is deemed to have been withdrawn since the end of August 2015 (see points 3 and 4 below).