T 1057/24 - (II) Claim amendments after remittal

Key points

• "The board agrees with the parties that the case should be remitted to the opposition division for further prosecution.
• It does not, however, see any legal basis for [the opponent's] additional request that the further prosecution be limited to the claim request that was considered [by the Board] to comply with Article 123(2) EPC, [i.e. current] auxiliary request 5c."
• The Board gives an overview of the legal framework for the procedure after a remittal, which seems useful but not entirely complete. I cite it below, omitting the extensive case law references. See also the post on T 781/24.
• "The EPC contains no restrictions on the scope of examination following the remittal of a case by the board beyond those set out in Article 111(2) EPC [*]. This provision stipulates that, if the board remits a case [for] further prosecution to the department whose decision was appealed, that department is bound by the ratio decidendi of the board, in so far as the facts are the same. Findings of fact on which the board's decision rests are, thus, not open to reconsideration []. In opposition proceedings following the remittal for further prosecution, however, the factual basis underlying a decision on appeal may subsequently change [**], not only by the identification of further prior art, but also through amendments to the patent claims [***]. Such amendments are not precluded by the binding effect of Article 111(2) EPC, provided that they do not contravene the ratio decidendi of the remitting decision [].
• * - I don't think this is entirely correct: we also have the principle of res judicata and the continued application of the prohibition of reformatio in peius (the latter is not applicable in the case at hand since the proprietor had filed the appeal).
• ** - The meaning of the phrase "the factual basis underlying a decision on appeal" in this context is unclear to me. Was is clear, however, is that parties may, seek to introduce new assertions of facts after the remittal, and such factual allegations may or may not be admitted into the procedure. 
• *** - I don't think claim amendments are facts, see Art. 123(1) vs. Art. 114(2).
• "That is not to say that a patent proprietor should be free to redefine the claimed invention after remittal and have the opposition division examine any subject-matter that was not already settled by the appeal []). Further prosecution of a case after remittal should, as a rule, build upon the situation that existed at the end of the appeal proceedings that led to the remittal []). As was the case prior to the appeal proceedings resulting in the remittal, the opposition division has discretion to admit amended requests (Article 123(1) EPC, Rule 81(3) EPC) and may do so in application of established criteria, such as prima facie allowability, complexity of the amendments, procedural economy, the stage of the proceedings, and whether the amendments constitute a legitimate response to new developments in the proceedings []. Confining the further prosecution of a case after remittal to a particular claim request would, in effect, fetter that discretion thereby contravening the EPC."
• "In view of the above, it was decided to remit the case to the opposition division for further prosecution."

EPO 

The link to the decision is provided after the jump.

T 1057/24 - (I) Reasoning articulated only in the written decision

Key points

• The proprietor files a new auxiliary request with the Statement of grounds.
• "To correctly assess whether the claims of auxiliary request 5c should have been submitted in the proceedings before the opposition division it is necessary to take a closer look at the file history."
• "At the oral proceedings, the opposition division changed its view on feature 1.5 and concluded that the amendments to claim 1 of the patent as granted extended beyond the content of the application as filed."
• " In response thereto, the appellant [then the proprietor] filed nine sets of claims during the oral proceedings, including the claims of auxiliary request 5a "
• AR-5a was held not allowable.
• At that point in the oral proceedings, the appellant filed a further set of claims of auxiliary request 5b 
• "After discussion, the chairman announced that auxiliary request 5b was not admitted as it was not prima facie allowable in view of Article 123(2) EPC (point 10.7 of the minutes). Also the eight auxiliary requests filed during the oral proceedings together with auxiliary request 5a were not admitted."
• "Given that the appellant was afforded the opportunity to file, firstly, the claims of auxiliary request 5a and of eight further auxiliary requests and, subsequently, the claims of auxiliary request 5b, the board is in agreement with respondents I and II that also the claims of auxiliary request 5c could have been filed on either of those occasions during the oral proceedings."
• "Could" is not the relevant criterion, see Art. 12(6) RPBA.
• "Nevertheless, it should be borne in mind that the auxiliary requests filed at the oral proceedings were triggered by the opposition division's change in view on the allowability of the amendments to feature 1.5. Upon learning from the opposition division that the wording "in contact with" had a basis only in relation to an outer covering comprising a heating tape sublayer, the appellant sought to address this issue by filing nine sets of claims, ..."
• "To the extent that the rejection of auxiliary request 5a was predicated on the opposition division's view that it would be technically incongruous to install two different heating elements in the same hose, that objection concerned considerations of lack of clarity rather than compliance with Article 123(2) EPC. In any event, this reasoning was articulated only in the written decision effectively leaving the appellant with no opportunity to comment on it beforehand."
• This seems a substantial procedural violation. However, the Board approaches it differently.
• "[T]he board concludes that the circumstances of the appeal case justify admitting auxiliary request 5c into the proceedings (Article 12(6), second sentence RPBA)."
• Note, the phrase "the circumstances of the appeal case" is used in Art. 12(6) RPBA primarily to refer to developments in the appeal procedure, not evidently to circumstances of the procedure before the OD (to quote the explanatory remarks: "[The provision] allows for their admittance where the circumstances have changed at the appeal stage."
• The Board finds that the claims meet Art. 123(2).
• The Board also examines the claims for clarity (in line with G 3/14).
• The Board decides to remit the case for further prosecution.
• More on that aspect in a future post.

EPO 

T 0781/24 - Case amendments after remittal

Key points

• The Board in the first appeal remitted the case for further prosecution (i.e., not finding a set of claims to be allowable). Next, the proprietor changed their auxiliary requests. The OD did not admit the claim requests. The proprietor contests this finding in the second appeal.
• The proprietor argued that: "these requests were submitted after the case had been remitted to the opposition division for further prosecution and before the opposition division summoned for oral proceedings after remittal, therefore before the final date set under Rule 116(1) EPC. "
• The Board: "Whether or not amended sets of claims presented after the expiry of the time limit set under Rule 79(1) EPC should be considered in opposition proceedings does not merely depend on their filing within the time limit under Rule 116 EPC, but also on the specific circumstances of the case. If all new submissions received within the time limit according to Rule 116 EPC were automatically to be considered timely, the time limit set according to Rule 79(1) EPC would be rendered meaningless. Therefore, when determining whether amended requests, such as the main request and auxiliary requests 1 to 7, submitted within the time limit set under Rule 116 EPC, were filed in due time, it has to be taken into account whether these requests were submitted in direct and timely response to a change in the subject of the proceedings (see also T 364/20, reasons 7.2.4 and 7.2.6)."
• I think this approach is too strict for first-instance proceedings in general; it describes the procedural framework of Art. 13 RPBA for appeals. However, first instance proceedings are of a different, more administrative nature. Having said that, the Board correctly recalls that the time limit of Rule 79(1) EPC should not be meaningless.
• "The case at hand deals with the judicial review of a decision in post-remittal opposition proceedings. The board is convinced that, in exercising its discretion in such post-remittal proceedings, the opposition division generally should have due regard to the framework defined in the first appeal proceedings which resulted in the remittal. This requirement serves to safeguard the legitimate interests of other parties and the public."
• The point of case amendments after remittal is interesting, and does not come up in the case law very often. I don't recall the GL discussing it specifically either. The Board's discussion of the topic is extensive, and I recommend reading it entirely.
• "Although the board agrees that a patent proprietor is generally not barred from submitting requests that are consistent with the principles of res judicata and ratio decidendi, the patent proprietor is not at absolute liberty to file amended claim requests in opposition proceedings subsequent to a remittal without constraint, even though the order of the first appeal proceedings' decision in T 423/18 merely states that the "[T]he case is remitted to the opposition division for further prosecution", i.e. does not specify on which set(s) of claims this further prosecution is to be performed."
• "The board is of the view that further prosecution of a case after remittal must proceed, as a rule, on the basis of the situation prevailing at the conclusion of the first appeal proceedings that gave rise to the remittal (see also T 383/11, Reasons 1.4). This principle should be observed in post-remittal proceedings when assessing the admissibility of a party's submissions, notably where, as in the present case, the appellant-patent proprietor seeks to justify such requests as constituting a reasonable redefinition of fallback positions."
• I think the proposed criterion is "whether these requests were submitted in direct and timely response to a change in the subject of the proceedings after the Board's decision in the first appeal"

EPO 

The link to the decision is provided after the jump.

T 1092/23 - Replacing auxiliary requests after a remittal

Key points

• In this opposition case, the Board remitted the case in the first appeal for further prosecution, after finding that the then main request and AR-1 were not allowable. At that time, AR-2 to 10 were pending. The proprietor thereafter filed new claim requests in the procedure before the OD. The OD admitted these requests and found one of them to be allowable. The opponent is unhappy and appeals."The EPC does not contain any limitations beyond Article 111(2) EPC regarding the scope of examination after a case has been remitted by a board of appeal. The appellants have not demonstrated any such legal basis.
• The wording of the operative part [order of the decision in the first appeal] "remitted for further prosecution" cannot be interpreted as meaning that the scope of the examination is limited to the stage of the proceedings as it existed immediately before the Board of Appeal, in particular to auxiliary requests 2 to 10 pending at that time. Such an interpretation finds no support in the wording of the operative part."
• After the case has been remitted to the Opposition Division, the following general standards for the admissibility of requests apply, as they also applied in the first stage of the opposition proceedings. [...] ... even before the expiry of a period set under Rule 116(1) EPC for preparing oral proceedings, the opposition division has discretion not to admit requests unless they are admissible under another provision. The fact that an amendment is filed within the period under Rule 116(1) EPC does not mean that it must automatically be taken into account. The question raised by the appellants as to whether Rule 116(1) EPC applies only to the first summons to oral proceedings issued in the opposition proceedings is therefore irrelevant to the decision.
• In exercising discretion, the established criteria shall be taken into account, in particular prima facie admissibility, complexity, procedural economy, stage of the proceedings and a reaction to new developments in the proceedings."
• " In the present case, there is also no evidence of procedural abuse by the patent proprietor and current respondent."
• "In view of the foregoing, there is no exception in the present case to the principle referred to by the Board in its preliminary opinion, according to which there is no legal basis for excluding from the proceedings a request which the Opposition Division has admitted into the proceedings and on which it has decided on the substance"
• The Board finds the current Main Request to be allowable.
  
  
• The decision also includes the following paragraph, which seems very useful (in translation, point 1.10 of the reasons): "The opposition division's discretion to admit amended requests into the proceedings arises from Article 123(1) EPC, first sentence, in conjunction with Rules 79(1) and 81(3) EPC. According to Article 123(1) EPC, a European patent application and a granted European patent may be amended in proceedings before the European Patent Office within the framework of the Implementing Regulations. In opposition proceedings, Rule 79(1) EPC gives the patent proprietor the opportunity to make amendments to the description, claims, or drawings within a time limit set by the opposition division. The admission of more extensive amendments filed at a later stage in the proceedings, however, is subject to the discretion of the opposition division. This follows, inter alia, from Rule 81(3) EPC, which provides that the patent proprietor is given the opportunity to comment or amend "where appropriate", which implies a discretionary decision by the opposition division (in accordance with T 0966/17, point 2.2.1 of the Reasons)."
• So, it is not about Rule 80 EPC here.
• Rule 79 also recites "where appropriate". Rule 81(3) recites "the proprietor of the European patent shall, where necessary, be given the opportunity to amend, where appropriate, the description, claims and drawings."

EPO 

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

T 2178/22 - The weakest link and a remarkable remittal

Key points

•  This case concerns a patent with an independent claim 7 directed to a barly plant obtained by an essentially biological process. The patent has a filing date in 2011. In principle, claim 7 is therefore allowable, under G 3/19 but the opponents (which include some NGOs) still raise an objection under the clause of Art. 53(b) EPC about essentially biological processes for the production of plants or animals  (and requested a referral to the Enlarged Board for some questions). The OD found the claims allowable (also rejecting the inventive step objection).
• However, the Board does not tell us in the decision whether the OD was correct in this assessment under Article 53(b) because the Board perceives a substantial procedural violation in how the OD decided on inventive step (violation of the right to be heard of the opponent) and decides to remit the case on that ground - without deciding on the merits of the other grounds of opposition, which were independent and not affected by the procedural violation.
• I find this remarkable. Of course, some kinds of procedural violations vitiate the entire decision (wrong composition of the OD, partiality, and missing signatures in the decision). There may also be cases where the decision of the OD is based on only one ground (namely, if the patent is revoked on one ground). However, in the present case, the decision of the OD dealt with multiple separate grounds. I don't see why the Board cannot deal with the other grounds in the current decision. Procedural economy - or timeliness as an aspect of quality - requires the Boards to not unduly delay their appeal decision on the grounds not affected by the procedural violation.
• Incidentally, there was also an issue of the extent of opposition - were the independent claims 13-16 directed to a beverage (beer) opposed? This was discussed during the oral proceedings before the Board. The minutes indicated that thereafter, the Board asked if the OD's reasoning on inventive step was sufficient. It is not clear to me if any of the parties to the appeal had raised an issue under Rule 111(2) on that point, or if it was raised by the Board of its own motion.
• Furthermore, the deficiency of the OD's reasoning under inventive step concerns claim 1 for a process of making beer using barley. The OD had found that claim 7 directed to the (conventionally bred) barley plant was inventive. The Board does not identify a procedural defect on that reasoning (and does not arrive at the merits of the reasoning). The Board's problem is that the OD insufficienlty epxlained why claim 1 was also inventive. The reasoning of the OD was that claim 1 directed to a method of preparing a barlye based beverage specified "wherein the method involves reduced energy input, the method comprising the steps of: (i) providing a barley plant or part thereof, wherein said barley plant comprises: (a) a first mutation that results in a total loss of functional lipoxygenase (LOX)-1; and (b) a second mutation resulting in a total loss of functional LOX-2; and (c) a third mutation resulting in a total loss of functional S-adenosylmethionine:methionine S-methyltransferase (MMT); ... (iii) mashing said barley ... thereby obtaining a wort" and that features (a)-(c) defined the same plant as in claim 7. Hence, claim 1 specified the use of the inventive plant of claim 7. It is well-established that such a claim is then also inventive, even if all other features are routine (see GL G-VII,14: "Similarly, if the subject-matter of a product claim is new and non-obvious there is no need to investigate the novelty and non-obviousness of the subject-matter ... of any claims for a use of that product.") 
• Indeed, "the opposition division observed "that claim 1 relies on a method wherein plants with the same technical features as claim 7 are employed" (see point 20, last two lines)."
• The Board seems to see this differently: "since the method fails to limit the ingredients of the beverage to barley grains or specify their quantity or proportion, the board has doubts about the opposition division's implied conclusion that the properties of barley grains used necessarily impart a technical effect on the method of claim 1".
• The Board, in its preliminary opinion, refers to its earlier decision T 420/19 (post), where the issue under Article 53(b) was the same. 
• The patent was granted in 2016. The appeal was filed in 2022. 

EPO 

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

T 1865/23 - Intervention and remittal

Key points

• Yesterday's post demonstrated that Article 123(3) does not apply by analogy to the set of claims that the Board considers possibly allowable and which set of claims forms the basis for the Board's decision to remit the case. In other words, the claims can be broadened during the procedure before the OD after the remittal, compared to the set of claims on which the Board based its decision to remit.
• In today's decision about solar cells, a notice of intervention was filed in appeal (hi G 2/24) by "Commissariat à l'énergie atomique et aux énergies alternatives (CEA)". I checked the file, and apparently, this French public institute was sued for patent infringement by the proprietor, though the details are redacted in the file wrapper.
• Opponent 1 filed the appeal against the decision of the OD to maintain the patent in amended form. The proprietor withdrew their appeal during the oral proceedings before the Board. The main request is therefore the set of claims held allowable by the OD.
• The Board finds the main request to be unallowable (Article 123(2), intermediate generalisation)
• The Board admits AR-10 and finds it complies with Article 123(2)).
• The Board remits the case.
•   In the present case, in its statement of grounds for intervention [filed during the appeal hortly after the appeal proceedings began by the Notice of appeal Opponent 1 and the proprietor], Opponent 2 questioned the priority of the patent in suit, referred to further documents (D32 to D51) and also to documents D29 to D31, which the Opposition Division had not admitted, and raised further objections with reference to these documents. In its reply to the patent proprietor's statement of grounds of appeal, it also submitted the additional documents D52 to D57."
• "Since Opponent 2/Intervenor is entitled to challenge the patent in suit "by all available means", documents D32 to D51 and documents D29 to D31, which were not admitted by the Opposition Division, must be taken into account."
• It is unclear to me if Opponent 1 had objections of novelty and inventive step against AR-10 in appeal. 
• It is also not entirely clear to me if the proprietor may now shift the subject-matter compared to the claims held allowable by the OD in the first decision of the OD. I mean that set of claims contained an added feature, which had to be narrowed in appeal to address the Article 123(2) issues of intermediate generalisation. Apparently, the proprietor had defended broader claims in its own appeal, but there is no written decision of the Board on those requests because the proprietor withdrew its appeal.

EPO 

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

T 2194/22 - On res judicata and the binding effect of ratio decidendi

Key points

• This is a lengthy decision, and the second appeal in this opposition. The Board in the first decision held an auxiliary request to be inadmissible. The higher-ranking request was held to violate Art. 76(1) EPC. The auxiliary request at issue was filed during the oral proceedings before the Board.
• The issue was that the range of at least 50 % but less than 100%, as recited in the claim, was held to be not disclosed in the application as filed, wich mentioned "at least 50%" (this did not exclude 100% as in the claim) and "a majority" (which excluded 50%, as permitted by the claim). 
• In AR-I, a number of features were extracted from a table, omitting two parameters from the table. This was held to violate Art. 123(2).
• AR-2 new added a feature to AR-1, namely the missing features from the table. The Board did not admit this request, as it was filed during the oral proceedings only. 
• AR-2 old added features to claim 1 as granted, but did not address the feature of the range of 50 - < 100%. Hence, this request was not allowable.
• AR-III amended the range in AR-2 into "at least 75-95%"
• Clearly, there is a clarity issue with the amended range "at least 75-95 %" instead of 75-95% as recited in dependent claim 3. That same issue causes a problem under Art. 76 EPC. 
•  The case was remitted for AR-3.
• "Auxiliary request III is neither discussed nor substantively evaluated in the contested decision, since auxiliary request I was found to be allowable by the opposition division. Moreover, none of the parties provided arguments on this request in their written submissions, and none of the parties objected to the remittal of the case to the opposition division."
• The minutes state that the parties agreed with the Board's intention to remit. Still, it protracted the procedure by almost 4 years. The Board could have dealt with at least the formal requirements (Art. 123(2), Art. 84) before remitting.
• After the remittal, auxiliary III became the main request, and a new auxiliary request 1 was filed that was in substance the same as the request AR-2 new previously held inadmissible by the Board. The Main Request was held not allowable under Art. 76 because of the change of the original range 75-95% to "at least 75-95 %", which was taken to mean "at least 75%".
• The proprietor then essentially re-filed AR-2 new, with some minor amendments. This request was admitted by the OD and found to be allowable.
• The Board: "The current main request (identical to auxiliary request 1 filed on 11 February 2022) is not inadmissible for procedural reasons even though it corresponds (see 2.1.1) to auxiliary request II "new", which was filed during the oral proceedings before the Board in T 2371/18 and not admitted in the earlier decision of the Board for procedural reasons."
• "The Board does not share the appellant's view that a Board's decision not to admit a request is in any case absolutely binding in post-remittal proceedings as res judicata even if the facts underlying the decision are not the same."
• After an extensive analysis: "the Board's "decision" not to admit auxiliary request II "new" filed on 28 April 2021 in the earlier appeal proceedings which was only based on procedural reasons is not an absolute bar for reconsideration of an identical or equivalent request in proceedings subsequent to remittal."
• " The fact that in the case on file the Board's decision in T 2371/18 not to admit auxiliary request II "new" filed before the Board on 28 April 2021 is not an absolute bar for reconsidering an identical or equivalent request in post-remittal proceedings does not exclude the applicability of the binding effect of the ratio decidendi pursuant to Article 111(2) EPC. The latter allows reconsidering the Board's findings in as far as the facts the previous decision is based upon are not the same. The binding effect under Article 111(2) EPC is not, therefore, detrimental the flexibility needed to respond to a change of the relevant factual and procedural circumstances of the case and to guarantee fair proceedings."
• "Thus, a party's submission, such as a claim request that was not admitted for procedural reasons in the appeal proceedings, in particular for being late filed, is inadmissible under Article 111(2) EPC in post-remittal proceedings if the relevant facts for non-admittance remain the same."
•  "in the opposition proceedings subsequent to remittal, the procedural and factual circumstances within the meaning of Article 111(2) EPC indeed changed in so far as the opposition division issued a preliminary opinion on 15 October 2021 in which it presented a new objection under Article 123(2) EPC against the then pending auxiliary request III. This request had previously been filed on 28 November 2018 with the proprietor's statement of grounds of appeal in T 2371/18. Auxiliary request III filed on 28 November 2018 was not assessed in the Board's decision T 2371/18 but formed the basis for the remittal. In pursuing this request when re-entering opposition proceedings, the proprietor did indeed follow on from the situation that existed at the end of the first appeal proceedings."
• "The Board finds that the opposition division's decision to admit auxiliary request 1 (filed on 11 February 2022) was justified because it does not impinge on the relevant procedural principles. Rather, that request was a legitimate response to the new objection raised for the first time by the opposition division (see above 2.4.8), and it does not prejudice procedural economy."
  
  
• The Board, in a rather abstract analysis: "the binding effect following from the principle of res judicata is not always clearly distinguished from the binding effect of the ratio decidendi pursuant to Article 111(2) EPC in the case law of the Boards of Appeal, and the decisions are sometimes not consistent as to which principle applies in specific circumstances (see, for example, T 1545/08, Reasons 11 and 12 compared to T 308/14, Reasons 1.2 and 1.3). The differences between the binding effect of these principles are examined in the following (see points 2.2.4 and 2.2.5 below) for the case at hand." ...
•  " the principle of res judicata implies that the conclusive decision on a specific request is an absolute bar for reconsideration, i.e. irrespective of whether the facts are the same " ...
  
•   "The effect of res judicata has to be distinguished from the binding effect of the ratio decidendi"
• "The binding effect of the ratio decidendi is on the one hand narrower as it is limited to proceedings on the same application or patent following a remittal of the case and as it only applies in so far as the facts are the same. However, on the other hand, it is broader in so far as it is related to matters not covered by the res judicata but encompassed by the underlying reasoning (ratio decidendi) in the remittal decision. This means that only matter which is not covered by the res judicata, i.e. which is not finally settled, is open for reconsideration in post-remittal proceedings in as far as the facts are not the same (T 689/19, Reasons 4.5; T 449/15, Reasons 2.5). In contrast, matter which is finally settled is absolutely binding also in post-remittal proceedings, i.e. irrespective as to whether the facts are the same."
• As a comment, the above may be an accurate summary of the current case law, it also shows how complex the case law has become on this point. 
• It is remarkable that one of the two closely related principles is codified in the EPC, and the other one, in a sense, the stronger one, can not be found in the text of the EPC.
  
  
•  Separately: "the case law of the Boards of Appeal is not uniform on whether a Board is indeed competent to review such a (positive) decision of admittance in the same manner as a (negative) decision not to admit, i.e. whether the correct principles for exercising the discretion were applied in a reasonable way (G 7/93, Reasons 2.6). A review on the correct exercise was carried out in some decisions (T 960/15, Reasons 4 to 7; T 2197/11, Reasons 3.2.2 to 3.2.3; T 858/17, Reasons 2.4 to 2.6; T 572/14, Reasons 2.4 to 2.5; T 1209/05, Reasons 2.2 to 2.4), while others disregarded a review per se (T 617/16, Reasons 1.1.1; T 2049/16, Reasons 3.2; open in: T 467/15, Reasons 3.1; see also Case Law of the Boards of Appeal of the EPO, 10th edition, V.A.3.4.4). However, this discrepancy does not become relevant if - as in this case (see point 2.5.4 below) - the admittance of the request was justified when applying the correct principles."
  
  
• The patent was granted on a divisional application filed in 2012, with filing date in 2005. 

EPO 

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

T 0599/24 - Art. 113 and auxiliary requests, what about main request?

Key points

• The OD revoked the patent. The proprietor appeals. The issue before the OD was insufficient disclosure, Art. 100(b) EPC.
• In translation: " according to the minutes of the oral proceedings before the Opposition Division, the appellant [=proprietor] was not allowed to submit arguments concerning the auxiliary requests. Following the pronouncement of the Opposition Division's opinion that "the damage under Article 100(b) [was] irreparable" (minutes, point 8), the appellant indicated that it wished to rearrange the order of the auxiliary requests (minutes, point 8.2), which the Chairman did not allow (minutes, point 8.3). After the appellant then stated that it had no further comments concerning the main request (minutes, point 8.4), the Chairman began to pronounce the revocation of the patent (minutes, point 8.5). The applicant drew attention to the failure to comply with her request regarding the subsidiary requests (minutes 8.5 and 8.7). After deliberation with the division, the President indicated that the final decision had been given and that, consequently, the applicant's request could no longer be considered; the oral proceedings were then closed (minutes 8.10) without the applicant being given the opportunity to be heard on the subsidiary requests already in the file or to submit any amended requests."
• The Board considers this to be a substantial procedural violation.
• The Board also remits the case.
• The Board does not comment on the claims as granted.
• In appeal, "The appellant requested that the decision of the Opposition Division be set aside on the grounds of a substantial procedural violation (violation of the right to be heard) and that the case be remitted to the first instance. In addition, it requested reimbursement of the appeal fee."
• The respondent had contested the admissibility of the appeal: "the statement of grounds of appeal does not contain any substantive arguments concerning the reasoning of the decision under appeal, it meets the requirements of Rule 99(2) EPC and Article 12(3) RPBA. The only objection raised by the appellant in its grounds of appeal is that the decision is based on a violation of its right to be heard."
• The Board considered the appeal to be admissible: "In the present case, the grounds of appeal contain sufficient explanations as to why the appellant considers that its right to be heard was not respected and, therefore, that the contested decision should be annulled. In addition, the grounds set out the facts in detail with reference to the minutes of the oral proceedings before the Opposition Division."
• Now the question is: must the OD decide again on the sufficiency of disclosure of the claims as granted, or is this res judicata as not being contested in the appeal?

EPO 

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

T 0948/19 - Remittal for inventive step

Key points

• The Board considers the claims of an auxiliary request to be novel of the (pre-published) prior art, differently from the opposition division. The Board considers the claims of the main request to be not novel.
• The Board does not discuss inventive step. It is not clear to me if the added features of the auxiliary request are trivial or not. 
• "D1 discloses a distribution of slopes and baselines obtained prior to sensor insertion. However, D1 does not disclose the criteria according to which this selection is performed. Hence, D1 does not disclose that the calibration line selected from of multiple possible calibration lines is the one that has the slope and the baseline closest to the maximum joint probability of both the slope and the baseline."
•  The Board remits the case: "In this context, the following should be noted: In a last-instance decision, when a request is not allowed on other grounds it is normally superfluous to address further objections raised against that same request that were found unconvincing after having been discussed at oral proceedings. However, the situation is different for a decision of an opposition division, which may be the subject of an appeal. In this case, if the Board is not convinced by the reasons the opposition division gave in support of precluding the maintenance of the patent on the basis of a certain request, the lack of a decision to review in respect of the aforementioned further objections may result in a remittal for the consideration of said further objections, resulting in a delay in the proceedings."
• The Board does not indicate that the OD departed from the usual practice of the OD or from the Guidelines. I think the OD followed the normal practice of the first-instance departments. The Board nevertheless considers the result of this normal practice to be " a special reason within the meaning of Article 11 RPBA 2020".
• It is not clear to me if there were any specific reasons that prevented the Board from considering inventive step, like the parties not making any submissions on that topic in appeal (which possibly would be contrary to the instruction in the RPBA to present a complete case, incidentally).
• 
  EPO 

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

T 0898/21 - Harmless error rule

Key points

• "Harmless error is an error by a trial judge in the conduct of a trial that an appellate court finds was not damaging enough to the appealing party's right to a fair trial to justify reversing the judgment, or to warrant a new trial. Harmless errors include: technical errors that have no bearing on the outcome of the trial, ..." (https://www.law.cornell.edu/wex/harmless_error)
• The Board, in machine translation: "The board shares the appellant's [proprietor's] view that her right to be heard in accordance with Article 113(1) EPC was violated in the opposition proceedings. The opposition division stated in point 11 of the contested decision that the subject matter of claim 1 of [...]was not inventive, namely based  document  (Z1), in combination with the teaching of E4 []. The person skilled in the art would arrive at the subject matter of claim 1 without any inventive intervention."
• "The board agrees with the appellant that there is no record of the opposition division or the respondent having previously raised this objection in writing or orally. In their previous communications and in the discussion during the oral proceedings before the opposition division, only document E11 [] is mentioned as a starting point, while the question of inventive step is based on the technical knowledge or document Z1 in combination with the teaching of document E4 was not discussed according to the minutes."
• "The respondent [opponent] submitted that the outcome of the opposition division's deliberations would have been the same even if the appellant had had the opportunity to comment on this objection. [...] It is not immediately clear from the [proprietor's] arguments why the outcome of the decision would be different in the event of a remittance.  The board is not convinced by the respondent's arguments."
• "What is important is not whether the opposition division would have come to the same conclusion after hearing the parties involved on this objection, but whether the parties were given the opportunity to comment on this objection (Z1 as the closest prior art in combination with the teaching of E4). Such an opportunity was obviously not given, which was not disputed by the respondent. It should also be noted that an objection that took common general knowledge as a starting point was also not discussed in the opposition proceedings."
• The case is remitted, without a decision on the allowability of the claims. 
• Any reimbursement of the appeal fee is not discussed. 
• As a comment, I think the Board could have dealt with the allowability of the claims if the outcome had been clear. A remittal is discretionary, even in case of a substantial procedural violation.
• Whether or not indications of a different outcome are relevant for the question of reimbursement of the appeal fee in case of a remittal remains to be seen. If the Board had come to the conclusion that the claims were not allowable, the appeal would have been dismissed, and no reimbursement of the appeal fee would have been given.
• 
  

EPO 

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

T 2226/19 - Auxiliary Request, Art. 123(2), so remit

Key points

• The OD found the claims of the main request to be allowable. The Board finds them to lack an inventive step. The Board then arrives at the auxiliary request that was (timely) filed before the OD.
• The Board in translation: " In Annex 1 to the statement of grounds of appeal, the appellant [opponent] raised additional objections under Rule 80 EPC and Articles 56, 83, 84 and 123(2) EPC in connection with the pending auxiliary request I, which relate to the changes in auxiliary request 1 compared to the main application." 
• Note, using an Annex for these objections is accepted in this case under Art. 12 RPBA.
• " Because the opposition division was of the opinion that the patent based on the main request met the requirements of the EPC, the interim decision does not contain a substantive assessment of the patentability of the auxiliary request in the version of February 27, 2019. Consequently, the board would have to examine the auxiliary request which takes into account all further objections raised by the appellant under Rule 80 EPC and Articles 56, 83, 84 and 123(2) EPC." 
• " After considering the circumstances of the present case, the board concludes that the questions relevant to patentability in the present case, including, but not limited to, the examination of whether the requirements of Article 123(2) EPC and inventive step are met, may not be able to be decided without unreasonable effort. There are therefore special reasons for the case to be referred back to the lower court (Article 11 RPBA, Article 111 EPC)."
• As a comment, it does not seem unusual to me that there are additional objections from the opponent against the lower-ranking requests. 
• We will have to see how many years the opposition procedure will additionally take by the remittal. 
• 
  
• 
  
• EPO 

The link to the decision is provided after the jump.

T 1738/21 - OD should have heard witness

Key points

•  " The appellant [opponent] contended in its statement of grounds of appeal that its right to be heard was infringed during the opposition proceedings." 
• " The appellant argued that the opposition division should have heard the witnesses who had been offered to corroborate its case, before deciding that the alleged public prior use did not show a cut-off wheel with the features of claim 1 as granted." 
• " The board notes that it is established case law that an opposition division has violated an opponent's right to be heard under Article 113(1) EPC if witnesses have been offered in connection with the disclosure of certain features of an alleged public prior use considered as adequately substantiated, but the opposition division decides that the alleged public prior use does not constitute novelty-destroying state of the art without hearing the witnesses" 
• " Therefore, if witnesses have been offered to corroborate alleged facts which are decisive for the decision to be taken, then the opposition division should hear the witnesses regarding the alleged facts in order to be in a position to take a decision on the basis of all the available evidence" 
• "  It is therefore necessary to consider which alleged facts the appellants intended the witnesses to corroborate and if these facts were decisive for the outcome of the decision under appeal." 
• " Five witnesses were offered by the appellant (see notice of opposition, pages 5, 6 and 13) to corroborate the following alleged facts: ..."  
• " In the decision under appeal the opposition division found that the alleged public prior use cut-off wheel did not show the subject-matter of claim 1 because: (a) the public prior use cut-off wheel did not disclose a specific cut-off wheel with all the features of claim 1; and (b) it was not proven that the BAKELITE® coating was still present in the finished cut-off wheel. " 
• " In the board's view, the witnesses who had been offered, were in a position to corroborate the alleged facts which were found not convincing by the opposition division." 
• " The witnesses, Mr Härtelt and Mr Schmale, were however offered by the appellant to confirm the alleged fact that the public prior use cut-off wheel disclosed the features of claim 1 as granted, demonstrated by the list of materials E19 and the reinforcement scheme E20 as well as the declarations E15 and E17. Although witnesses should be heard in order to corroborate what has been alleged and not to fill in gaps in facts, additional clarifications provided by a witness to close a potential gap in the documentary evidence on file cannot be considered per se new facts, or the hearing of witnesses would be futile " 
• " The board can find no mention in the decision under appeal of the appellant's offer of witnesses nor any indication of the opposition division's reasons for not hearing the witnesses who were offered. The board therefore cannot review which principles the opposition division took into account, nor how it applied these principles, when it decided not to hear the witnesses."
• The opponent had re-iterated the witness offer in reply to the first summons, wherein the OD had indicated that it would not hear the witnesses. I note that re-iterating the request to hear the witnesses may be important to preserve the issue for appeal. 
• " Article 117(1) EPC and Article 113(1) EPC embody a basic procedural right, namely that a party can give evidence in an appropriate form and have that evidence heard. If the evidence offered relates to alleged facts that are decisive to the decision to be taken, the department hearing the case must as a rule order it to be taken" 
• " the appellant had also contested the opposition division's findings relating to inventive step of the claims of the granted patent, to which the respondent also provided its argument in its reply. Therefore, for the sake of procedural economy, the board also considered the question of inventive step, rather than remitting the case to the opposition division with no decision on this ground of opposition for the patent as granted." 
• " The appellant [opponent] has therefore convincingly shown that the opposition division was incorrect in finding that the subject-matter of claim 1 was inventive [over patent document E1]. The decision under appeal should therefore be set aside." 
• As to the remittal: The OD had not dealt with the auxiliary requests. The substantial procedural violation regarding the hearing of the witnesses is used by the Board as "special reason" under Art. 11 RPBA to remit the case. 
• As a comment, the Board does not indicate if the public prior use is relevant for the further examination of the auxiliary requests. If the substantial procedural violation has no effect on the examination of the auxiliary requests, then, in my view, it can hardly be considered as a "special reason" for remittal. 
• The Board also mentions the fact that the OD did not deal with the auxiliary requests as a special reason for remitting the case. That is clearly a reason for remitting, but I doubt if it can be considered special. 

EPO 

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

T 2845/19 - No derogation of Art. 123(3)

Key points

• The patentee amends the claims to bring them into conformity with the originally filed application in Japanese.
• "According to Article 14(2) EPC, a translation into one of the official languages of the EPO may, throughout proceedings before the EPO, be brought into conformity with the application as filed. During the opposition procedure, the proprietor filed amendments to the patent as granted in order to correct errors in the translation into English from the originally filed application in Japanese. These corrections were supported by [the Certified translation into English of the originally filed application in Japanese]."
• "According to Article 123(3) EPC, a European patent may not be amended in such a way as to extend the protection it confers. This requirement must therefore be met by claim 1 of the main request with respect to claim 1 as granted."
• After a review of the technical facts of the case, the Board concludes that: "it thus follows that claim 1 of the main request has been amended relative to claim 1 as granted in such a way as to extend the protection conferred by the European patent, contrary to the requirement of Article 123(3) EPC. The main request is therefore not allowable."
• Implicitly, Art. 14(2) provides no exception from Art. 123(2). In fact, in terms of the assessment under Art. 123(2), it is duplicative with Art.70(2). The meaning appears to be procedural and an exception to R. 137(3). Whether Art. 14(2) provides an exception to Art. 13(1) and (2) RPBA remains to be seen.
• The patentee had submitted an auxiliary request before the OD. The OD did not examine that request as it found the patent as granted to be allowable.
• " The respondent requested that the case be remitted to the department of first instance for further prosecution since the opposition division had failed to consider the auxiliary request on file before it, which allegedly amounted to a substantial procedural violation."
• The Board does not remit the case as a matter of its discretion. Hence, the auxiliary request is not examined in substance, neither for allowability nor admissibility. 
• I note that the auxiliary request was not discussed in the patentee's reply to the appeal. 

EPO  T 2845/19

T 0173/19 - The Board remits for inventive step

Key points

• This case concerns an opposition appeal. "Since the patent proprietor has convincingly demonstrated the incorrectness of the appealed decision as far as the alleged lack of novelty of the subject-matter of claim 1 of the main request with respect to D7 is concerned, and the opponents have not convincingly demonstrated that any of D1, D3 and D3' deprives the subject-matter of claim 1 of the main request of novelty, the appealed decision cannot be upheld and should be set aside."
• "The Board is aware that, according to Article 11 RPBA 2020 a remittal for further prosecution should only be undertaken exceptionally, when special reasons apply."
• "Noting that the opposition division has not addressed the issue of inventive step of the subject-matter claimed in the main request the Board cannot come to a decision regarding this patentability requirement by reviewing the decision under appeal in a judicial manner as set out in Article 12(2) RPBA 2020."
• "Moreover, although the patent proprietor has indicated its preference for dealing with the issue of inventive step at the oral proceedings before the Board, both opponents have expressed themselves in favour of a remittal referring to the complexity of the case and to the need for the parties to re-assess the case in view of the Board's conclusions on novelty."
• "Against this background, after considering all the relevant circumstances of the case at hand, the Board, noting that Article 11 RPBA 2020 cannot be seen as limiting the discretionary power of the Board provided by Article 111(1) EPC, considers it appropriate to remit the case to the opposition division for further prosecution."
• As a comment, the Board may of course mean that no provision in the RPBA can be seen as limiting any of the Board's discretionary powers under the EPC (which then should then logically apply equally to Article 12 or 13) or that the provision's wording "The Board shall not remit a case" should be understood as not limiting. 

EPO 

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

T 2558/18 - The Board invokes Art. 164(2) EPC

 Key points

• Published currently without comments. 
• A draft version of this post was inadvertently posted by mistake. Please see the retraction notice and message here. 
• The post title refers to the following part of the decision: “Der Vorrang von Artikel 111 EPÜ in der obigen Auslegung gegenüber Regel 71 (6) EPÜ in Bezug auf Änderungen ergibt sich aus dem EPÜ. Artikel 164 (2) EPÜ bestimmt ausdrücklich: Bei mangelnder Übereinstimmung zwischen Vorschriften des Übereinkommens und Vorschriften der Ausführungsordnung gehen die Vorschriften des Übereinkommens vor. Daraus folgt auch, dass Regel 100 (1) EPÜ, nach dessen Wortlaut Regel 71 (6) EPÜ betreffend Änderungen anwendbar wäre, im Einklang mit Artikel 111 EPÜ einschränkend - und diese Anwendbarkeit ausschließend - auszulegen ist. ”

T 2558/18 -

https://www.epo.org/law-practice/case-law-appeals/recent/t182558du1.html

In the below, formatting is only partially reinstated, please consult the PDF version of the decision for the original formatting.

Entscheidungsgründe

1. Mit der angefochtenen Entscheidung vom 4. Juni 2018 hat die Prüfungsabteilung den am 23. Februar 2018 eingereichten Anspruchssatz gemäß Regel 137 (3) EPÜ nicht zum Verfahren zugelassen, weil die Änderung in Anspruch 1 Artikel 111 (2) EPÜ widerspreche. Die deutliche Entscheidungsformel der Entscheidung der Beschwerdekammer in der Sache T 1891/12 vom 10. Juli 2017 habe zur Folge, dass die Unterlagen, d.h. Beschreibung, Ansprüche und Zeichnungen, res iudicata seien und nicht mehr angetastet werden könnten. Da der Hauptantrag nicht zum Verfahren zuzulassen sei und keine weiteren Anträge vorlägen, fehle ein im Verfahren befindlicher Anspruchssatz. Die Anmeldung erfülle daher nicht die Erfordernisse des Art. 78 (1) c) EPÜ. Deshalb könne ein Patent gemäß Artikel 97 (1) EPÜ nicht erteilt werden.

T 1111/16 - OD did nothing for 8 years; remittal

 Key points

• This is an opposition case for a patent with filing date in 2000 (Euro-PCT application). Granted in 2005. The Board decides to remit the case (in April 2021). So after more than 15 years opposition, the proceedings will continue.
• Oppositions filed in 2006. Reply patentee in 2007. Next action: request for transfer/name change in 2014. Summons in 2015. OD revokes the patent: claims as granted not novel (for one of the independent claims), AR-1 lacks basis under Article 123(2). Patentee appeals. 
• The Boards finds the Auxiliary Request, filed with the appeal, to have basis in the application as filed, to be sufficiently disclosed and novel.
• Then, novelty of the other independent claims is to be examined, as well as inventive step.
• The Board decides to remit the case.
• “Die Kammer stellte zudem fest, dass die Diskussion der Neuheit in Hinblick auf die Ansprüche 16 und 24 einen völlig anderen Gegenstand und andere Dokumente betrifft als die obige Diskussion der Neuheit von Anspruch 1.”
• “Das Beschwerdeverfahren wurde daher unter Geltung der Verfahrensordnung der Beschwerdekammern 2007 begonnen und auf den in der angefochtenen Entscheidung diskutierten Gegenstand fokussiert. Dieses Vorgehen entspricht dem auf Überprüfung gerichteten Zweck des verwaltungsgerichtlichen Einspruchsbeschwerde-verfahrens, der von der neuen Verfahrensordnung noch weiter in den Vordergrund gestellt wird”
• “Auch wenn wie im vorliegenden Fall die Einsprüche gegen das Patent erst mehr als 8 Jahre nach Eingang der Einsprüche von der Einspruchsabteilung bearbeitet wurde und damit das Einspruchsverfahren unüblich lange dauerte, spricht dies nicht zwingend gegen die Zurückverweisung an die Einspruchsabteilung zur weiteren Entscheidung.”

T 1111/16 -

https://www.epo.org/law-practice/case-law-appeals/recent/t161111du1.html

11. Zurückverweisung an die Einspruchsabteilung

Gemäß Artikel 111(1) EPÜ kann die Beschwerdekammer entweder im Rahmen der Zuständigkeit des Organs tätig werden, das die angefochtene Entscheidung erlassen hat, oder die Angelegenheit zur weiteren Entscheidung an dieses Organ zurückverweisen.

In der Mitteilung nach Artikel 15(1) VOBK 2007 vom 9. Juli 2019 wies die Kammer verfahrensleitend darauf hin, dass die Beurteilung der Neuheit der unabhängigen Ansprüche 16 (Verfahren) und 24 (Vorrichtung) sowie der erfinderischen Tätigkeit nicht Gegenstand der angefochtenen Entscheidung und im Rahmen des Einspruchsverfahrens nicht abschließend erfolgt ist.

Die Kammer stellte zudem fest, dass die Diskussion der Neuheit in Hinblick auf die Ansprüche 16 und 24 einen völlig anderen Gegenstand und andere Dokumente betrifft als die obige Diskussion der Neuheit von Anspruch 1. Insbesondere sind andere Merkmale streitig, wie beispielsweise die Ausbildung eines longitudinalen Magnetfelds anstelle der in Hinblick auf den Schichtaufbau wichtigen Punkte der chemischen Zusammensetzung der Schichten und ihrer inhärenten Eigenschaften.

Da das Beschwerdeverfahren in erster Linie der Überprüfung der erstinstanzlichen Entscheidung dient, ist es gängige Praxis der Kammern, die Angelegenheit zurückzuverweisen, wenn wesentliche Fragen zur Patentierbarkeit des beanspruchten Gegenstands von der erstinstanzlichen Abteilung noch nicht geprüft und entschieden worden sind (Rechtsprechung der Beschwerdekammern, a.a.O., Kapitel V.A.7.4).

Das Beschwerdeverfahren wurde daher unter Geltung der Verfahrensordnung der Beschwerdekammern 2007 begonnen und auf den in der angefochtenen Entscheidung diskutierten Gegenstand fokussiert. Dieses Vorgehen entspricht dem auf Überprüfung gerichteten Zweck des verwaltungsgerichtlichen Einspruchsbeschwerde-verfahrens, der von der neuen Verfahrensordnung noch weiter in den Vordergrund gestellt wird (vgl. Artikel 12(2) VOBK 2020).

Diese gängige Praxis wird durch die neue Verfahrensordnung nicht ausgeschlossen. Gemäß Artikel 11 VOBK 2020 sind zwar besondere Gründe für eine Zurückverweisung erforderlich. Diese Gründe sind gemäß dem Wortlaut des Artikels 11 VOBK 2020 aber nicht darauf beschränkt, dass ein Verfahrensfehler seitens der Einspruchsabteilung vorliegt. Insbesondere kann auch berücksichtigt werden, ob die Kammer alle relevanten Fragen mit angemessenem Aufwand entscheiden kann (vgl. Tabelle zu den Änderungen der VOBK mit Erläuterungen, Artikel 11, vom 3. Juli 2019), was vorliegend nicht der Fall ist.

Auch wenn wie im vorliegenden Fall die Einsprüche gegen das Patent erst mehr als 8 Jahre nach Eingang der Einsprüche von der Einspruchsabteilung bearbeitet wurde und damit das Einspruchsverfahren unüblich lange dauerte, spricht dies nicht zwingend gegen die Zurückverweisung an die Einspruchsabteilung zur weiteren Entscheidung.

Die Kammer vermag auch der Auffassung der Beschwerdegegnerin 1 nicht zu folgen, dass es sonst in der Hand der Beschwerdeführerin liege, das Verfahren beliebig zu verlängern. Dies ist weder unter der Geltung der alten noch der neuen Verfahrensordnung der Fall. Es handelt sich vielmehr um eine Ermessensentscheidung der Kammer unter Abwägung der hier diskutierten Argumente.

In Anbetracht der vorliegenden besonderen Gründe nach Artikel 11 VOBK 2020 ist eine Zurückverweisung der Angelegenheit an die Einspruchsabteilung in diesem Fall daher gerechtfertigt.

T 0329/16 - Respondent should reply

 Key points

• The OD found claim 1 to be not novel. The patentee appeals. The opponent presents inventive step attacks only during the hearing before the Board. The Board does not admit the attack.
• The Board in machine translation: “Although it is true, as pointed out by the opponent, that the opposition division denied the novelty of the subject-matter of claim 1 of auxiliary request 1 in its decision, the Board holds that the opponent had the obligation to substantiate the corresponding objections of lack of inventive step in its response to the appeal. In this context, it should be taken into account that the patent proprietor has presented in detail in its statement of grounds on the question of the novelty of the subject-matter of claim 1 []. With regard to this submission by the patent proprietor, the opponent could not trust that the board would agree with the opposition division's view. It was therefore an obligation of the opponent to react to the corresponding statements of the patent proprietor in their response to the appeal and to submit their corresponding objections to a lack of inventive step in a substantiated manner.
• A mere general remark that inventive step is contested is not enough, neither suffice the submissions regarding inventive step before the OD.
• As the attacks are not admitted, the case is neither remitted to the OD for consideration of inventive step.

T 0329/16 -

https://www.epo.org/law-practice/case-law-appeals/recent/t160329du1.html

6.8 Aus diesen Gründen ist die Beschwerdekammer zu dem Schluss gelangt, dass das Merkmal A7 des Anspruchs 1 gemäß Hilfsantrag 1 aus D12 nicht bekannt ist. Somit ist der Gegenstand des Anspruchs 1 des Hilfsantrags 1 gegenüber D12 neu.

7. Hilfsantrag 1, Zulassung von Einwänden mangelnder erfinderischer Tätigkeit

7.1 Während der mündlichen Verhandlung vor der Beschwerdekammer erklärte die Einsprechende, Einwände mangelnder erfinderischer Tätigkeit gegen den Gegenstand des Anspruchs 1 des Hilfsantrags 1 ausgehend von D12 in Verbindung mit dem allgemeinen Fachwissen bzw. in Verbindung mit D9 erheben zu wollen. Die Einsprechende stellte den Antrag, die Angelegenheit zur Prüfung der erfinderischen Tätigkeit des Hilfsantrags 1 an die erste Instanz zurückzuverweisen.

T 1294/16 - (II) Inventive step

 Key points

• “Under Article 56 EPC 1973, the only relevant question is whether the skilled person, having regard to the state of the art, would find the claimed invention to be obvious. This does not exclude the skilled person starting their considerations from any piece of prior art they might be aware of. Thus, the choice of the starting point is not restricted. ”
  
  
• On the right to be heard before the Examining Division: “The appellant submits that in the oral proceedings before the Examining Division only D2 was considered as the "closest prior art" in the framework of the "problem and solution approach", whereas the decision is based on document D1 as "closest prior art". The applicant was not heard on the grounds that led to the refusal, in breach of Article 113(1) EPC 1973.”
• “In its preliminary opinion [], the Board expressed its doubts, stating, with reference to passages from the minutes, that it seemed to be "at least implicit" that both D1 and D2 had been considered as closest prior art by the Examining Division. The appellant takes issue with the idea that an only "impli­cit discussion" could be sufficient to satisfy the appellant's right to be heard under Article 113(1) EPC 1973 and asks the Board to submit that question to the Enlarged Board. ”
• “The board takes the view that a potential violation of the appellant's right to be heard by the Examining Division would have no impact on the present decision, as the appellant did not contest that the right to be heard on the matter was respected by the Board. The appellant acknowledged to have had ample opportunity to present its case before this Board. In particular, it was discussed what is the appropriate starting point ("closest prior art") for the assessment of inventive step, the Board explicitly considered both D1 and D2 as possible "closest prior art" documents, and the appellant was given several opportunities to file amendments at a very late stage of the proceedings.”
  
  
• “The Board does not dispute that a technical effect might be obtained [by the feature of the claimed computer-implemented method] under some circumstances. But this is not sufficient for acknowledging an inventive step, because those circumstances are not claimed (nor are they in fact made clear by the description), which means that the effect is not obtained over the full breadth of the claim, which in turn leads to the conclusion that at least a subset of the claimed matter is not to be seen as a technical solution to a technical problem and hence cannot be acknowledged as an invention involving an inventive step ”

T 1294/16 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t161294eu1.html

Starting point (closest prior art)

3. The Examining Division considered that claim 1 of the main request lacked an inventive step starting from document D1.

4. The appellant (page 4 of the grounds of appeal) disagrees with the choice of D1 as "closest prior art" and submits that D2 should instead be the "closest prior art", because D2 has, or at least mentions, the same purpose, i.e. a search for a model in an image, whereas D1 is only about defect detection. In support, the appellant quotes the "Case Law of the Boards of Appeal" (I.D.3.1, seventh edition; same section in the ninth edition) stating:

The boards have repeatedly pointed out that the closest prior art for assessing inventive step is normally a prior art document disclosing subject-matter conceived for the same purpose or aiming at the same objective as the claimed invention and having the most relevant technical features in common.

5. This Board endorses the opinion that a document with a different purpose can be selected as a starting point in an inventive step analysis (see, e.g., T 1742/12, points 9 and 10). Under Article 56 EPC 1973, the only relevant question is whether the skilled person, having regard to the state of the art, would find the claimed invention to be obvious. This does not exclude the skilled person starting their considerations from any piece of prior art they might be aware of. Thus, the choice of the starting point is not restricted. The Board notes that the above passage quoted by the applicant is a rule which states which document is "normally" (not "always") to be chosen as closest prior art. This rule is employed for efficiency reasons, but it cannot be taken to exclude the selection of different prior art as a starting point and thus as "closest prior art" (see T 0694/15, point 13; T 0405/14, point 19; T 0816/16, point 3.7.1).

6. Considering the situation as put forward by the appellant, the fact that a document has a different purpose than the invention does not mean that it cannot lead to a finding of obviousness. There can be obvious reasons for using the teachings of the document for the claimed purpose, e.g. when the skilled person reading it knows that the teaching can be used, as it is or analogously, for that purpose.

[...]

25. In response to this second point, the Board recalls that it is of constant jurisprudence that only features contributing to the solution of a technical problem by providing a technical effect can contribute towards a finding of inventive step (T 0641/00 Two identities/COMVIK, point 6). This is because the EPC provides for protection of inventions, which require a technical solution to a technical problem (Rule 27(1)(c) EPC 1973). It is the (claimed) invention, i.e. the technical solution, that needs to involve an inventive step (Articles 52 EPC and 56 EPC 1973) for a patent to be granted.

26. In response to the first set of arguments (point 23. above), the Board first remarks that, whichever way the data is arranged, the number of operations (data read-outs, additions, multiplications) cannot change, because the computation of the NCC requires all data to be read and the same products to be computed and added.

26.1 So, if there is any speed-up, it must come from a faster data read-out, caused by the allegedly simpler structure. This, however, cannot be assessed without information on the software and hardware architecture. Such information is not provided, neither in the claim, nor in the description. A simpler indexing structure does not necessarily translate to a faster read-out. This depends on a number of factors, including the data structures allowed by the programming language, the memory management, the compiler design etc. If, for instance, the programming language is optimized for treating RGB images in the standard 3-plane format (see D6), then forcing a rearrangement of the data matrix will actually reduce performance. There is no information in the description allowing to assess this.

26.2 The Board does not dispute that a technical effect might be obtained under some circumstances. But this is not sufficient for acknowledging an inventive step, because those circumstances are not claimed (nor are they in fact made clear by the description), which means that the effect is not obtained over the full breadth of the claim, which in turn leads to the conclusion that at least a subset of the claimed matter is not to be seen as a technical solution to a technical problem and hence cannot be acknowledged as an invention involving an inventive step (see also T 0939/92, points 2.4 to 2.6).

27. Regarding the argument as to the convenience for the programmer, i.e. easing the programming effort, this, in principle, cannot be considered to define an invention at all (T 1539/09, Catchword). Arguendo, even if that could be the case, the technical effect cannot be objectively assessed here, because on the one hand the programming language is not specified, and because on the other hand the answer is a matter of subjective preference: while writing code with only two loops may be more convenient, the indexes will no longer intuitively directly represent the standard RGB format, making code reading less convenient.

28. Thus the claimed data transformation means does not solve any technical problem at all, and hence cannot contribute to a finding of inventive step. As in the case of the main request, claim 1 of this request lacks inventive step starting from D1 in view of the common knowledge in the art or from D2 in view of D1 and the common knowledge in the art.

[...]

Alleged procedural violation

37. The appellant submits that in the oral proceedings before the Examining Division only D2 was considered as the "closest prior art" in the framework of the "problem and solution approach", whereas the decision is based on document D1 as "closest prior art". The applicant was not heard on the grounds that led to the refusal, in breach of Article 113(1) EPC 1973.

38. The minutes of those oral proceedings mention that the "preliminary opinion of 23-11-2015" was discussed (1st page, paragraph 4), especially its "section 1.3.2" (pa­­ra­graph 10), and state (1st page, last sentence, to 2nd page, 1st paragraph) that the "Art 52 objection of the preliminary opinion under point 1.3.2 was withdrawn" and that "the Art 52 objections raised in sec­tion 1.5 [...] were maintained". There is no point 1.5 in the preliminary opinion of 23 November 2015. The summons to oral proceedings dated 5 June 2015 contain objections starting from both D1 and D2 (in combination with D1) in points 1.4 and 1.5. The discussion during the oral proceedings then focused on the teachings of D1 (2nd page, top: "fills the gaps of D1"; further down "The contiguous data is not explicitly disclosed in D1").

39. Thus, on the basis of the examination file itself, it appears that it was at least implicit during the oral proceedings, i.e. it should have been known to the applicant that both D1 and D2 were considered as "closest prior art".

40. The appellant disagreed. It was clear during the oral proceedings before the Examination Division that the starting point was D2. The arguments were different if one started from D1 or D2. The case could then have been argued differently.

41. The Board is not in a position to verify this allegation. It would have been for the members of the Examining Division to do so had the applicant contested the minutes of the oral proceedings before the division. Thus, the Board cannot find that a (substantial) procedural violation took place.

The request for referral to the Enlarged Board

42. The appellant argued that the Examining Division had based its decision on D1 as closest prior art that had not as such been discussed during the oral proceedings. In its preliminary opinion (see points 5.3 and 5.4), the Board expressed its doubts, stating, with reference to passages from the minutes, that it seemed to be "at least implicit" that both D1 and D2 had been considered as closest prior art by the Examining Division. The appellant takes issue with the idea that an only "impli­cit discussion" could be sufficient to satisfy the appellant's right to be heard under Article 113(1) EPC 1973 and asks the Board to submit that question to the Enlarged Board.

43. The board takes the view that a potential violation of the appellant's right to be heard by the Examining Division would have no impact on the present decision, as the appellant did not contest that the right to be heard on the matter was respected by the Board. The appellant acknowledged to have had ample opportunity to present its case before this Board. In particular, it was discussed what is the appropriate starting point ("closest prior art") for the assessment of inventive step, the Board explicitly considered both D1 and D2 as possible "closest prior art" documents, and the appellant was given several opportunities to file amendments at a very late stage of the proceedings.

44. Hence, the answer to the question the appellant asks the Board to refer would have no consequences on the present case, so that a decision is not required (Article 112(1)(a) EPC 1973).

Order

For these reasons it is decided that:

The appeal is dismissed.

T 0795/19 - Appeal fee refund

 Key points

• Both the patentee and the opponent appealed. The Board concludes that the patentee has shown that the impugned decision is incorrect in finding claim 1 as granted to be not novel and decides to not admit the opponent's inventive step attack such that the patent is to be maintained as granted. The opponent had withdrawn its request for oral proceedings within one month from the preliminary opinion. Hence, oral proceedings are not necessary. The appeal fee is to be refunded at 25% to the opponent. 
• The question is whether the patentee also gets a 25% refund because T0488/18 held that Rule 103(4)(c) does not require that the appellant withdraws its own request for oral proceedings.  In that case, the Board found that the appellant got the partial refund because the respondent (not the appellant) withdrew their request for oral proceedings.
• The present Board follows T0777/15 in finding that a party who withdraws its own request for oral proceedings, is given the partial refund. 
•  Moreover, it is not enough that patentee's request for oral proceedings is mooted by patentee's main request being allowable.
  
  
• The opponent's request for remittal is held inadmissible (is disregarded) under Article 13(2) RPBA already on the ground that opponent had not indicated any exceptional circumstances for filing that request late.
• “Die Einsprechende hat es entgegen der Erfordernisse des Artikels 13 (2) VOBK 2020 versäumt, zu einem Vorliegen außergewöhnlicher Umstände, die eine Änderung ihres Beschwerdebegehrens rechtfertigen könnten, vorzutragen, so dass der Antrag auf Zurückverweisung der Angelegenheit an die Einspruchsabteilung bereits deshalb unberücksichtigt zu bleiben hat.”

Sachverhalt und Anträge

I. Die Patentinhaberin und die Einsprechende legten jeweils frist- und formgerecht Beschwerde gegen die auf den 14. Januar 2019 datierte Entscheidung der Einspruchsabteilung ein, mit welcher das europäische Patent 2 536 442 unter Berücksichtigung der von der Patentinhaberin im Einspruchsverfahren vorgenommenen Änderungen in geänderter Fassung aufrechterhalten wurde.

II. Der Einspruch richtete sich gegen das Streitpatent im gesamten Umfang und stützte sich auf Artikel 100 a) und 54 EPÜ (Neuheit).

III. In einer auf den 5. Februar 2021 datierten Mitteilung nach Artikel 15 (1) VOBK 2020 teilte die Kammer den Parteien ihre vorläufige Beurteilung der Sach- und Rechtlage mit, wonach die Beschwerde der Patentinhaberin voraussichtlich erfolgreich sein dürfte.

IV. Mit Schriftsatz vom 25. Februar 2020 verzichtete die Einsprechende auf eine Durchführung der von ihr hilfsweise beantragten mündlichen Verhandlung und stimmte einer Fortsetzung des Verfahrens als schriftliches Verfahren zu.

[...]

3.5 Der Einwand der mangelnden erfinderischen Tätigkeit der Unteransprüche ist daher gemäß Artikel 12 (4) VOBK 2007 im Verfahren nicht zu berücksichtigen.

3.6 Entsprechend ist der Antrag auf Zurückverweisung der Angelegenheit an die Einspruchsabteilung, um die Prüfung des Einspruchs im Umfang der mangelnden erfinderischen Tätigkeit der Unteransprüche des Hauptantrags fortzusetzen, unbegründet.

T 1860/17 - No remittal, Board examines 9 AR's

Key points

• The OD found the claims as granted allowable. The opponent appeals.  The Board finds the claims as granted to be obvious. In the first instance proceedings the patentee had filed AR-1 to 9, the patentee had maintained these requests with their Appeal Reply Brief. After the Board's conclusion on the main request, the Patentee requests that the case be remitted for consideration of these requests. The opponent opposes the requested remittal. Note, these requests had not been considered by the OD. So either the Board considers these requests for the first time in appeal or remits the case.
• The Board recalls that under Article 111(1) it has a discretionary power to remit the case or not. The Board does not expressly recall Article 11 RPBA 2020.
• The Board decides to not remit the case. The Board, in translation: “In the present case, auxiliary requests 1-9 undisputedly relate to combinations of granted claims. In addition, the appellant/opponent commented in detail on the dependent claims of the patent in suit in their statement of grounds (pages 19-21). The respondent/patent proprietor was thus prepared to discuss, in particular, the inventive step of these claims. Ultimately, there is a general public interest in achieving legal certainty in the matter as quickly as possible. A remittal, which always opens up the possibility of a further appeal, does not serve this interest and is always weighed against the interest of the parties in being able to present their arguments in two instances. In the present case, it must be taken into account that the opponent did not agree to the request for remittal and the patent has a priority date from 2010 already. In the opinion of the Board, both are weighty reasons that speak against remittal”.
• The Board finds all requests to be obvious starting from the same document D2 as for the main request.
  
  
  
• The Board, on the admissibility of some other auxiliary requests, notes that convergence as a factor for admissibility does not apply to the first instance proceedings and neither to the admissibility in appeal of requests filed and maintained in the first instance proceedings. “Allerdings betrifft die Rechtsprechung der Beschwerdekammern zur Nicht-Zulassung von nicht konvergierenden Hilfsanträgen hauptsächlich Anträge, die erst nach Beschwerdebegründung bzw. Erwiderung eingereicht wurden, und somit dem Ermessen der Kammer nach Artikel 13 VOBK unterlagen, vgl. RdBK V.A.4.12.4 und die darin zitierten Entscheidungen. Diese Rechtsprechung ist daher im vorliegenden Fall nicht einschlägig und stellt kein Hindernis für die Zulassung der Hilfsanträge 3, 8 und 9 dar.”

T 1860/17 -

https://www.epo.org/law-practice/case-law-appeals/recent/t171860du1.html

6. Hilfsanträge - Zulassung zum Verfahren

6.1 Die Hilfsanträge 1-9 wurden bereits im Verfahren vor der Einspruchsabteilung gestellt und mit der Erwiderung der Patentinhaberin vom 9. März 2018 auf die Beschwerdebegründung erneut gestellt. Die Beschwerdeführerin Einsprechende bestreitet die Zulassung der Hilfsanträge 3, 8 und 9 mit dem Argument, dass die geänderten unabhängigen Ansprüche in diesen Anträgen nicht gegenüber dem in höherrangigen Anträgen beanspruchten Gegenstand konvergieren.

Allerdings betrifft die Rechtsprechung der Beschwerdekammern zur Nicht-Zulassung von nicht konvergierenden Hilfsanträgen hauptsächlich Anträge, die erst nach Beschwerdebegründung bzw. Erwiderung eingereicht wurden, und somit dem Ermessen der Kammer nach Artikel 13 VOBK unterlagen, vgl. RdBK V.A.4.12.4 und die darin zitierten Entscheidungen. Diese Rechtsprechung ist daher im vorliegenden Fall nicht einschlägig und stellt kein Hindernis für die Zulassung der Hilfsanträge 3, 8 und 9 dar. Die Zulassung der Hilfsanträge 1, 2 und 4-7 wurde nicht gerügt, und die Kammer sieht aufgrund der darin enthaltenen Änderungen, die auf Kombinationen von erteilten Ansprüchen gerichtet sind, ebenfalls keinen Grund, der gegen die Zulassung dieser Hilfsanträge zum Beschwerdeverfahren spricht.

Aus diesen Gründen entschied die Kammer, die Hilfsanträge 1-9 in das Verfahren zuzulassen (Artikel 12(4) VOBK 2020).

6.2 Die Vorlage der Hilfsanträge 0 und 0' erfolgte erst in der mündlichen Verhandlung vor der Kammer. Diese verspätet vorgelegten Hilfsanträge stellen geändertes Vorbringen dar, dessen Zulassung nach Maßgabe der Erfordernisse des Artikels 13 VOBK 2020 erfolgt.