T 0433/21 - (I) Retraction withdrawal appeal

Key points

• The Examining Division refused the application. The applicant appeals.
• After a " rather negative" communication of the Board: " In a submission dated 29 December 2022, the then appellant wrote the following: "In the name and on behalf of the applicant, Phoslock Pty Ltd., our appeal filed on February 9, 2021 against the decision of the examining division of December 1, 2022 is hereby withdrawn"" 
• Oral proceedings were cancelled, and fees were refunded.
• " With a submission dated 20 January 2023, the appellant who henceforth is referred to as "the petitioner" made the following requests: "1. Es wird beantragt, den im Schreiben vom 29. Dezember 2022, eingereichten Antrag auf Basis der Regel 139 EPÜ oder aufgrund allgemeiner Rechtsgrundsätze nach Art 125 EPÜ, dahingehend zu korrigieren, dass dieser als Antrag auf eine Teilanmeldung verstanden wird, wie er mit Aktenzeichen 23152685.6 am heutigen Tage beim EPA eingereicht wurde.
• The petitioner submitted that: "it had always been the intention of the petitioner to file a divisional application rather than to withdraw the appeal".
• The Board: "an error caused by miscommunication between the applicant and the representative or by an incorrect recollection of the applicant's instructions [cannot] be regarded as an error under Rule 139 EPC", hence there is no correctable error if the document filed with the EPO is deemed to express the representative's intention at the time of filing"
• The Board is of the view that it has to decide on the request for retraction of the withdrawal. This procedure, however, does not reopen the appeal as such if the retraction is not accepted. 
• The Board disagrees with T 0695/18 that a correction of a withdrawal of an appeal is never possible. I think the position of the present Board is reasonable. 
• The Board introduces a difference in legal status between a same-day retraction and a later retraction. Same day would be possible because "one day is the smallest temporal unit" in the context of the EPC.
• I am not entirely sure if one day is the smallest temporal unit for written proceedings before the EPO in all contexts, see T1946/21 (though that decision  may be largely obsolete after G1/22)
• "Only a withdrawal made during oral proceedings becomes immediately effective. This is nonetheless based on procedural reasons, and not on substantive ones, since either the oral proceedings are declared closed with the effect of res iudicata, or (in the case of appeal and cross-appeal) a subsequent retraction still during oral proceedings would have to be examined in the same way as a late-filed request. "
• The Technical Board: "The public would be ill-served by well-meant, yet ill-explained exceptions to seemingly strict rules in order to do justice to individual cases. Such case-specific exceptions invariably lead to uncertainty and entice litigation. The above considerations apply all the more since the typical users of the European patent system are professional representatives (mandatory for applicants not resident in [a contracting state of the EPC]) who have passed a qualifying examination and do not need special protection for inexperienced users."
• "In the case at issue, the petitioner declared a withdrawal of the appeal, yet in fact had received instructions to file a divisional application and withdraw the appeal. Although the petitioner first argued that the withdrawal was meant to be the filing of a divisional application, during oral proceedings it was submitted that the declaration to withdraw the appeal was not erroneous, but incomplete, and the error was the omission to (additionally) file a divisional application, as if one page of the document as submitted on 29 December 2022 had gone amiss."
• Note that evidence must be available of the true intent at the relevant time.
• "the Board finds that in the present case the representative made an error by omission, but not an omission concerning the content of the document that was actually filed, but an omission to carry out the client's instructions. The omission of a procedural act cannot in itself be regarded as a correctable error under Rule 139 EPC, because it does not fall within the scope of an error or mistake in a "document filed with the European Patent Office" as required by that Rule, but rather constitutes an error or mistake in the run-up to the filing of the document. This narrow interpretation of the concept of "error" not only conforms to the wording of Rule 139 EPC, but also alleviates the concerns highlighted in decision T 695/18, i.e. that applying Rule 139 EPC to such cases as the current one would compromise legal certainty."
• The Board finds the approach of T 2474/19 to be "particularly helpful": "it is the acting person's error which must be considered, i.e. the error of the person who actually filed the document to be corrected".
• The request for correction/ retraction is refused. The meanwhile filed divisional application is not validly filed, as I understand the Board; the Board does not say this with so many words. Perhaps the status of the divisional will be the subject of an appeal in the case of the divisional application.  

EPO 

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

T 0695/18 - No corrections of withdrawals of appeals (?)

Key points

• Board 3.5.03 is of the view that an erroneous withdrawal of an appeal can not be retracted by way of correction under Rule 139 EPC.
• The case is the follow-up to the 10th successful petition for review R 3/22.
• The appeal of the applicant was withdrawn on 28.09.2021. On the same date, a notice of cancellation of oral proceedings was sent to the applicant, who confirmed receipt on the same day. On the next day, the applicant retracted the withdrawal of the appeal: "The request was based on erroneous interpretation of the instructions given by the applicant, which intention merely was not attend the oral proceedings."
• This reason can be held insufficient under T 2474/19.
• The Enlarged Board held that the Board must decide on the request for correction under Rule 139 and that a reply of the Register is insufficient to dismiss the request.
• The Board notes that: "immediately and automatically upon the EPO's receipt of the party's submission [i.e. the withdrawal], the withdrawal had thus the legal effects of terminating the appeal proceedings as to the substantive issues settled by the refusal of the application, and of rendering the matters subject to that decision res judicata, i.e. finally settled"
• "when the party's letters of 29 September and 5 October 2021 were filed, the appeal proceedings were no longer pending. This state of affairs is undisputed."
• "The second question to answer is whether Rule 139 EPC is applicable in the absence of pending proceedings."
• The Board first analyses the text of R.139, finding it not to provide a clear picture of the scope of the rule.
• The board then finds it striking that no fee is required and no time limit is codified.
• "Rule 139 EPC is merely a stand-alone provision ranked as an Implementing Regulation of the EPC. Legal certainty, as protected by the safeguards expressed in, or derived from Articles of the EPC governing re-establishment of rights and petition for review, corresponds, also from a systematic point of view, to a higher interest. "
• "The jurisprudence on correction of a withdrawal of the appeal under Rule 139 EPC is noticeably scarce ", only two such cases appear: T 2148/18 and T 610/11.
• "In practice, consulting the European Patent Register, inspecting the files, and reading the European Patent Bulletin are not the only ways for stakeholders to learn about matters of a withdrawal of the appeal. Considering the circles of EPO officials aware of a withdrawal of the appeal already at an early stage [] it cannot be excluded that other stakeholders [] learn about it before it is entered into the European Patent Register. It is commonplace that parties to proceedings and third parties contact administrative staff such as registrars to query about the state of the file."
• As a comment, I would be surprised if parties could learn more from contacting the Register than is available in the public online file or in the register. 
• Apparently, other people don't open the public online file, nowadays, but give a phone call to the register who then helps them. 
• "Common to the mentioned jurisprudence [on correction of withdrawals in general, e.g. withdrawals of applications] is the concern for the protection of the value of legal certainty. But the smorgasbord of lists and conditions is neither convincingly founded nor easy to apply. Predicting an outcome is even more difficult."
• The appropriate way to protect the high value of legal certainty on a matter of such gravity, had it been intended, would have been to define precisely, by legislation, the limited circumstances and conditions, presumably including time limits and a fee requirement, under which the "true" intention of the party may exceptionally take precedence (cf. Articles 112a and 122, Rules 104 to 110 and 136 EPC; T 824/00, Reasons 6). [] This is certainly not the case with Rule 139 EPC.
• As a comment, I don't see how levying a fee could help to increase legal certainty for third parties. 
• "till, were Rule 139 EPC applicable, the question would have to be asked why the procedural declaration of withdrawing the appeal would be treated more leniently if nailed down in a document and filed in writing than if made orally. From a wider legal perspective that would seem inconsistent, if not inverted."
• As a comment, a possible reason is there can be no mistake in which appeal is withdrawn during oral proceedings (oral withdrawals outside oral proceedings are impossible), i.e. no possibility of clerical errors in the application number as in written withdrawals.
• "The quite elaborated preconditions listed also run the inevitable risk of soon becoming irrelevant, e.g. by not adequately responding to the technological, administrative and organisational developments, such as digitalisation, within the EPO and in society at large."
• As a comment, the advantage of having a flexible rule in the EPC is that case law can keep up with developments.
• "More compelling than these arguments [of the applicant] is the finding in the early jurisprudence of the Boards of Appeal that the placing of Rule 139 EPC, then Rule 88 EPC 1973, only in the Implementing Regulations "raises the presumption that it is a merely ancillary provision which can only be applied while proceedings are pending for some other purpose before the [EPO], and that Rule 88 does not confer original jurisdiction on the [EPO] to make corrections at any time" (see J 42/92, Reasons 4)."
• "J 42/92 deals with the attempt by the patentee to use the instrument of correction to amend the text of a granted patent. The present Board admits that this is something else than what is now discussed, as noted by the party. "
• "This makes relevant the view taken in J 42/92 on Rule 139 EPC that not only its applicability but also the Board's jurisdiction, i.e. its competence (cf. points IX and 1 above), ends when the pendency of the underlying proceedings ends (Reasons 10)."
• As a comment, the systematic question arises how the EPO can then have jurisdiction under Rule 140 to correct errors in decisions if proceedings are closed.
• "The Board's view on the applicability of Rule 139 EPC is also not prejudiced by the conclusions of G 1/12, on the contrary. "
• "For all these reasons, the ordinary meaning to be given to the terms of Rule 139 EPC, in their context and in the light of the EPC's object and purpose, when interpreted in good faith in view of the interests of all stakeholders concerned, includes the implicit, limiting condition that a linguistic error, an error of transcription or a mistake in a document filed with the EPO may only be corrected, if proceedings before the EPO for some other purpose are pending when the request for correction is received by the EPO."
• As a comment, the Board did not discuss the purpose of Rule 139 EPC. The Board also did not consider the Travaux Préparatoires of the rule. 
• "any identity between the effects of a withdrawal of the appeal and of the application, as asserted by the party, would not persuade the Board. For the purposes of these proceedings, it can thus be left open to what extent such effects correspond."
• This is remarkable. The Board bases its decision mainly on a systematic analysis of Rule 139 EPC but then refrains from analysing the systematic consistency with the case law retractions of withdrawals of patent applications. 
• "the appeal proceedings were [] no longer pending [when the request for correction was received].  Rule 139 EPC is thus not applicable to the present request for correction of the withdrawal of the appeal. In line with the conclusion drawn in case T 1244/08, such a request is inadmissible"
• "The board is certainly aware that the conclusions drawn in the present decision deviate from those of the two decisions relating to a withdrawal of the appeal referred to in the CLBA section cited by the Enlarged Board in R 3/22 (see point 3.2.11 above), and of the majority of the earlier decisions cited above relating to a withdrawal of the application, a designation, etc."
• The Board indicates that the President of the EPO will be informed under Art. 20(1) RPBA 2020.
• "As a result, the application was no longer pending on 29 September 2021 and has not been since (i.e. the application was not pending on the dates when the related divisional applications were filed)."
• "With regard to Rule 139 EPC, the then applicant/appellant's move to withdraw its appeal on 28 September 2021 was like crossing the Rubicon. There was no going back."
• "A withdrawal of the appeal is an extremely serious procedural step calling for extreme caution (cf. J 4/03, Reasons 2; J 7/19, Reasons 7, regarding a withdrawal of the application). It seems therefore advisable that clients and representatives coordinate it carefully in advance."
• As a comment, it is interesting that Rule 103 EPC introduced incentives to withdraw appeals, but taking "extreme caution" as a patent attorney (as the current decision instructs us) will probably offset any cost savings for the client. 
• The online register indicates that the refusal of the application was coded in the Register only on 19.05.2023 and is published in the Bulletin on 21.06.2023. 

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

T 1654/19 - The CPA should ideally

Key points

•  The Board, on the selection of the closest prior art: "t is established case law that the closest prior art should ideally be a document which mentions the purpose or objective indicated in the [patent under examination] as a goal worth achieving (Case Law, supra, I.D.3.2). The aim thereof is that the assessment process should be based on a situation that is as close as possible to that faced in reality by the inventor, avoiding ex post facto considerations."
  
  
• On the procedure: two opponents appealed. One later withdrew the appeal. The other opponent relies on the former appellant's earlier arguments in the appeal. 
• The Board: "The appellant and the other party [the other opponent] submitted that the claimed composition lacks an inventive step over D1, which was contested by the respondent.  From a procedural point of view, the respondent submitted during the oral proceedings that only opponent 1, as a former appellant and now other party, filed a reasoned objection starting from D1 as the closest prior art. Opponent 2, as the only remaining appellant, would have merely referred in the said letter ... to the submissions made in the statements of grounds of appeal of opponent 1, i.e. to the submissions of the former appellant and now other party. The respondent [patentee] considers that the objection of inventive step based on document D1 as the closest prior art is therefore no longer part of the appeal proceedings. This is not convincing. As recalled in decision T 1820/18 (point 4 of the Reasons), it is not possible to split the appeal proceedings into different procedures, each dealing separately with the grounds for opposition and the facts, evidence and arguments presented by the individual opponents concerned (T 790/03, point 2.1 of the Reasons). Therefore, each opponent can rely on any grounds, facts, evidence and arguments duly submitted by other opponents (see also T 620/99, point 1 of the Reasons; T 1657/14, point 2.4.3 of the Reasons)."

EPO 

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

J 0005/19 - Allowed retraction of withdrawal application

Key points

• "with a letter dated 3 May [2018], the appellant withdrew the application and requested that the fees be refunded. A divisional application was filed on 8 May 2018 (No. 18171252). Both the withdrawal of the parent application and the filing of the divisional application were mentioned on the same date, namely on 11 May 2018, in the case file of the parent application. The European Patent Register (hereinafter: "the register") reported the filing of the divisional application without indicating the date on which it was filed." 
• "On 29 May 2018 the appellant's representative filed a request to "retract" the withdrawal of the application under Rule 139 EPC. It argued that the application was withdrawn due to a mistake. Its true intention had been to file a divisional application first and to withdraw the application afterwards; however, the order of these steps had been mixed up."
• The Board allows the request.
• "According to the case law of the boards of appeal it is possible to correct the withdrawal of an application under Rule 139 EPC. This is true even if the withdrawal has already been published in the register. However, this correction is only possible if it meets the following cumulative conditions: (a) the withdrawal did not reflect the true intention of the applicant (existence of a mistake within the meaning of Rule 139 EPC); (b) there was no undue delay in seeking its correction (J 04/03, point 9 of the Reasons; J 10/87, point 13 of the Reasons); (c) third parties who might have taken note of the withdrawal by inspection of the file would have had reason to suspect that the withdrawal was erroneous (see J 10/08, point 12 of the Reasons; J 2/15, point 13 of the Reasons; J 8/06, point 6 of the Reasons)."
• "Some decisions by the board have required a further condition to be met, more specifically that the error was due to an excusable oversight (e.g. J 04/03, point 9 of the Reasons; see also J 10/87, point 13 of the Reasons). This board cannot adhere to this case law for the following reasons. ... [G 1/12 does not mention such a requirement]. "
• "In assessing whether the withdrawal was due to a mistake, only the intention of the applicant and not that of the European representative is relevant. The decision to withdraw the application indeed lies with the former and not the latter. Therefore, only the represented party's state of mind matters, and not that of the representative. Exceptions may apply "
• " Next, the board is satisfied that the request was filed without delay. The communication that the second application could not be treated as a divisional application was issued on 22 May 2018. The request for correction was filed on 29 May 2018."
• "The specific circumstances of this case are that third parties were informed at the same time that one parent application was withdrawn and one divisional application was filed, without knowing the chronological order of the two events. Regardless of what they may have assumed in light of these circumstances, they would in any case have realised that the invention disclosed in the parent application could still be the subject-matter of a pending application, either because the parent application could be reinstated under Rule 139 EPC, or because the divisional application was effectively filed under Article 76 EPC."
  
• "According to the request filed at the oral proceedings the withdrawal will be corrected such that it was made in a period of time between 9 and 20 May 2018. In the board's view the result which this request aims to achieve corresponds to the true intention of the applicant for the following reasons."
• The Board decides that: "The withdrawal of European patent application No. 15750584.3 is corrected such that it was made on a date between 9 and 20 May 2018."

EPO J 0005/19 -

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

T 0032/17 - Product-by-process feature and burden of proof

Kye points

• The Board, in this opposition appeal “Finally, where a process feature is the only feature allegedly conferring novelty to a product, the burden of proof for showing the fact that the process feature results in a distinct and identifiable characteristic of the product - i.e. in the present case in the chemical composition and/or the specific amino acid sequences of the claimed antibodies - is on the patent proprietor and not on the opponent(s) ” referring to T0179/03.
• I note that T0179/03 appears to not have been cited before. 
• Alternative positions are that the burden of proof of lack of novelty rests with the opponent or that the appellant has the burden of proof in opposition appeal. 
• A final option, also in view of the analysis below, is that under G3/14 r.55 the patentee has the burden of proof in case of improper product-by-process features.
• The Board in the headnote focuses on another aspect of the case, which however seems less broadly applicable. “The deposit of a hybridoma under Rule 31 EPC for compliance with the disclosure requirement of Article 83 EPC does not in itself convey any technical information about the molecular structure of the monoclonal antibody produced by said hybridoma, such as its amino acid sequence ”
• Addendum 10.05.2021: I think this headnote does not pertain to novelty. In particular, the Board does not comment on G1/92 hn. at all (“the chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition.”).
• The operative claim at issue reads: “Monoclonal antibody able to recognize 25-hydroxyvitamin D2 and 25-hydroxyvitamin D3, characterised in that it is produced from a hybridoma  [...] deposited in the BCCM/LMBP under deposit number [...]”
• “The patent does not provide any information about the chemical composition or amino acid sequence of the antibodies produced by the deposited hybridomas either, e.g. in the form of a sequence listing (see also Rule 30 EPC).”
• As a comment, in principle, the deposit system of Rule 31 EPC is only relevant for Art.83 EPC, in that Rule 31 refers only to Article 83. The question may be raised whether implicitly a claim referring to a deposited sample under Rule 31 is also clear under Article 84. Of course, clarity is not a ground for opposition but under  G3/14, r.55: “A granted claim may turn out not to comply with Article 84 EPC but such non-compliance must be lived with. However, any lack of clarity of the claims may still be highly relevant in opposition proceedings in that it can influence the decisions on issues under Article 100 EPC []. For example the lack of clarity of a claim may have a profound effect on the outcome of the grounds for opposition according to (i) Article 100(b) / sufficiency ([], (ii) Article 100(a) EPC / novelty []  or Article 100(a) EPC / inventive step []. ” A question is whether this remark also applies when the patentee legitimately uses the system adopted under Rule 31 EPC. I note that the decision at issue at least not expressly discusses non-compliance or abuse of the deposit system under Rule 31 EPC.
• Counter arguments are certainly possible.
• A very interesting analysis was given by "Greg DeLassus" at Patently (here): “It is not that the standard for enablement of functional genus claims in the chem/bio arts has changed. It is that the technologies being claimed have changed.

  Back in the 80s and 90s (when many of these “antibody that binds [X]” claims were written), the sorts of antibodies that inventors were claiming were polyclonal antibodies. The way you make a polyclonal antibody is that you inject a mouse (or rabbit, or hamster, or goat, etc) with a particular antigen, and then a few weeks later you bleed the animal and collect the serum. The serum will be full of all sorts of antibodies, including a variety of different antibodies responsive to your antigen of interest. Even today, there is no technologically practical way to sequence the CDRs of all the target-responsive antibodies in that polyclonal serum. Therefore, if the CAFC had required that one claim the antibodies in those polyclonal sera according to CDR sequence, this would effectively have meant that there could be no patent protection for antibodies.

  Not only would this policy have been counterproductive to the ends that the patent system is intended to further, but it would not have even been consistent with the words of the statute, which merely require that the specification “contain a written description of the invention, and of the manner… of making… it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains… to make… the same… .” When you raise an antibody by injecting an animal, the important thing to describe with precision is the antigen used. If you can be precise enough about the details of the antigen, then other skilled artisans will be able to replicate your work, even without details about the CDRs of each antibody raised.

  Nowadays, however, almost no one is claiming polyclonal antibodies. Amgen and Sanofi, for example, are not fighting about who controls the IP around a polyclonal. Rather, they are fighting over a monoclonal antibody. In the same way that it would have been impossible to disclose CDR sequence data for polyclonal sera back in the day, it is almost trivially easy to describe CDR sequence data for monoclonals. Therefore, it makes sense for the CAFC to require such disclosure (and precision of claiming), even if it did not make sense to do so in older cases. Different technology requires different ways of describing in order for the skilled person to replicate.

  Moreover, the ends which the patent law is meant to further are better served by requiring precise description of the antibody when one is claiming a monoclonal, just as they were better served by requiring precise description of the antigen back when one was claiming a polyclonal. It is the same statute and the same standards, but when one changes the technology to which they same statutes and standards are being applied, then it will necessarily follow that the spec and claims sufficient to capture each technology will look different.

  There really is no more than a superficial inconsistency between how the CAFC was handling these functional genus claims back then and how it is handling them now. Rather, at the deeper and more meaningful level, the CAFC’s handling is entirely consistent. The tech has simply moved on since then.” (underlining added)

  
   

• The present Board also recalls that: “ the Enlarged Board of Appeal held that "[f]or a product-by-process claim to be allowable it needs to be established that (a) it is impossible to define the claimed product other than in terms of a process of manufacture and (b) the claimed product itself meets the patentability requirements of Article 52(1) EPC. Thus, the specific process needed to obtain the claimed product should make it possible to distinguish the inevitable product of the product-by-process claim over the prior-art" (see decision G 2/12, OJ EPO 2016, 27, Reasons, point IV.(5)).”

• The Board on procedural matters: “After the board's final decision had been announced at oral proceedings, opponent 4 withdrew their opposition. As the final decision became effective immediately on its announcement, the above mentioned withdrawal did not change opponent 4's status as a party to the appeal proceedings.”

T 0032/17 

https://www.epo.org/law-practice/case-law-appeals/recent/t170032eu1.html

4. After the board's final decision had been announced at oral proceedings, opponent 4 withdrew their opposition. As the final decision became effective immediately on its announcement, the above mentioned withdrawal did not change opponent 4's status as a party to the appeal proceedings.

Main request - claim 2

The claimed subject-matter - claim construction

5. Claim 2 is drafted as a product-by-process claim. It is directed to a monoclonal antibody which is characterised by the functional feature "able to recognize 25-hydroxyvitamin D2 and 25-hydroxyvitamin D3**(") and by the process feature "produced from a hybridoma selected from the group consisting of the hybridomas deposited in the BCCM/LMBP under deposit numbers LMBP 7011CB, LMBP 7012CB, LMBP 7013CB, LMBP 7204CB and LMBP 7205CB."

J 0006/19 - Retraction of withdrawal

Key points

• The applicant withdrew an already published Euro-PCT patent application with a letter filed on 19.12.2018. On 20.12.2018, the EPO issued the Form 205 "Closure of the procedure". The withdrawal was “published in the European Patent Register early in the morning of 21 December 2018.” 
• The applicant requested a correction of the withdrawal on 21.12.2018 received at 10:57 hrs.
• The applicant submitted that the correction request was timely filed, inter alia because it was “entitled to the protection of its legitimate expectation that its request for retraction would be filed in due time because it relied on the advice given orally on 20 December 2019 by the formalities officer that this request could be filed "...within two days", i.e. until 21 December 2018”.
• The Legal Board does not allow the appeal (against the decision to refuse the requested correction).
• The Legal Board: “In this case, the withdrawal appeared in the European Patent Register early in the morning of Friday, 21 December 2018, after the publication run. The public had thus already been officially notified of the withdrawal of the application when the request for retraction of the withdrawal was received by the EPO on 21 December 2018 at 10.57 hrs. Furthermore, at the time of the official notification, the public had no reason to suspect that the withdrawal could be erroneous and later retracted. As already noted, the request for withdrawal was unqualified, unambiguous and unconditional. And the request for retraction of the withdrawal, filed on 21 December 2018, would not have been available for file inspection until at least the following day, 22 December 2018.”
• As to the argument based on legitimate expectations, the Legal Board notes the following.
• “The principle of the protection of legitimate expectations governs all procedural action taken by EPO employees vis-à-vis parties to proceedings, including telephone calls, which are not part of the formal procedure ”
What was said during the phone call was not decisive, because the Legal Board recalls that “in any case the authorised representative is expected to be aware of the relevant law and case law”.
• “In particular [representatives] are expected to know that a filed document is likely to become visible in the European Patent Register once it has been coded by the EPO (see FAQ - European Patent Register on the EPO website). In this case, Form 2058, "Closure of the procedure in respect of application n° 15848194.5", was issued on 20 December 2018. The appellant could then have expected the withdrawal to be published early in the morning of the following day, after the publication run. Thus, it was the appellant's own responsibility to file the request for retraction before the withdrawal appeared in the Register.”
• The cited FAQ is probably this one. It includes the remark that: "When will a document or correspondence become visible in the European Patent Register? For publicly available outgoing communications: on the day after the date of despatch. For publicly available incoming communications: once the filed document has been coded by the EPO. Please note that the date displayed alongside a document in the All documents view is the date of receipt by the EPO."
• Therefore the request for correction was not timely filed, according to the Legal Board.

Disclosure: my firm was involved.

EPO J 0006/19 -  link

Text of the decision omitted here because it contains personal details (names of persons involved).

T 1657/14 - Single opposition proceedings and withdrawal opposition

Key points

• In this opposition appeal, both opponent 1 and the patentee file an appeal. Opponent 1 withdraws its opposition. Opponent 1 had submitted comments after filing its Statement of grounds and before withdrawing the opposition including the argument that E18 would be novelty destroying because it would implicitly disclose feature M9 of the claim. The OD had found the claim as granted to be not novel over E18, based on arguments that were then submitted by Opponent 2. Opponent 2 had withdrawn its opposition already during the first instance proceedings.
• “The Board's examination can consider any arguments submitted by the respondent prior to the withdrawal of the opposition (see T 629/90 and T 46/10). Despite the fact that the novelty objection based on E18 was validly raised by opponent 2, the arguments submitted by opponent 1 in this regard before withdrawal of its own opposition can be considered. Since multiple admissible oppositions initiate only a single opposition proceedings, each opponent can rely on an opposition ground duly submitted by other opponents and this ground of opposition was validly raised and substantiated as well as communicated to all parties in accordance with Rule 79(2) EPC (see T 270/94).”
• As a comment, this suggests that for opponents, there is no amendment of a party's case if they adopt arguments or attacks of the other opponents. Indeed, Article 12(4)(§1)(s.1) does not require that the 'part' was (admissibly) raised and maintained by the opponent itself in the first instance proceedings.

•  The Board also recalls that “However, equivalents which are not disclosed in a published document must not be considered in assessing novelty according to Article 54 EPC, but under the EPC are part of assessing inventive step (Article 56 EPC) according to established case law (see T 167/84 and T 517/90). The narrow concept of novelty under the EPC excludes equivalents of features which are explicitly or implicitly disclosed.”.
• I  think that more precisely, this follows from the 'gold standard' instead of the 'concept of novelty'.

EPO T 1657/14 -  link



2.4.3 The Board's examination can consider any arguments submitted by the respondent prior to the withdrawal of the opposition (see T 629/90 and T 46/10). Despite the fact that the novelty objection based on E18 was validly raised by opponent 2, the arguments submitted by opponent 1 in this regard before withdrawal of its own opposition can be considered. Since multiple admissible oppositions initiate only a single opposition proceedings, each opponent can rely on an opposition ground duly submitted by other opponents and this ground of opposition was validly raised and substantiated as well as communicated to all parties in accordance with Rule 79(2) EPC (see T 270/94).

However, the Board does not agree with the arguments of opponent 1 put forward regarding features M8 and M9. In particular, opponent 1 alleged that feature M9 would be implicitly disclosed as the skilled person would read between the lines that determining identity between displayed dose and set dose would require directly comparing a possible input parameter against the actual value of the input parameter (see pages 13 and 20 of the letter dated 7 April 2015).

[...]

2.4.5. However, equivalents which are not disclosed in a published document must not be considered in assessing novelty according to Article 54 EPC, but under the EPC are part of assessing inventive step (Article 56 EPC) according to established case law (see T 167/84 and T 517/90). The narrow concept of novelty under the EPC excludes equivalents of features which are explicitly or implicitly disclosed.

T 0193/20 - Withdrawal of appeal

Key points

• The appellant writes “that it had decided not to file the grounds of appeal”, does not file a Statement of grounds, and requests 100% reimbursement of the appeal fee under Rule 103 EPC. 
• This request is refused. The Board: “the withdrawal of the appeal must be expressed by an explicit and absolutely clear statement.”
• “ The above-mentioned intention not to file the grounds of appeal cannot be considered an unambiguous withdrawal of the appeal either. In fact, the filing (or non-filing) of the statement of grounds of appeal and the withdrawal of an appeal are separate, distinct procedural steps.”
• The appellant withdrew the appeal by letter dated 6 March 2020, i.e. “within two months of notification of the communication issued by the board on 31 January 2020 under Rule 100(2) EPC”.
• Hence, the appeal fee is reimbursed at 50% under (what is now) Rule 103(3)(b) EPC (the appeal was withdrawn within the period for response set in the Rule 100(2) Communication).

EPO T 0193/20 - link

Summary of Facts and Submissions

I. European patent application no. 13 181 664.7 was refused by the examining division by decision dated 16 August 2019.

II. The applicant (hereinafter "appellant") filed a notice of appeal by letter dated 14 October 2019 and paid the appeal fee.

III. By letter dated 19 December 2019, the appellant communicated that it had decided not to file the grounds of appeal. It requested reimbursement of the appeal fee pursuant to Rule 103(1)(b) EPC.

IV. On 31 January 2020, the board issued a communication under Rule 100(2) EPC. In this communication, the board expressed the preliminary opinion that the appellant, on the basis of the wording used in its letter dated 19 December 2019, had merely stated its intention not to file the statement of grounds of appeal, but it had not withdrawn the appeal.

The appellant was informed that any observations had to be filed within two months of notification of the communication.

V. The appellant replied to the board's communication by letter dated 1 March 2020, in which it contested the board's findings.

VI. By letter dated 6 March 2020, the appellant withdrew the appeal.

VII. The appellant's requests

The appellant requested reimbursement of the appeal fee in full pursuant to Rule 103(1)(b) EPC (main request). In the alternative, it requested reimbursement of 50% of the appeal fee pursuant to Rule 103(2)(b) EPC.

Reasons for the Decision

Main request - reimbursement of the appeal fee in full pursuant to Rule 103(1)(b) EPC

1. The appellant conceded (see letter dated 1 March 2020) that the appeal had not been explicitly withdrawn in its letter dated 19 December 2019 (III, supra). However, it argued that by taking the reference to Rule 103(1)(b) EPC into account, it was clear that a withdrawal of the appeal was intended. Moreover, as not filing the grounds of appeal inevitably meant that the appeal was not admissible, it was clear that a statement indicating that the grounds of appeal would not be filed also indicated a withdrawal of the appeal.

2. The board disagrees for the following reasons.

2.1 According to Rule 103(1)(b) EPC, the appeal fee shall be reimbursed in full "if the appeal is withdrawn before the filing of the statement of grounds of appeal and before the period for filing that statement has expired" (emphasis added by the board).

2.2 The withdrawal of an appeal in proceedings with just one appellant, as in the present case, is a procedural step decisive for the outcome of the appeal proceedings. In fact, upon withdrawal of the appeal by the sole appellant, appeal proceedings are immediately terminated (G 8/91, OJ 1993, page 346, Order). It follows that the withdrawal of the appeal must be expressed by an explicit and absolutely clear statement.

2.3 In its letter dated 19 December 2019, the appellant stated that it had "decided not to file the Grounds of Appeal". Even in view of the request for reimbursement of the appeal fee in accordance with Rule 103(1)(b) EPC included in the above letter, this statement merely conveys the appellant's intention not to file the statement of grounds of appeal, but does not imply an unambiguous withdrawal of the appeal. The above-mentioned intention not to file the grounds of appeal cannot be considered an unambiguous withdrawal of the appeal either. In fact, the filing (or non-filing) of the statement of grounds of appeal and the withdrawal of an appeal are separate, distinct procedural steps.

2.4 The appellant withdrew the appeal by letter dated 6 March 2020, i.e. after the period for filing the statement of grounds of appeal pursuant to Article 108 EPC had expired. As a consequence, the requirements of Rule 103(1)(b) EPC have not been met. Thus, the appellant's main request cannot be allowed.

Auxiliary request - reimbursement of 50% of the appeal fee pursuant to Rule 103(2)(b) EPC

3. The appellant withdrew the appeal by letter dated 6 March 2020, i.e. within two months of notification of the communication issued by the board on 31 January 2020 under Rule 100(2) EPC (IV, supra).

It follows that the requirements of Rule 103(2)(b) EPC for reimbursement of 50% of the appeal fee have been met.

As a consequence, the appellant's auxiliary request is allowed.

Order

For these reasons it is decided that:

Reimbursement of 50% of the appeal fee is ordered.

T 0430/17 - Remittal and withdrawal opposition

Key points

• The proprietor appeals against the revocation of the patent by the OD on the ground of insufficient disclosure. The  Board finds the patent to be sufficiently disclosed.
• The Board remits the case. However, as the only opposition was withdrawn during the appeal proceedings, the Board remits the case with the order for the OD whether to continue the procedure of own motion under Rule 84(2) s.2 EPC.

T 0430/17 -  link

2.5 In Anbetracht der obigen Ausführungen gelangt die Kammer zu dem Ergebnis, dass der Einspruchsgrund nach Artikel 100 b) EPÜ der Aufrechterhaltung des Streitpatents in der erteilten Fassung nicht entgegensteht.

Da die weiteren Einspruchsgründe von der Einspruchsabteilung noch nicht geprüft wurden und zwischenzeitlich der einzige Einspruch zurückgenommen wurde, wird die Angelegenheit an die Einspruchsabteilung zurückverwiesen zur weiteren Prüfung, ob sie das Verfahren von Amts wegen fortsetzt (Artikel 111 (1) EPÜ).

Entscheidungsformel

Aus diesen Gründen wird entschieden:

1. Die angefochtene Entscheidung wird aufgehoben.

2. Die Angelegenheit wird an die Einspruchsabteilung zurückverwiesen zur Ausübung ihres Ermessens nach Regel 84 (2), Satz 2 EPÜ.

T 1534/16 - Prior use and withdrawn opposition

Key points

• In this opposition appeal, the opponent and the intervener had asserted a public prior use, and had subsequently withdrawn the opposition (and intervention).
• The patentee had defended the claims by casting doubts on whether the prior use was public, or whether an obligation to maintain secrecy had been in place.
• " The Board, regarding the appellant's doubts as justified and considering that further investigations would require the co-operation of the opponent and/or intervener, who have withdrawn their oppositions and their intervention [], concludes that the allegations of prior use are to be disregarded."

	T 1534/16 - link

Reasons for the Decision

1. Prior uses
The opponent and the intervener submitted a plurality of allegations of prior use before their respective oppositions were withdrawn.
The appellant replied by raising doubts concerning the public availability of the installations in accordance with the alleged prior uses, in particular by referring to the presence of an obligation to maintain secrecy.
The Board, regarding the appellant's doubts as justified and considering that further investigations would require the co-operation of the opponent and/or intervener, who have withdrawn their oppositions and their intervention (see Case Law of the Boards of Appeal, 8th edition 2016, IV.D.2.2.9 (c)), concludes that the allegations of prior use are to be disregarded.

2. Exclusion from file inspection
During the written proceedings before the Board, documents E48, E48a, E49, E51, E52, E53 and E54 filed by the appellant before it withdrew its opposition were provisionally excluded from file inspection (see communication dated 28 February 2018) at the request of the appellant (patentee). The Board, considering that the opponent and intervener had explicitly agreed by letters of 6 March 2018 to the appellant's request and being satisfied that the documents in question do not serve the purpose of informing the public about the patent in suit, concludes that the above-mentioned documents should remain excluded from file inspection pursuant to Rule 144(d) EPC.

T 1477/15 - Clear vs concise

Key points

• This is the third appeal in this opposition, after T0468/09 and T0801/13. The decision contains numerous interesting aspects.
• The Board gives a useful general remark about Article 84 : " Clarity and conciseness requirements can conflict to some extent, because where clarity would demand additional explanations, conciseness requires that the claims be as short as possible. The Board considers that it is not desirable to unnecessarily overload a claim in pursuit of an unattainable absolute clarity of wording." 
• The Board found the claims of Aux Req 3 to be allowable. The opponents objected to the adaption of the description, in particular that further the description should be further adapted to the claims. The Board does not agree, the description (of the patent as granted) needs to be adapted only to the amendments of the claims made during opposition. " The grant of a patent marks a cut-off point (T 1149/97, OJ EPO 2000, 259) defining the rights of third parties and the protection enjoyed by the patent proprietor. []The case law has therefore justifiably limited the amendments possible during opposition or opposition appeal proceedings to those rendered necessary as a result of such proceedings, in particular due to amendments made to the claims. This implies in particular that possible "mistakes", inconsistencies or amendments "forgotten" during the grant proceedings and present in the granted patent are not to be corrected unless they result from opposition and/or opposition appeal proceedings." 
• During the oral proceedings, the proprietor had withdrawn Aux Reqs 1 and 2. The opponents objected, and requested a written decision regarding these requests. The Board does  not agree. " The Board fails to see any basis in the EPC for not allowing the patent proprietor to withdraw its auxiliary requests 1 and 2." " In other words, if a patent proprietor withdraws or no longer agrees to a text (two auxiliary requests, in this case), this principle prevents the Board of appeal from deciding on these issues." 

EPO T 1477/15 - link

11. New auxiliary request 3 - clarity

[] The Board notes that Article 84 EPC requires that the claims be clear and concise and supported by the description. Clarity and conciseness requirements can conflict to some extent, because where clarity would demand additional explanations, conciseness requires that the claims be as short as possible. The Board considers that it is not desirable to unnecessarily overload a claim in pursuit of an unattainable absolute clarity of wording. It is therefore in line with established jurisprudence, according to which the reference reader for clarity purposes should be the skilled person who has read the patent as a whole with a mind willing to understand rather than desirous to misunderstand (T 0190/99 (point 2.2.5.); T 0012/11 (point 4 of the reasons); T 1192/02 (point 2 of the reasons)).

J 0011/16 - Retraction of withdrawal

Key points

• An applicant files a letter stating "The applicant wishes to withdraw the above application", the withdrawal is entered into the Register, and the applicant writes to the EPO about two weeks later that the letter was sent in error, and that the intention was to proceed further. 
• The applicant argued that "a correct application [of established case law] meant that if there existed the slightest doubt whether a declaration made by a party corresponded to its true intentions, the EPO should seek clarification before acting upon the declaration. Because the EPO did not do so in the present case although it should have had doubts, it committed a substantial procedural violation" . 
• The Legal Board states that "The issue in the present appeal is whether the statement made in the letter of 2 February 2015 was unambiguous or whether the EPO should have had doubts with respect to the true intention of the appellant." The Board finds that the wording "The applicant wishes to withdraw the above application"  used in this case, constituted a valid withdrawal.
• As a comment, the applicant presumably did not request a correction under Rule 139 EPC of the withdrawal (which would be late filed, namely after the withdrawal was entered into the Register), but argued that the letter was not a withdrawal, such that application was never withdrawn. 

EPO J 0011/16 -  link

Summary of Facts and Submissions

I. The appeal was filed against the decision of the Receiving Section of 4 January 2016, rejecting the appellant's request aiming at the retraction of the letter of withdrawal of the European patent application 10 743 328.6.

II. On 2 February 2015, the representative of the appellant filed a letter, citing European Patent Application No 10743328.6, the title of the invention to which this application relates, "Pneumatic Seat Cushion System", and the registered applicant "Comfort Concepts Pty Limited". The letter states "The applicant wishes to withdraw the above application leaving no rights outstanding. We would welcome any fees which may be refundable."

T 0727/10 - Withdrawal opposition

Key points

• The Board applies established case law that in case the sole opponent and the proprietor both appeal, and the opponent withdraws both the opposition and the appeal, the appeal proceedings are continued. The former opponent is no longer party to the appeal (in respect of the substantive issues). 
• The Board carries out examination of own motion of the proprietor's requests. None are allowable and the appeal is dismissed. As a comment, the patent is accordingly maintained in amended form according to the impugned decision of the OD.

EPO T 0727/10 - link

Reasons for the Decision

1. The appeal is admissible.

2. Withdrawal of the appeal and of the opposition by the opponent

2.1 During appeal, the sole opponent withdrew both its opposition and its appeal. Hence the patent proprietor became the sole appellant and sole remaining party to the proceedings.

2.1.1 According to decision G 9/92 of the Enlarged Board of Appeal (OJ 1994, 875), if the patent proprietor is the sole appellant against an interlocutory decision maintaining a patent in amended form, the maintenance of the patent as amended in accordance with the interlocutory decision may not be challenged at appeal proceedings (prohibition of reformatio in peius).

2.1.2 As regards the withdrawal of the opposition by the opponent who is not the sole appellant, this does not affect the appeal proceedings, in so far as it is the principal task of the boards of appeal to review the decision under appeal on the basis of the appellant's requests. However, the withdrawal of an opposition by the respondent means that the respondent ceases to be party to the appeal proceedings in respect of the substantive issues (T 789/89, OJ 1994, 482). The board may nevertheless take into account the submissions and evidence filed by the former opponent before the opposition was withdrawn (T 629/90, OJ 1992, 654).

J 0002/15 - Retraction of withdrawal

EPO J 2/15

For the decision, click here

Key points

• The case concerns the retraction of a withdrawal. The retraction was filed by fax on 21.02, published in the Register on 24.02 and the attempted retraction / correction under Rule 139 EPC was filed on 06.03. The expected publication date of the withdrawal in the European Patent Bulletin was 12.04.
• The request is refused, firstly because the withdrawal had been published in the Register. The publication in the Bulletin is not relevant (following J 1/11).
• The withdrawal is held to be not ambiguous or conditional, as argued by the patentee.

Summary of Facts and Submissions

I. This case concerns the retraction of a withdrawal of European patent application no. 04751794.1 with the title ALLOGENEIC CELL THERAPY: MIRROR EFFECT that was derived from the PCT application WO2004US14589 filed on 11 May 2004 in the name of Immunovative Therapies, Ltd. The application on 28 November 2005 entered into the European phase, and was given the internal reference number P51557D EP by the European representative.

II. On 21 February 2006, the applicant's European representative, Mr. Downing, wrote a facsimile letter to the European Patent Office requesting an unconditional withdrawal of the application. The facsimile mentioned the European application number (04751794.1), the applicant (Immunovative Therapies, Inc.), and provided the reference number "P51557D EP". The text was very short:
"We hereby withdraw the application on behalf of the applicant. We request a refund of any fees possible, in particular the examination fee."

T 1516/11 - Withdrawal after decision

EPO T 1516/11

For the decision, click here.

Key point

• The Board: " The Appellant's fax with the intended withdrawal of the application was received by the EPO [at 11:20] after the announcement of the Board's decision to dismiss the appeal [at 09:10]. Accordingly, the withdrawal has no effect on the present decision finally refusing the application, which took effect with its announcement." 

Summary of Facts and Submissions

I. The appeal lies from the decision of the Examining Division refusing European patent application No. 07 719 328.2 with the International publication Number WO-A-2007/134419.

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