T 1485/13 - Unsearched subject-matter

Key points

• The Board confirms as established case law, that adding a feature from the description can contravene the provision of (present) Rule 137(5) EPC that amended claims may not relate to unsearched subject-matter. This is the case when the working of the added feature is not connected with the working of the features of the originally claimed invention and the feature can not be brought under the original general inventive concept as disclosed in the claims and description as filed.
• This case should be distinguished from the case that the added feature further specifies a feature that was already part of the original independent claims. The latter case can generally not be objected to under Rule 137(5) EPC.

T 1485/13  - link


3.3 Der gefestigten Rechtsprechung (vgl. Rechtsprechung der Beschwerdekammern des Europäischen Patentamts, 7. Auflage, 2013, Abschnitt IV.B.5.4) folgend kann ein Verstoß gegen die Erfordernisse von Regel 137 (4) EPÜ, Fassung vor dem 1. April 2010, nicht nur dann vorliegen, wenn ein in einem Anspruch enthaltenes technisches Merkmal durch ein anderes in der Beschreibung offenbartes, aber nicht recherchiertes Merkmal ersetzt wird, sondern auch dann, wenn ein in der Beschreibung offenbartes, nicht recherchiertes technisches Merkmal, dessen Wirkung in keinem Zusammenhang mit der Wirkung der Merkmale der ursprünglich beanspruchten Erfindung steht, einem Anspruch hinzugefügt wird und es sich nicht der ursprünglichen allgemeinen erfinderischen Idee, so wie diese aus den ursprünglich eingereichten Ansprüchen und der Beschreibung hervorgeht, unterordnen lässt. Die letztgenannte Konstellation ist dabei zu unterscheiden von dem Fall einer bloßen Einschränkung im Sinne einer Konkretisierung oder Ergänzung eines Merkmals, das bereits Gegenstand des ursprünglichen unabhängigen Anspruchs gewesen ist, was in der Regel nicht zu einem Mangel an Einheitlichkeit mit der ursprünglich beanspruchten Erfindung im Kontext von Regel 137 (4) EPÜ, Fassung vor dem 1. April 2010, führt.

T 0985/11 - Adapting the description

Key points

• If the claims of an auxiliary request meet the requirements of the EPC, but the description is to be adapted and the patentee is not present at the oral proceedings, it is at the discretion of the Board whether or not to remit the case to the OD to adapt the description or to revoke the patent.

T 0985/11 - link

Adaptation of the description (Article 84, second sentence, EPC) / Remittal (Article 111(1) EPC)

21. At the oral proceedings, the appellant submitted in relation to auxiliary request 3 that the respondent had failed to provide a description that was adapted to the claims of this request. Therefore, auxiliary request 3 contravened the requirements of Article 84, second sentence, EPC. Since the description could not be adapted at the oral proceedings because the respondent was absent, the patent had to be revoked.

22. The board notes that the claims of auxiliary request 3 held allowable by the board no longer encompass subject-matter relating to the Delta4-desaturase of S. aggregatum. Accordingly, the description as adapted before the opposition division relates to subject-matter which is no longer claimed and therefore needs to be further adapted.

2.3 The board does not share the appellant's view that the board must revoke the patent for this reason because of the respondent's inability, due to its absence, to provide an adapted description at the oral proceedings. Instead, the board takes the view, for the reasons set out below, that under Article 111(1), second sentence, EPC it still has discretion to decide how to proceed in this situation, and in particular whether to (1) remit the case to the opposition division for adaptation of the description or (2) exercise the powers of the opposition division and either (2a) continue the proceedings in writing or (2b) revoke the patent.

24. Rule 115(2) EPC and Article 15(3) RPBA address the situation that a duly summoned party is absent from the oral proceedings. Rule 115(2) EPC provides that the proceedings may continue without that party, and Article 15(3) RPBA confirms that the board is not obliged to delay any step in the proceedings, including its decision, by reason only of the absence of such party who may then be treated as relying only on its written case.

25. These provisions indicate that, by absenting itself from the oral proceedings, a duly summoned party cannot expect that the appeal proceedings will necessarily be conducted differently from if the party had been present, and in particular that they will be continued. The provisions do not however restrict the board's discretion when deciding which of the available options to pursue.

26. In the case of an allowable appeal, whether and to which extent a board deals itself with any issues arising, i.e. exercises the powers of the department whose decision was appealed, or remits the case to that department for further prosecution, is decided by the board on the merits of the case in point. When taking such decisions, the boards consider various aspects, such as the parties' requests, procedural economy, the parties' interest in having the matter examined by two instances, and the right to fair proceedings (see Case Law of the Boards of Appeal, 7th edition 2013, IV.E.7).

27. Considering the available options mentioned in point 23 above, the board decided against continuing the appeal proceedings in writing, for reasons of procedural economy. Furthermore, Article 15(6) RPBA requires boards to ensure that cases are ready for decision at the conclusion of the oral proceedings unless there are special circumstances to the contrary. In the present case, the board could not identify any special circumstances preventing it from taking a decision terminating the appeal proceedings.

28. In support of its request for non-remittal, the appellant argued that the avoidance of further delays, procedural economy, its interest in obtaining a final decision and its need for legal certainty required immediate revocation of the patent.

29. The board is not persuaded by these arguments. From the file history it is apparent that the appellant did not take any steps prior to the oral proceedings to accelerate the opposition or appeal proceedings. The additional delay caused by a remittal seems likely to be fairly short, since the wording of the claims is finalised by the present decision, and the proceedings after remittal will thus be confined to adapting the description. As the board is taking a decision on the allowable version of the claims, procedural economy and legal certainty are also served.

30. As the claims of auxiliary request 3 were found allowable, the board regarded revocation of the patent as inappropriate in the present case. Moreover, it considers that it is required to act in a predictable manner, to ensure fair proceedings for the parties. It has therefore looked at how it has dealt with cases similar to the present one, in which adaptation of the description needs thorough examination because of the extent to which the claims have been amended during the appeal proceedings. It found that in fact it more often than not remitted such cases for adaptation of the description - even if the patentee was present at the oral proceedings and could have filed an adapted description.

31. In support of its case, the appellant further relied on the following five decisions: T 109/02, T 181/02, T 776/05, T 651/08 and T 2294/08. What all these cases have in common is that the appellant-patentee was absent from the oral proceedings, no description adapted to the amended claim requests was on file, and the patent was ultimately revoked.

32. In all five decisions, the board concerned emphasised that a patent proprietor who prior to oral proceedings files amended claims but no description adapted thereto, and who is not represented at the oral proceedings, cannot "rely on" the proceedings being continued in writing or the case being remitted to the department of first instance for adaptation of the description (see T 181/02, point 4 of the reasons; T 109/02, point 4.2 of the reasons, T 651/08, point 3 of the reasons, T 776/05, point 3.3 of the reasons, and T 2294/08, point 3 of the reasons).

33. The board agrees: a patentee who acts in that way cannot be sure of getting a possibility to adapt the description to the amended claims, and - as shown by the decisions cited by the appellant - does indeed run the risk of losing its patent due to a non-adapted description.

34. However, the board notes that the outcome in T 181/02 and T 776/05 could only have been revocation of the patent, because the deciding board came to the conclusion that, irrespective of the absence of an adapted description, the claims as amended did not meet the requirements of the EPC (see T 181/02, point 3.4 of the reasons and T 776/05, points 2.10 and 3.1 of the reasons), whilst in the three other decisions the board did not elaborate on its reasons for opting for revocation. Be that as it may, this board cannot identify anything in any of the five decisions relied on by the appellant to suggest that the deciding board took the view that it was obliged to revoke the patent for lack of an adapted description, or in other words could not have ordered remittal for adaptation of the description had the circumstances of the case so required. That these boards too - like the present one - regarded themselves as having discretion to remit the case is in fact shown by the statements in their decisions that a patent proprietor cannot "rely on" a postponement of the board's final decision or on a remittal of the case for adaptation of the description.

35. For the reasons set out above (see points 29 and 30), the board decided, exercising its discretion under Article 111(1) EPC, to remit the case to the opposition division for adaptation of the description and the drawings to the claims of auxiliary request 3. By doing so the board did not delay any step in the appeal proceedings and was able to reach a final decision at the conclusion of the oral proceedings, in accordance with Article 15(3) and (6) RPBA.

Referral to the Enlarged Board of Appeal (Article 112(1) EPC)

36. The appellant submitted that uniform application of the law required that the board refer the question filed during the oral proceedings (see section VII above) to the Enlarged Board of Appeal if it intended to deviate from decisions T 109/02, T 181/02, T 651/08, T 776/05 or T 2294/08.

37. Pursuant to Article 112(1)(a) EPC, the boards of appeal refer questions to the Enlarged Board, either of their own motion or upon request from a party, in order to ensure uniform application of the law or if a point of law of fundamental importance arises, if they consider that a decision is required for the above purposes.

38. As set out above, none of the five decisions relied on by the appellant called into question the continued existence of the boards' discretion to decide whether - if the duly summoned patentee is absent from the oral proceedings and no description adapted to the amended claims is on file - to exercise the powers of the opposition division or to remit the case. Accordingly, the present decision does not deviate from those cited.

39. Moreover, based on the analysis set out above, the board found a clear answer in the provisions of the EPC and the RPBA. It therefore did not consider a referral to be required.

40. Accordingly, the appellant's request for a referral to the Enlarged Board of Appeal was refused.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division with the order to maintain the patent on the basis of the set of claims filed as auxiliary request 3 with the letter dated 24 November 2011, and a description and drawings to be adapted thereto.

3. The request for referral to the Enlarged Board of Appeal of the question filed at the oral proceedings before the board is refused.

T 1673/11 - Scope of second medical use

EPO Headnote

Article 123(3) EPC: Change from a claim under the provisions of the EPC 1973 invoking the legal fiction according to G 5/83 to a claim under the provisions of Article 54(5) EPC 2000 (not allowable).

• The patentee tried to change Swiss-type claims to second medical use claims according to Article 54(5) EPC 2000. The Board decides that this is not allowable under Article 123(2) EPC. 
• After extensive analysis: " The board takes the position that, for example, a medicament containing human acid alpha glucosidase in the 100 to 110 kD form packaged and provided with instructions for the use in a treatment other than that of infantile Pompe's disease is encompassed by the scope of [an EPC 2000 second medical use calim] when said medicament is being used for the treatment of infantile Pompe's disease. The protection conferred by [the granted Swiss type claim does not encompass such use."

T 1673/11 - link

Reasons for the Decision

1. The appeal is admissible.

Main request - Article 123(3) EPC

2. Claim 1 of the main request is drafted in the format of a purpose-limited product claim as provided for by Article 54(5) EPC ("Human acid alpha glucosidase in the 100 to 110 kD form, for use in the treatment of infantile Pompe's disease, wherein..."), whereas all claims as granted are in the so called "Swiss-type" form ("The use of human acid alpha glucosidase in the manufacture of a medicament for the treatment of infantile Pompe's disease, wherein the human acid alpha glucosidase is in the 100 to 110 kD form, wherein...").

3. Under the EPC 1973, it was established practice that a patent relating to a further medical application of a known medicament could only be granted for a claim directed to the use of a substance or composition for the manufacture of a medicament for a specified therapeutic application (so-called "Swiss-type claim"). This practice was based on decision G 5/83 of the EBA (OJ EPO 1985, 64) which had filled a gap in the legal provisions and extended the notional novelty provided for in Article 54(5) EPC 1973 for the first medical use to further medical use claims when drafted in the above format. The law itself (EPC 1973) did not contain any notional acknowledgement of novelty of a claim directed to a further medical use.

The provisions of Article 54(5) EPC now fill this gap in the former provisions. Article 54(5) EPC provides for purpose-limited product protection for any substance or composition comprised in the state of the art for any specific use in a method referred to in Article 53(c) EPC (see decision G 2/08 of the EBA, OJ EPO 2010, 456, points 5.9, 5.10.2, 6.4 and 6.5).

4. Article 123(3) EPC provides that during opposition proceedings the claims of the European patent may not be amended in such a way as to extend the protection conferred upon grant.

5. In decision G 2/88 (OJ EPO 1990, 93, point 3.3) the Enlarged Board of Appeal noted that there is a clear distinction between the protection which is conferred and the rights which are conferred by a European patent: "The protection conferred by a patent is determined by the terms of the claims (Article 69(1) EPC), and in particular by the categories of such claims and their technical features. (...) In contrast, the rights conferred on the proprietor of a European patent (Article 64(1) EPC) are the legal rights which the law of a designated Contracting State may confer upon the proprietor, for example, as regards what acts of third parties constitute infringement of the patent, and as regards the remedies which are available in respect of any infringement. In other words, in general terms, determination of the 'extent of the protection conferred' by a patent under Article 69(1) EPC is a determination of what is protected, in terms of category plus technical features; whereas the 'rights conferred' by a patent are a matter solely for the designated Contracting States, and are related to how such subject-matter is protected."

It is therefore not appropriate for the board to consider the national laws of the Contracting States in relation to infringement (e.g. the rights of the patent proprietor to sue for indirect or contributory infringement); such national provisions are not relevant when deciding upon the admissibility of an amendment under Article 123(3) EPC. With respect to the question of extension of scope of protection under Article 123(3) EPC, it is instead appropriate to take into account that the protection conferred by a patent is determined by the terms of the claims, and in particular by the categories of the claims and their technical features (T 1780/12 of 30 January 2014, point 13; T 547/08 of 10 March 2011, point 3.2).

6. According to decision G 2/88 (point 4.1) the test to be applied under Article 123(3) EPC is whether the subject-matter defined by the claims is more or less narrowly defined as a result of the amendment. In the case of a change of category of claims, the protection conferred by the categories of claims in the patent as granted must be compared with the protection conferred by the new category of claim introduced by the amendment. This comparison necessarily involves considerations on the extent of protection conferred by a given category of claim. As is evident from decision G 2/88, such considerations are independent of the rights conferred under national law and of infringement.

7. The amendment of the patent as granted according to the main request consists in a change of category of claim 1 from a purpose-limited process claim in the format of a Swiss-type claim in accordance with decision G 5/83 to a purpose-limited product claim in accordance with Article 54(5) EPC. It follows from decision G 2/88 (point 5.1) that it is generally accepted as a principle underlying the EPC that a claim to a particular physical activity (e.g. method, process, use) confers less protection than a claim to the physical entity per se. As a consequence, a purpose-limited process claim confers less protection than a purpose-limited product claim (T 1780/12, supra, point 22, albeit in the context of double patenting; followed by decision T 879/12 of 27 August 2014, point 14; see also T 250/05 of 4 March 2008, point 3.6). Therefore, the change in category of claim 1 of the patent contravenes Article 123(3) EPC.

8. The respondent disagreed with the approach taken in decision T 1780/12 in as far as it was based on a comparison of the claim categories and the principle that a process claim was inherently narrower than a product claim. In the respondent's opinion, such an approach did not take into account the extension of protection by virtue of Article 64(2) EPC and the delimitation of the subject-matter claimed by the technical features. A purpose-limited process claim in the format of a Swiss-type claim was directed to a process of manufacture of a product. According to Article 64(2) EPC the protection conferred by such a process extended to the products directly obtained. Because the manufacturing process in a Swiss-type claim was not limited by any technical feature, the manufacture could not be limiting on the product obtained by it. The medical use as limiting feature was the same whether the claim was drafted in the format of a Swiss-type claim or as a purpose-limited product claim in accordance with Article 54(5) EPC. As a consequence, the protection conferred by both types of claims was the same.

9. The board does not agree. First, the comparison of the the protection conferred by the categories of claims in the patent before amendment with the protection conferred by the new category of claims introduced by amendment is in line with the test set out in decision G 2/88 (see point 5 above). Second, the protection conferred by a Swiss-type claim in accordance with decision G 5/83 and a purpose-limited product claim in accordance with Article 54(5) EPC is not the same even if, for the sake of argument, it is accepted that Article 64(2) EPC is to be taken into account when assessing the extent of protection conferred by a Swiss-type claim (see decision T 1635/09 of 27 October 2010, point 14.2).

9.1 Claim 1 as granted is directed to the use of human acid alpha glucosidase in the 100 to 110 kD form in the manufacture of a medicament for the treatment of infantile Pompe's disease. Inasmuch as this use may be regarded as a manufacturing process, the claim would, pursuant to Article 64(2) EPC, confer protection on the product directly obtained thereby. The board judges that the product directly obtained is the manufactured medicament which contains as an active substance human acid alpha glucosidase in the 100 to 110 kD form and which is packaged and/or provided with instructions for use in the treatment of infantile Pompe's disease. Indeed, in a Swiss-type claim, the medicament is characterised by the functional feature of the specified therapeutic application. Contrary to the respondent's opinion, this implies limitations to the product directly obtained, although the manufacturing steps are characterised by the use of a defined compound only.

9.2 Claim 1 of the main request being drafted as a purpose-limited product claim, on the other hand, confers protection on the human acid alpha glucosidase in the 100 to 110 kD form, whenever it is being used for the treatment of infantile Pompe's disease. Since the claim does not refer to a step of manufacture of a medicament, the product claimed, i.e. the human acid alpha glucosidase in the 100 to 110 kD form, is not limited to a manufactured medicament, packaged and/or with instructions for use in the treatment of infantile Pompe's disease.

9.3 It follows from the above that even if, by virtue of Article 64(2) EPC, the protection conferred by granted claim 1 extended to the product directly obtained by the manufacturing process referred to in said claim, the protection conferred by claim 1 of the main request is broader.

9.4 Nor can the board follow the appellant's argument that since the use limitation of the claims of the main request and of the granted claims was the same, their scope of protection was identical.

The board takes the position that, for example, a medicament containing human acid alpha glucosidase in the 100 to 110 kD form packaged and provided with instructions for the use in a treatment other than that of infantile Pompe's disease is encompassed by the scope of claim 1 of the main request when said medicament is being used for the treatment of infantile Pompe's disease. The protection conferred by granted claim 1 does not encompass such use.

9.5 Consequently, claim 1 of the main request would amend the contested patent in such a way as to extend the protection it confers, contrary to Article 123(3) EPC.

10. Decision T 402/89 of 12 August 1991, on which the respondent relied, concerned the question whether an amendment of a granted product claim to one for a particular, described process for making that product was allowable under Article 123(3) EPC. In the context of this particular type of amendment, which differed from the one considered in G 2/88 (supra), the board elaborated on difficulties in separating the concepts of "protection conferred" on the one hand and "rights conferred" on the other (see point 2 of the decision).

The present board takes the position that the findings in said decision apply to the particular case considered and are not relevant for this decision which concerns the amendment of "Swiss-type" claims as granted to purpose-limited product claims. In view of points 2 to 9 above, the distinction between the terms "protection conferred" and "rights conferred" is not critical for the case at issue and moreover is in line with the distinction made in decision T 402/89.

11. In decision T 795/06 of 18 March 2010, also relied upon by the respondent, the board decided that the amendment of a granted claim directed to the use of botulinum neurotoxins for the preparation of a pharmaceutical for cosmetic treatment to a claim directed to the use of a pharmaceutical comprising botulinum neurotoxins for cosmetic treatment was allowable under Article 123(3) EPC, because by virtue of Article 64(2) EPC and given that the process of manufacture in claim 1 as granted was defined in a broad way, the protection conferred by the granted claim extended to any pharmaceuticals that were the direct products of a manufacturing process using the botulinum neurotoxins; consequently, the protection conferred by the granted claim also extended to the use of said pharmaceuticals.

The situation underlying said decision differs from that of the present one inter alia in that the amended claim under consideration in decision T 795/06 concerned the use of a pharmaceutical comprising certain substances, whereas claim 1 of the present main request is directed to a substance for use. Therefore, decision T 795/06 is not in contradiction to the present decision.

12. In view of the above, the main request is not allowable under Article 123(3) EPC.

Auxiliary requests 1 to 5 - Article 123(3) EPC

13. Claims 1 of auxiliary requests 1 to 5 are formulated as purpose-limited product claims and differ from claim 1 of the main request in that the treatment is to be continued for at least 24 weeks instead of 4 weeks, and/or in that the disease to be treated is further specified.

In view of the fact that the claims as granted are solely "Swiss-type" claims, the above findings with respect to Article 123(3) EPC concerning claim 1 of the main request apply equally to the auxiliary requests.

Consequently, auxiliary requests 1 to 5 do not fulfil the requirements of Article 123(3) EPC.

Referral of questions to the EBA (Article 112(1)(a) EPC)

14. Article 112(1) EPC provides that in order to ensure uniform application of the law, or if a point of law of fundamental importance arises, the board of appeal may, following a request from a party, refer any question to the Enlarged Board of Appeal for opinion. However, the board shall do so only if it considers that a decision is required for the above-mentioned purposes.

15. The respondent requested that two questions be referred to the EBA under Article 112(1)(a) EPC (see section VII above).

16. However, the board has found no inconsistency in the case law pertinent to the case at issue, nor do the board's conclusions deviate from this case law (see points 5 to 11 above).

Consequently, the board sees no need for a decision by the EBA with respect to the questions formulated by the respondent.

17. The board furthermore observes that according to the findings of decision G 2/08 (supra), where the subject-matter of a claim is rendered novel only by a new therapeutic use of a medicament, such claim may no longer have the format of a so-called "Swiss-type" claim as instituted by decision G 5/83, if the patent application has a date of filing or, if priority has been claimed, a priority date after 28 January 2011.

In view of this ruling, the board considers that the second question formulated by the respondent does not concern an important point of law whose resolution would be of general interest for the future.

18. Consequently, the appellant's request for the referral of questions to the EBA is refused.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

3. The request for the referral of questions to the Enlarged Board of Appeal is refused.

T 2523/11 - Not even the end point

Key points

• Disclosed is a weft yarn in the range from 0.20 mm to 1.00 mm, the patent is granted with a weft yarn of 0.20 to 0.80 mm. The range of 0.20 mm to 0.80 was disclosed only for the diameter. Hence, the diameter and the yarn have been confused. 
• The board decides that this can not be corrected under Rule 139 EPC, "leaving aside the issue of whether an error in a granted patent may at all be corrected under Rule 139 EPC after the issue of G 1/10" 
• Claim 1 limited to the diameter of the weft yarn being 0.20 mm also lacks basis in the application as filed, because "there is no disclosure in the application as filed that the diameter of the weft yarns may be restricted to the value of exactly 0.20 mm while at the same time keeping all other values in the claim unchanged to arrive at the subject-matter defined in the claim."  

T 2523/11 - link

Reasons for the Decision

1. Main Request - Request for correction

1.1 Claim 1 includes the feature:

"said fabric with warp yarns having a range of 0.20 mm to 0.80 mm and weft yarns having a diameter in the range of 0.20 mm to 1.0 mm".

1.2 The appellant argued that the granted wording "said fabric with warp yarns and weft yarns having a diameter in the range of 0.20 mm to 0.80 mm" was an obvious error which was correctable, under Rule 139 EPC, to the form as stated in item 1.1. above.

T 2325/12 - Compatible not clear

Key points

• The term " compatible"  was held to cause a lack of clarity.

T 2325/12 - link

Fourth auxiliary request - clarity

6. Claim 1 of the fourth auxiliary request corresponds to claim 1 of the main request with the addition as a further ingredient of "(e) optionally an antitartar agent, wherein the antitartar agent is compatible with the antibacterial ester, or the antitartar agent is incompatible with the antibacterial ester and is included in one component of a dual component oral composition system in which a first component contains the antibacterial ester and a second component contains the antitartar agent".

6.1 There is no definition in the claim of what is meant by the terms "compatible" and "incompatible" with regard to the (in)compatibility of the antitartar agent with the antibacterial ester. The Board is not aware of any definition of the term commonly accepted in the field, nor any evidence in this respect has been provided by the appellant.

T 0915/12 - Publication date

Key points

• An excerpt from a technical encyclopedia is not admitted into the proceedings, because its publication date was not shown. The priority date is 5 February 2001, the encyclopedia mentions a copyright date in 1999 and a printing date in 2000. Moreover, a handwritten note of a librarian was submitted confirming receipt of the book in 2000. However, the note is rather informal and in part illegible. 
• The Board: The annotation made by Ms [S] does not fulfill the requirements of form and content, which usually apply for affidavits or similar documents. For instance apart from the usual details about the identity of the witness and her involvement in the circumstances surrounding the facts reported the text is silent as to the circumstances in which the book was handled"

T 0915/12 - link

Reasons for the Decision

1. Submissions filed in the appeal proceedings

1.1 Documents D9 to D14 were cited by the appellant with the grounds of appeal. It is therefore within the board's discretion to admit these pieces of evidence (article 114 EPC and article 12(4) RPBA).

The reason given by the appellant for citing documents D9 to D14 can be read on page 6/8 of the grounds of appeal, namely that they were relevant for the issue of inventive step of the claimed method because they demonstrated that an increase in volume flow of process air for drying was general knowledge, and did not lead to any difficulty when used with a wave shaped web of the type disclosed in D3, so that the teaching of D5 would be applied to D3 by the skilled person.

The board is of the opinion that the question of flow of process air for drying was at the heart of the debate right from the beginning with respect to the granted method-claim, and that these documents should thus have been submitted during the opposition proceedings.

Furthermore D9 to D14 or the general knowledge derivable therefrom do not appear to be highly relevant, in the sense that the impugned decision did not question that the skilled person would combine D5 with D3. The opposition division found that applying the teaching of D5 to D3 would have a negative effect on the main aim of the process disclosed in D3 (see page 5, fifth paragraph of the decision), so that the skilled person would have abandoned this idea.

In light of these considerations the board decided to disregard documents D9 to D14 pursuant to article 114(2) EPC and article 12(4) RPBA.

1.2 Document D15 - Novelty

[...]

1.3 Extracts D16 to D18 of Encyclopedia Books

1.3.1 D16 was considered to be highly relevant by the appellant for the issue of inventive step of the method defined in claim 1 as granted (main request).

D16 is an extract of Book 6A of the encyclopedia "Papermaking Science and Technology". The appellant referred to the annotations "copyright 1999" and "printed 2000" on a cover page as well as to a copy (D16a) of said cover page provided with a hand-written text of "Ms C. Saikkonen, Head of Collections Department University of ... Library" (Note from the board: the handwritten name of the university is not legible) . The text reads: " I confirm this copy of this title has been received by our library in the year 2000."

The board shares the respondent's view that these submissions do not form sufficient evidence for proving that D16 was made available to the public before the priority date (5 February 2001) claimed by the patent in dispute. The printing (2000) and copyright (1999) years indicated in D16 cannot alone prove accessibility before early 2001. The annotation made by Ms Saikkonen does not fulfill the requirements of form and content, which usually apply for affidavits or similar documents. For instance apart from the usual details about the identity of the witness and her involvement in the circumstances surrounding the facts reported the text is silent as to the circumstances in which the book was handled in particular whether the book was received in the library by Ms Saikkonen personally, and when it was actually made available for public consultation, such as by putting it on a shelf or entering it into an accessible database.

The board arrived at the conclusion that, in the absence of sufficient proof for the effective date of public availability of Book 6A, document D16 did not constitute state of the art pursuant to article 54(2) EPC, and was thus to be disregarded.

1.3.2 D17 and D18 were cited by the appellant only for demonstrating a lack of inventive step of the

subject-matter defined in claim 1 of some of the auxiliary requests. Consequently these documents are not considered to be prima facie relevant for the issue of patentability of the subject-matter defined in the claims of the main request.

Documents D17 and D18, for which the date of public accessibility was also questionable for similar reasons as those expressed for D16, are therefore also disregarded (article 114(2) EPC).

1.4 In summary the board decided to disregard all the documents (D9 to D18) which had been submitted for the first time during appeal proceedings.

T 1815/15 - Re-establishment after opposition

Key points

• After an opposition-appeal, the patent proprietor did not pay the fee for publication of the new specification in time, only in the period for paying with surcharge (Rule 82(3) EPC, however without paying the surcharge. The patent was revoked. The patentee files an appeal, and thereafter a request for re-establishment.
• The Board does not allow the appeal (which was based on legitimate expectations). The Board is competent to decide on the request for re-establishment and grants the request.
• The Board for some reason still remits to the OD with the order to maintain the patent. In fact, the Board could have decided to maintain the patent in amended form since all formal requirements had been met. 
• Of note, the filing date was 25.10.1996, the grant 19.12.2001, the first decision in opposition appeal was T1147/06, the second decision was T0319/11, and this is the third decision in opposition appeal. 

https://www.epo.org/law-practice/case-law-appeals/recent/t151815eu1.html 

Summary of Facts and Submissions

I. By decision T 0319/11 of 20 October 2014 dispatched on 12 November 2014, the Board remitted the case to the opposition division with the order to maintain European patent 0857242 in amended form.

II. By a communication pursuant to Rule 82(2) EPC dated 10 December 2014, the opposition division requested the patent proprietor to pay the fee for publication of a new specification and to file translation of the mentioned claims in the other two official languages within three months of notification of this communication.

III. By a communication dated 24 April 2015 pursuant to Rule 82(3) EPC, the opposition division pointed out that the fee for publishing the specification had not been paid, and that the translation of the claims had not been filed in due time. The patent proprietor was reminded that it could still validly perform these omitted acts within two months, provided it paid a surcharge.

IV. The patent proprietor filed the translation and paid the fee for publishing on 3 July 2015, but failed to pay the surcharge.