T 1782/11 - Reformatio in peius

Key points

• In this opposition case, only the patentee appealed against the decision to maintain the patent in amended form. The opponent-respondent requests revocation of the patent. This is of course not possible as the most straightforward case of reformatio in peius. The board further finds claim 1 as granted to lack basis in the application as filed. The auxiliary requests are not admitted, because they correspond to requests that had been presented and withdrawn before the OD

Summary of Facts and Submissions

I. The appeal by the patent proprietor is against the interlocutory decision of the opposition division holding that granted claim 1 of European patent EP-B-916 891 went beyond the content of the application as filed and that the documents submitted as auxiliary request met the requirements of the European Patent Convention. [...]

Reasons for the Decision

1. Prohibition of reformatio in peius

In its decisions G 9/92 and G 4/93 (OJ EPO 1994, 875, Headnote I) the Enlarged Board of Appeal concluded that if the patentee was sole appellant against an interlocutory decision maintaining its patent in amended form as in the present case, neither the board of appeal nor the non-appealing opponent (as party to the proceedings as of right under Art. 107, second sentence, EPC 1973) could challenge maintenance of the patent as thus amended. In view of that, a review of the opposition division's decision on the compliance of the auxiliary request with the requirements of the EPC is outside the scope of the present appeal proceedings. Thus, the respondent's request for a revocation of the patent in suit has to be rejected.

[...]

For these reasons, the board concludes that claim 1 as granted goes beyond the content of the application as filed, Article 100(c) EPC 1973.

3. First and second auxiliary requests, admissibility

3.1 Claim 1 of the first auxiliary request is identical to claim 1 of an auxiliary request filed during the opposition proceedings (cf. point 4 and annex I of the minutes of the oral proceedings). Furthermore claim 1 of the second auxiliary request now on file is largely based on this auxiliary request of annex I and differs therefrom only in that it explicitly spells out the previously implicit aspect of a direct or indirect connection between the output connecting means and the apparatus for utilising the gas. It appears from the minutes that the auxiliary request of annex I was submitted during the oral proceedings before the opposition division (cf. point 4) and subsequently replaced with a different auxiliary request (cf. point 9 and annex III of the minutes), thereby effectively withdrawing the auxiliary request of annex I.

3.2 Under Article 12(4) RPBA, a board of appeal has the discretion to refuse the admission of requests which could have been presented or were not admitted in the first-instance proceedings. According to the established jurisprudence of the boards of appeal, this applies all the more to requests that were filed and subsequently withdrawn during the first-instance proceedings, since such a course of events clearly shows that these requests could have been presented in those proceedings (cf. Case Law of the Boards of Appeal of the European Patent Office, 7**(th) edition, 2013, IV.E.4.3.2. c)). Moreover, the withdrawal of the request has prevented the department of first instance from giving a reasoned decision inter alia on the admissibility of the auxiliary request of annex I (cf. points 4 and 9 of the minutes), thereby compelling the board either to give a first ruling on this issues or to remit the case to the department of first instance.

Since the first and second auxiliary requests presently on file are de facto identical to the withdrawn auxiliary request of annex I, they are not admitted into the appeal proceedings under Article 12(4) RPBA.

Order

For these reasons it is decided that:

The appeal is dismissed.

T 0830/11 - No Rule 43(2) in opposition

Key points

• The Board decides that Rule 43(2) EPC (multiple independent claims in the same category) is not applicable in opposition. This is based on G 1/91.
• Filing date in 1998, grant in 2007. Now a remittal.

T 0830/11 - link 

8. Appellant's auxiliary request 4

8.1 Auxiliary request 4 comprises three independent claims 1, 2 and 4. Said claims correspond, respectively, to a combination of claims 1, 2 and 3, claims 1, 2 and 4, and claims 1, 2 and 7 of auxiliary request 2.

8.2 Auxiliary request 4 was not admitted by the opposition division into the opposition proceedings under Article 114(2) and Rule 116(2) EPC because the three independent claims did not fulfill the requirements of Article 84 EPC 1973 as to conciseness and of Rule 43(2) EPC concerning "multiple claims" in the same category. In particular, the opposition division held that the claims were all of the apparatus category and related neither to interrelated products nor to different uses nor to alternative solutions to a particular problem. While claims 1 and 2 were considered to relate to different solutions of the problem of miniaturisation, claim 4 was considered to address the different problem of decoupling of the two output ports and common coupling port.

8.3 Under the circumstances, the role of the Board is, primarily, to ensure that the opposition division made a correct application of its discretion and, in particular, that it applied the correct principles when exercising said discretion.

8.3.1 In this respect, it is noted that auxiliary request 4 was filed for the first time during the oral proceedings before the opposition division (cf. minutes of the oral proceedings before the opposition division, page 5, third paragraph). The exercise by the opposition division of its discretion in order to decide on the admissibility of said late filed auxiliary request 4 was thus legitimate.

8.3.2 The Enlarged Board of appeal held in decision G 1/91 (OJ 1992, 253; Headnote) that:

"Unity of invention (Article 82 EPC) does not come under the requirements that a European patent and the invention to which it relates must meet under Article 102(3) EPC when the patent is maintained in amended form. It is consequently irrelevant in opposition proceedings that the European patent as granted or amended does not meet the requirement of unity".

The opposition division noted in section 6.2 of its decision that "the requirements of Art. 84 and Rule 43(2) EPC have to be fulfilled, regardless of the fact that Article 82 EPC only relates to the European patent application". The position adopted by the opposition division is thus tantamount to deprive the decision of the Enlarged Board of any effects, since it leads to the finding that a request including a plurality of independent claims must be rejected for this very reason.

In the Board's judgement, the condition of conciseness of Article 84 EPC 1973, as well as the dispositions of Rule 29(2) EPC 1973 (Rule 43(2) EPC), have to be construed in opposition proceedings in the light of the findings by the Enlarged Board of appeal (cf. decision G 1/91, Reasons, point 4.2) that "the administrative purposes of unity are fulfilled in the main up to the time the patent is granted. ... In view of the object and purpose of both unity and opposition, it seems neither necessary nor appropriate to continue to attach importance to any lack of unity at the opposition stage. Once the examination procedure has been concluded with the grant of a patent, the requirement of unity has fulfilled its administrative function".

The requirements of Rule 29(2) EPC 1973 (Rule 43(2) EPC) should therefore not constitute an obstacle for the patentee to defend the patent in all its branches (cf. decisions T 263/05 (OJ 2008, 329) and T 1416/04, not published).

In order to avoid any misunderstanding, it should be emphasized that the Board does not question the general applicability of Article 84 EPC 1973 as to conciseness and of Rule 29(2) EPC 1973 (Rule 43(2) EPC) in opposition proceedings. The Board only considers that these norms do not apply to sets of claims whose subject-matter was already claimed in the granted version of the patent.

8.4 In conclusion, the Board considers that the opposition division did not correctly exercise its discretion when deciding on the admissibility of auxiliary request 4 then pending.

8.5 Therefore, the Board admits appellant's auxiliary request 4 into the appeal proceedings.

9. Remittal of the case to the opposition division (Article 111(1) EPC)

During the oral proceedings before the Board, the appellant requested that the case be remitted to the opposition division for further prosecution in case that the Board would admit appellant's auxiliary request 4 into the proceedings. The respondent made no comments in this respect.

In view of this, the Board has no reasons to reject the request for remittal.

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 for further prosecution.

J 0019/13 - Signing the request for grant

Key points

• This case concerns a request for refund of the filing and search fees. This requires that the application is not treated as a European patent application (and is not given a filing date). The applicant asserts that this is the case because the Request for grant was not validly signed because it was signed by a person other than a professional representative and the applicant was a US company. 
• The real issue is that the application had been refiled a day later with a better text, not claiming the priority of the present application. Hence, the present application is published and forms a prior right for the second application. That other application is actually deemed withdrawn as of yet. 
• The Board, on the request for refund:
  " The signature of the applicant or his representative forms one of the requirements for the content of the request for grant (cf. Rule 41(2)(h) EPC). The request for grant is one of the formal requirements for the European patent application laid down in Article 78(1) EPC. The signature on the request for grant is, however, not one of the requirements for the accordance of a date of filing pursuant to Article 80 EPC and Rule 40 EPC.
• Addendum 17.10.2020: "  The ways in which the proceedings relating to a pending European patent application can come to an end are laid down in the EPC in an exhaustive manner: refusal of the application, withdrawal of the application by the applicant, deemed withdrawal of the application or grant of a European patent. The first three alternatives, which represent the possible negative outcomes of the grant proceedings, are mentioned together at various points in the EPC, for example, Article 67(4), Article 135(1)(b), Rule 67(2), Rule 143(1)(n) and Rule 147(4)(a) EPC. Besides these outcomes, no other "negative" termination of the grant proceedings, such as a declaration that an application is invalid ab initio, is provided for by the EPC and, consequently, no other scenarios than those mentioned above were referred to by the Enlarged Board in its opinion G 1/90 during its analysis of the termination of the grant procedure (OJ EPO 1991, 275, Reasons 5 et seq.)."

J 0019/13 - link

Summary of Facts and Submissions

I. The appeal lies against the interlocutory decision of the examining division of 14 June 2013. The examining division held that European patent application No. 10161088.9 was filed on 26 April 2010 using the EPO online software and met the requirements for according a date of filing pursuant to Article 80 and Rule 40 EPC. The applicant's requests that the application be considered invalidly filed and that the fees paid in relation to the application be refunded were rejected. 

T 1791/11 - Mutations and plausible effect

Key points

• The Board confirms as established case law that " simply proposing a series of possible mutations [for an enzyme] without showing an effect is not considered to involve any inventive contribution over the prior art wherein a number of other mutations has already been proposed"  (citing T 537/02).

T 1791/11 - link

3.2 Inventive step

3.2.1 The present patent discloses "novel subtilase variants exhibiting alterations relative to the parent subtilase in one or more properties including: Wash performance, thermal stability, storage stability or catalytic activity" (application as filed: page 1, first paragraph; page 16, fourth paragraph). Specific variants of BPN' (BASBPN) and of Savinase (BLSAVI) are set out on page 23 of the application as filed as being "considered interesting". The paragraph immediately following this list of variants then states that "The wash performance of a selected variant of the invention may be tested in the "Model Detergent Wash Performance Test" disclosed in Example 3 herein". No results concerning wash performance (or any other properties) are however provided for any of the listed variants, nor is it apparent why these variants have been selected as "interesting". 

T 0732/11 - Tactical considerations

Key points

• In this examination appeal, a new sole request was filed during the oral proceedings (after the Board had indicated its opinion about the main request). The Board does not admit it into the proceedings.
" The only reason indicated by the appellant's representative as to why this new request was nonetheless only filed during the oral proceedings was that the appellant had considered that they would be able to convince the board that the previous request met the requirements of Article 123(2) EPC, and on this basis had decided not to file any amendments before hearing the board's opinion on this point. Such tactical considerations cannot however justify ignoring the explicit instructions of the board [] "

T 0732/11 - link

Reasons for the Decision

1. The appeal is admissible.

2. Admissibility of request filed during oral proceedings

2.1 The appellant's sole request was filed during the oral proceedings before the board, after the board had given its opinion that the previous request contravened Article 123(2) EPC. The reasons for that opinion had already been presented to the appellant in the board's communication of 15 January 2016. The final paragraph of that communication stated that "the board should not be taken by surprise by ... new requests at the oral proceedings", and that the appellant "may file written submissions in preparation for the oral proceedings up to one month before the date scheduled for the oral proceedings" (emphasis in original).

2.2 The only reason indicated by the appellant's representative as to why this new request was nonetheless only filed during the oral proceedings was that the appellant had considered that they would be able to convince the board that the previous request met the requirements of Article 123(2) EPC, and on this basis had decided not to file any amendments before hearing the board's opinion on this point. Such tactical considerations cannot however justify ignoring the explicit instructions of the board, which instructions reflect the provisions of Article 13(1) and (3) of the Rules of Procedure of the Boards of Appeal (RPBA). Moreover, even if it were considered acceptable to defer filing such requests in this manner, it would nonetheless have been possible (and indeed incumbent on the appellant) to have prepared them in advance of the oral proceedings, rather than obliging the board to interrupt the oral proceedings so that this could be done. Thus, this reason alone cannot justify the admission of this request into the proceedings at such a late stage.

2.3 Two further factors speak against the admissibility of the request, namely:

- Claim 1 of the request differs from that of the previous request (that filed with letter of 12 August 2010) by the deletion of the features corresponding to the original dependent claim 24. Those features had been introduced into the independent claims already with the then applicant's reply of 13 January 2009 to the first communication under Article 94(3) EPC, and had been maintained in the claims since then. Their deletion thus represents a significant change in direction of the appellant's case.

Even though the modified request addresses the objection under Article 123(2) EPC as raised in section 1.1 of the board's communication, it makes no attempt to address the objections of lack of clarity raised in section 2.2, second sentence of that communication. Moreover, since the amendment consists in the deletion of features from the claim, it also could not contribute to addressing the objection of lack of inventive step which was the basis of the decision under appeal. Indeed, the resultant broadening of the scope of the claim might even result in further prior art becoming relevant for the assessment of inventive step. Thus this request prima facie does not meet the requirement established in the case law of the Boards of Appeal that a request filed only at such a late stage of the procedure should be clearly allowable.

2.4 The board therefore, exercising its discretion under Article 13(1) and (3) RPBA, decided to not admit this request into the proceedings.

3. Request for remittal

The appellant requested that if the (main) request were not allowed, the case should be remitted to the department of first instance for further prosecution, in particular to give the examining division the opportunity to decide on the objections under Articles 123(2) and 84 EPC raised by the board. The board however sees itself as being fully in a position to exercise its discretion under Article 111(1) EPC in such a way as to decide on the formal matters discussed during the oral proceedings. The appellant's comment concerning reformatio in peius is not relevant in this context, since the decision under appeal was to refuse the application, so that a decision not to remit the case would not result in any worsening of the position of the appellant, merely a confirmation of that position. The board therefore decided not to remit the case to the department of first instance.

4. Since the appellant's sole request was not admitted into the proceedings, and since the case is not to be remitted to the department of first instance, the appeal has to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.

T 1563/13 - Transfer of opposition

Key points

• The patent proprietor argued that the appeal of the opponent was inadmissible because at the time of filing the appeal, it had already transferred its status as opponent. The Board finds that such transfer would in any case have been effected only as of its registration and therefore not at the date of filing the appeal.
• Registration of the transfer had been requested, but is refused.
" It is evident from the above that there is no sufficient evidence that a transfer of the relevant business assets in their entirety took place, let alone a transfer of the opponent status in relation to the patent in suit. As a consequence, the request for transfer of the status of opponent is to be refused."

T 1563/13 - link 

Reasons for the Decision

1. Admissibility of the appeal

1.1 The respondents requested that the appeal be considered inadmissible because it had been filed by a party not entitled to do so. When filing the notice of appeal on 5 July 2013, the opponent Dynea Oy was no longer in a position to file the appeal, because it had already transferred its status as opponent to Dynea AS, as shown by the transfer agreement D38, dated 11 March 2013.

1.2 It is well established that oppositions, while they may not be freely transferred, can be transferred in certain circumstances from one natural or legal person to another, either together with those assets of a business in the interest of which the opposition was commenced or in the framework of universal succession.

As regards the date of effective transfer of the opponent status, the jurisprudence of the boards of appeal clearly suggests that a transfer can only be acknowledged as from the date when adequate evidence is provided. Until such evidence has been provided, the previous party retains its rights (e.g. T 956/03, point 4 of the reasons with reference to case law; see also Case Law of the Boards of Appeal of the EPO, 7th edition, 2013, Chapter IV.C.2.2.6).

T 0493/12 - Acceleration after remittal

Key points

• In this opposition appeal, the proprietor restricted to the method claims in appeal.
• " The Board holds that the filing with the statement of grounds of appeal of a request which essentially corresponds to a request decided upon by the Opposition Division, wherein claims which were found unallowable by the first instance have been deleted, said request thereby being restricted to subject-matter of a different category for which no negative decision has been issued by the Opposition Division, deprives the contested decision of its basis, and is normal behaviour of a losing party. " 
• There is no provision of the EPC under which any competence is given to a Board of Appeal to decide the time frame of first instance proceedings after remittal (see T 2362/08)

T 0493/12 - link

Auxiliary request 2

3. Admissibility

3.1 Auxiliary request 2 was filed with the statement of grounds of appeal. It is based on the main request wherein granted claims 1 to 5, namely the claims to the reactor system, have been deleted, and granted independent claim 6, directed to a method for starting up the reactor system of claim 1, has been reformulated as claim 1, wherein the features of the reactor system of granted claim 1 have now been incorporated into said claim in full. []

3.2 Appeal proceedings are based inter alia on the statement of grounds of appeal filed pursuant to Article 108 EPC, said statement containing the party's complete case (see Art. 12(1) and (2) RPBA). The Board may however hold inadmissible requests which could have been presented in the first instance proceedings (see Art. 12(4) RPBA).