T 1623/14 - Not deciding on inventive step attack

Key points

• The Board finds a substantial procedural violation, because the OD's decision is insufficiently reasoned, because the OD's decision does  not address one of the opponent's inventive step attacks.
• " The appellant [opponent] in the first instance proceedings explicitly and repeatedly argued that the subject-matter of claim 6 of the patent was not inventive in view of document D1 in combination with the common general knowledge of the skilled person []. However, the Opposition Division in its reasons for the decision, [] when discussing inventive step of the subject-matter of claim 6 made reference only to documents D5 and D4 as prior art documents and neither explicitly nor implicitly took into account the alleged common general knowledge of the skilled person. The Opposition Division therefore failed to address the main argument submitted by the [opponent]; this constitutes inadequate reasoning which contravenes Article 113 EPC 1973 and results in a substantial procedural violation." 

EPO T 1623/14 - link

4. Reimbursement of appeal fee (Rule 67, first sentence, EPC 1973)

4.1 According to Rule 67, first sentence, EPC 1973 (regarding the applicability of the provisions of the EPC 1973 instead of Rule 103(1)(a) of the EPC in the revised text for European patent applications pending at the time of its entry into force, see J 10/07, OJ EPO 2008, 567, 585, 586, point 7 of the Reasons), "the reimbursement of appeal fees shall be ordered ... where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation".

T 1972/13 - Null and void decision and A116

Key points:

• Article 116
  In this examination appeal, the Examining Division issued summons for oral proceedings of own motion, not on request of the applicant. The applicant considered the summons for oral proceedings to be premature. The applicant sent a letter to the Examining Division requesting that "cancellation of the oral proceedings and the continuation of the examination in writing, possibly supplemented by a telephone interview with the primary examiner, if the Examination Division deems it expedient". Auxiliary it was requested "that the oral proceedings are conducted by video-conference, using IP technology; and that the date of the oral proceedings is changed" (the letter was signed by an EPA). Oral proceedings were cancelled, and as next action the application was refused by the Examining Division.
• The Board finds this to be a substantial  procedural violation. " The board further considers that having read the applicant's letter, the examining division at the very least should have been in doubt as to the status of the applicant's requests regarding the continuation in writing and the oral proceedings and should have requested clarification from the applicant in order to avoid committing a substantial procedural violation []. The board notes finally that, in view of the new situation brought about by the [letter], it is not relevant that oral proceedings were initially arranged ex officio and not in response to a request by the applicant." 
• " The board concludes that the examining division infringed the applicant's right to oral proceedings, thereby infringing the applicant's right to be heard enshrined in Article 113(1) EPC."  As a comment, the right to oral proceedings is laid down in Article 116 EPC, not in Article 113(1) EPC. The right to be heard and the right to oral proceedings are distinct and separate rights.
• Null and void decision
  Some time after the decision refusing the application, the Examining Division issued a second separate decision refusing the applicant's request pursuant to Rule 64(2) EPC for reimbursement of an additional search fee. The Board considers this decision to be null and void. " The board considers that the first decision refusing the application pursuant to Article 97(2) EPC terminated the proceedings before the examining division." The case is remitted for the violation of the right to oral proceedings. " The second decision on refund of the additional search fee being null and void, the board considers it appropriate that the matter be reconsidered by the examining division." As a comment, I wonder how the Board would decide the matter if the decision to refuse the application was sound and upheld. 

EPO T 1972/13 - link

Reasons for the Decision

1. The right to be heard (Article 113(1) EPC)

1.1 In the statement of grounds of appeal, the appellant submits two main arguments as to why its right to be heard has been infringed:

(i) The response "R3" contained a "detailed" reasoning and "actually new arguments" to which "no answer has been provided by the Examining Division until the refusal notification in item 27.1. Thus the applicant had no opportunity to present his comments on this new ground stated in item 27.1 in the notification under appeal".
(ii) "Moreover, in reply R1 [sic] to the first communication C2 of the Examining Division, the Applicant has filed at least one admissible request and provided a reasoned statement in support to the patentability of its subject-matter, that following the Applicant's reply, the Examining Division has adopted a different approach to assess the patentability of the invention: while in the first communication of April 5, 2011 document D1 was considered as the primary reference and the subject-matter of claim 1 was held to lack an inventive step over document D1 alone, in the Preliminary Opinion accompanying the Summon [sic] to attend oral proceedings C3, D2 is considered as the closest prior art, and D1 is used as a secondary reference. Thus the applicant demonstrated his good will concerning the progress of the written proceedings.
Thus, the continuation of the examination in writing would have consisted in the present case in giving the possibility for the applicant to respond to a notification pursuant 94(3) EPC or to oral proceedings [board's underlining]".

1.2 It is not necessary to consider argument (i), because the board agrees with the appellant that the examining division should either have issued a communication or have held oral proceedings (argument (ii)), for the reasons set out below.

T 0420/14 - As brief and concentrated as possible

Key points

• In connection of admissibility of the auxiliary requests in this opposition appeal, the Board recalls that "[it] is the established case law of the boards of appeal that the appeal procedure is designed to ensure that the proceedings are as brief and concentrated as possible" .
• The auxiliary requests were submitted before the opposition division, but the OD did not decide on them (neither for admissibility nor for allowability) as the opposition was rejected (patent maintained as granted). Hence, admittance of these requests needs to be decided on by the Board. 
• "If auxiliary requests are submitted, reasons usually have to be given to explain how they overcome those objections (at least if this was not obvious from the amendments made)." Merely indication basis under Article 123(2) EPC is not sufficient, and also indicating the distinguishing features is not sufficient. 
• "[The] merits of these auxiliary requests with respect to inventive step could only be considered in a meaningful manner if the reasons presented in support of those auxiliary requests had been stated fully in order for the Board firstly to allow to understand the chain of logic leading the [patentee] to the conclusion that the amendments submitted overcame the objection raised by the [opponent], and secondly to study and evaluate whether the argumentation presented was persuasive. This in the present case did not only require arguments concerning whether those amendments represented further distinguishing features over the closest prior art, could lead to a different formulation of the problem successfully solved and to a different assessment of the obviousness of the claimed solution, but also a clear indication of the pertinent passages of the relevant prior art, i.e. of the closest prior art and the other documents relied on by the respondent in combination thereof, in order to allow for the Board and the other party to take position with respect to those auxiliary requests. " 

EPO T 0420/14 -  link

9.1 It is the established case law of the boards of appeal that the appeal procedure is designed to ensure that the proceedings are as brief and concentrated as possible and ready for decision at the conclusion of oral proceedings, if scheduled. As indicated in the Case Law (supra, IV.E.4.2.4), the RPBA taken as a whole make it clear that appeal proceedings are primarily written in nature, an important aim of Article 12 and Article 13 RPBA being that the parties' submissions are concentrated at as early a stage as possible so that the case is as complete as possible when it comes to examining it, oral proceedings being in principle appointed at a point in time when the written submissions of all parties are complete (see decision G 4/95, reasons Nr 4).

T 1293/13 - Trapped by parameter

Key point

• Claim 1 as granted is directed to "A garment (400), comprising: a first garment portion [having] an air permeability of less than 168m3/min per m2 [] measured according to ASTM D737-96 using a Frazier Low Pressure Air Permeability Machine 750".
• The reference to a "Frazier Low Pressure Air Permeability Machine 750" kills the patent - the number is said to refer to a series number, i.e. one device, which no longer exists. The claim is considered insufficiently disclosed with the feature. The Auxiliary Request(s) wherein the feature is omitted, is held to violate Article 123(3) EPC.
• " Albeit arising from an objection of the examining division, it was the applicant's [] decision to include such a precisely worded definition of the testing machine into claims 1 and 17. Although the burden of proof lies with the opponent [] in showing that a ground of opposition under Article 100(b) EPC may prejudice maintenance of the patent, it has fulfilled this burden by showing that the parameter values from the specific machine cannot be provided [. It] is therefore for the appellant to show the contrary, namely (1) that some, and which particular ones of the Frazier machines had the same properties as the '750'-machine to measure the permeability according to the claim, and (2) that this was something that the skilled person would have sufficiently been aware of so that the skilled person would have directly and unambiguously deduced it from the application - which the Board finds it has not done." 
• " The [patentee's] further argument that the burden of proof lies with the opponent/respondent's side to provide evidence that the claimed values for the air permeability from the '750' machine would indeed deviate from data for air permeability obtained by any commercially available Frazier Low Pressure Air Permeability Machine is not accepted. This would seem to be an impossible task. Although it may have been possible for the [patentee] itself to provide data of air permeability originating from this specific machine (possibly from an earlier date when the machine existed) with other machines [] the same cannot be said of the respondent. " 

EPO T 1293/13 -  link

VII. Claim 1 as granted (main request) reads as follows:

"A garment (400), comprising:

a first garment portion formed of a fabric material, wherein the first garment portion has an air permeability of less than 168m**(3)/min per m**(2) (550 ft**(3)/min per ft**(2)) measured according to ASTM D737-96 using a Frazier Low Pressure Air Permeability Machine 750;

T 1520/12 - Closest prior art and purpose

Key points

• In this examination appeal, the Board acknowledges inventive step for a "system [for the supervision of an exterior environment of a motor vehicle] differs from the system of D1 in that it is installed in an exterior rear view mirror and in that it is adapted to detect the presence of objects susceptible to collide with said vehicle, namely [in the dead angle zone], and to warn the driver accordingly." 
• The claim in found inventive in particular because " The mere finding that the skilled person would have adapted the system of D1 according to the geometry of the problem to be solved by taking into account the location of the dead angle relative to the vehicle and its trajectory may be correct, but is not conclusive. Such an approach namely relies on the assumption that the skilled person would have indeed considered using the system of D1 for the claimed purpose. Whether such an assumption is justified under the circumstances is, however, doubtful." 
• Compare T 1742/12

EPO T 1520/12 - link

For these reasons, document D1 is considered to illustrate the closest prior art.

3.2 The claimed system [for the supervision of an exterior environment of a motor vehicle] differs from the system of D1 in that it is installed in an exterior rear view mirror and in that it is adapted to detect the presence of objects susceptible to collide with said vehicle, namely within a determined area behind the vehicle covering at least one dead angle, and to warn the driver accordingly.

The invention permits to warn the driver of risks of collision because of objects present in the area corresponding to the dead angle of a rear view mirror, taking due account of the fact that said dead angle may vary according to the trajectory followed by the vehicle (cf. page 4, lines 7-14).

T 2016/16 - Re-establishment

Key points

• The Board refuses the request for re-establishment of rights for a missed time limit for filing the statement of grounds. The time limit was missed because it was not entered into the docketing system by an assistent, and the omission was not noticed by the attorney. 
• To summarize the Board's reasoning in reversed order: "The omission from the docketing system of the time limit for filing the statement of grounds can therefore not be said to equate to an isolated mistake in a normally satisfactory monitoring system [for monitoring time limits]". This was because "[the] appellants have not discharged their burden to prove the existence of a normally satisfactory monitoring system." This was the case because "even with such a system of double checking in place [by the attorney], the representative is not discharged from his or her duty to properly instruct and supervise the assistant []. In the case at hand, the appellants have not shown that the assistant was properly instructed or that she was properly supervised".
•  "In particular, there is no evidence on file that would suggest that the assistant had been instructed to enter not only the two-month time limit for filing the notice of appeal in the docketing system but also the four-month time limit for filing the statement of grounds of appeal. In this respect, the board also notes that the appellants' contention that the assistant normally performed her duties satisfactorily is not supported by corroborating evidence." 

EPO T 2016/16 -  link

Summary of Facts and Submissions

I. The appellants (applicants) lodged an appeal against the decision of the examining division to refuse application No. 10 817 590.2. The impugned decision was posted on 16 March 2016.

II. The appellants filed a notice of appeal on 20 April 2016 and paid the prescribed fee on the same day.

III. The statement of grounds of appeal was filed on 22 August 2016. On the same day, a request for re-establishment of rights in respect of the time limit for filing the statement of grounds of appeal was filed and the prescribed fee was paid. With the statement of grounds of appeal, the appellants filed a main request and an auxiliary request.

EPO Debit orders - New ADA OJ 2017 Suppl. 5

Key points

• As of 1 December 2017, debit orders can no longer be given by fax, on paper, or in PDF attachments. 
• Debit orders should be given using Online Fee Payment, the PCT fee calculation and payment feature in e.g. Online Filing (if I understand the second bullet below correctly), or the forms that are filled in in EPO Online Filing or EPO CMS. 
• Only in case of patent application filed on paper with a national authority under Article 75(1)(b) EPC, can a special paper form debit order be used. Some national authorities allow filing EP applications with them using EPO Online Filing Software, so then the debit order can be included in proper format. Alternatively, I assume that bank transfer to EPO mentioning the application number can be used for payment of the filing fee and search fee. 

EPO  link

5.1.2 The debit order must be filed in an electronically processable format (XML) via one of the following:

• EPO Online Filing or the EPO Case Management System (CMS), using EPO Forms 1001E, 1200E, 2300E or 1038E;
• the EPO Online Filing software or PCT-SAFE, CMS and ePCT using the PCT fee calculation and payment feature;
• Online Fee Payment in Online services.

5.1.3 Debit orders submitted in any other way, e.g. on paper, by fax, via the web-form filing service or using a different format such as a PDF attachment, are invalid and thus will not be carried out. The EPO will inform the party to the proceedings[ 8 ]accordingly, as a courtesy service. The legal consequence of filing an invalid debit order is laid down in point 5.4.2.