T 1226/13 - Correction identity opponent

Key points

• An opposition was filed in October 2008 in the name of Leica Microsystems Heidelberg GmbH with address in Mannheim. At that time, "Leica Microsystems Heidelberg GmbH" did not exist anymore. The Board allows the correction of the opponent identity under Rule 139 EPC into "Leica Microsystems CMS GmbH". Some emails of the in-house patent counsel of Leica instructing an external patent attorney to file the Notice of opposition are relied on as evidence that the true intention was to file in the name of "Leica Microsystems CMS GmbH" (there are numerous Leica legal entities, but only one with the same address in Mannheim.  
• The submitted emails fulfil the "heavy burden of proof"  of G1/12, r.37(b). The critical email of Mr. O. to Ms. F reads in relevant part: " "wollen wir gegen EP 1 396 739 B1 von Zeiss einsprechen". Furthermore the evidence is that Mr. O. was an employee of  Leica Microsystems CMS GmbH based on the email signature. " Das bedeutet, dass Herr O. für die Leica Microsystems CMS GmbH, Am Friedensplatz 3, 68165 Mannheim den Auftrag zur Einlegung eines Einspruchs erteilt hat." 

• The decision is rather lengthy and was taken by the Board in extended composition (5 members), but overall seems a straightforward application of G1/12 (issued 30.04.2014, so during the appeal procedure)
• For some reason, the Board has written the decision for the relevant part as a copy/paste of the provisional opinion, with changed marked with square brackets. Hence, the paragraph numbering is rather confusing (paragraphs of the provisional opinion nested in the decision text). The interested reader can find the somewhat clearer formatted PDF decision in the usual place on the EPO website. 

EPO T 1226/13 - link

1. Die Beschwerde ist zulässig.

2. Der Einspruch ist ebenfalls zulässig. Dieses Ergebnis wird nachstehend im Einzelnen begründet.

Die Kammer hält insoweit im Wesentlichen an ihrer Darstellung des Sachverhalts und vorläufigen rechtlichen Würdigung in der oben, unter Nr. VI, erwähnten Mitteilung fest. Das gilt für Nr. 1, Seite 5, bis einschließlich Nr. 1.2.3c), Seite 32 (Ende des ersten vollen Absatzes, der mit den Worten "... nur ein weiteres.)" schließt. Der Auszug wird im Folgenden wörtlich und unter Beibehaltung der Nummerierung in der Mitteilung wiedergegeben.

Änderungen sind mit Hinzufügungen in eckigen Klammern bzw. Durchstreichungen oder Auslassungspunkten kenntlich gemacht.

Der Auszug wird in der nachstehenden Fassung endgültig.

An diesen Auszug schließt sich eine Darstellung und Bewertung der auf die vorgenannte Mitteilung der Kammer hin eingereichten Beweismittel der Beschwerdegegnerin (Einsprechenden) und der Stellungnahme der Beschwerdeführerin (Patentinhaberin) hierzu an.

Die Kammer hält im Übrigen auch an ihrer vorläufigen Auffassung in Abschnitt Nr. 1.2.4: "Vorlage bestimmter Fragen an die Große Beschwerdekammer" (Mitteilung, Seite 35 unten bis 37 oben) fest, welche damit ebenfalls endgültig wird.

2.1 Zulässigkeit des Einspruchs

[Beginn des Auszugs aus der mit der Ladung zur mündlichen Verhandlung übersandten Mitteilung]

1. Zulässigkeit des Einspruchs

1.1 Sachverhalt

1.1.1 Einspruchsverfahren vor der Einspruchsabteilung

In dem am 2. Oktober 2008, dem letzten Tag der Einspruchsfrist eingelegten und von ,,Dr. Landskron (Zusammenschluss Nr. 35)", Kanzlei Schaumburg, Thoenes, Thurn, Landskron, Eckert, unterschriebenen Einspruch ist die Leica Microsystems Heidelberg GmbH mit Anschrift Am Friedensplatz 3, 68165 Mannheim als Einsprechende bezeichnet. Mit Schreiben vom 18. November 2008 teilten die Vertreter dem EPA mit, dass ,,der Firmenname der Einsprechenden Leica Microsystems Heidelberg GmbH in Leica Microsystems CMS GmbH geändert" (eigene Hervorhebung) worden sei und beantragten, ,,die Änderungen entsprechend zu vermerken". Als Nachweis war eine beglaubigte Kopie einer notariellen Bescheinigung beigelegt (Anlage 3), in welcher als letzte Ereignisse der Unternehmensgeschichte eine Änderung der Firma in Leica Microsystems CMS GmbH und sodann deren Verschmelzung - am 12. April 2005 - mit der Leica Microsystems Wetzlar GmbH genannt sind. Die neue Firma laute Leica Microsystems CMS GmbH.

T 1755/14 - Non-existent opponent and correction identity

Key points

• In this opposition appeal, it becomes apparent that the legal entity named as opponent in the Notice of opposition, did not exist at the date of filing the opposition, because it was a KG (limited partnership under German law) which was dissolved about 1 October, i.e. before the  Notice of opposition was filed on 8 October. The Board is satisfied that a universal succession took place on 1 October from the KG to the AG (a different entity, and a partner in the KG).  Hence, the KG no longer existed on 8 October.
• The Board allows a correction of the opponent identity under Rule 139 from the KG to the AG. 
• " There is nothing to indicate that the true intention was to file the opposition in the name of a person other than the only successor of the person who originally instructed its representative to file the opposition. The board is convinced that the representative (who may not have been aware of the succession on 8 October 2010) had intended to file the opposition on behalf of the entity which had acquired all the assets and liabilities of the entity that gave him the instruction to file the opposition".
• The OD had found the opposition to be inadmissible due to the non-existence of the KG at the filing date of the opposition; the Board allows the appeal and remits the case.

EPO T 1755/14 - link

Reasons for the Decision

1. Admissibility of the appeal

1.1 The opposition was filed on behalf of SymKG and the opponent was referred to as "SymKG" throughout the opposition proceedings. The respondent challenged the admissibility of the appeal filed by SymAG, arguing that the requirements of Article 107 EPC were not met since SymAG had not been a party to the opposition proceedings.

1.2 Since no other issues concerning the admissibility of the appeal have been raised by the respondent or identified by the board, the admissibility of the appeal depends solely on the identity of the opponent. If SymAG was recognised as the opponent, it would be adversely affected by the decision under appeal and its appeal would be admissible.

2. Universal succession from SymKG to SymAG

Grants 2018 for applications filed in 1998

The following are not divisional applications!

EP1016126 - PCT filed 30.03.1998. Mention of the grant on 26.12.2018 in patent year 21!. Entry into the European phase in 1999, supplementary ESR in 2009! First Communication in 2009, further Communications in 2013, 2016. Intention to grant on 03.07.2018 (so after the expiration of the 20-year patent term!). The invention is about an "optical inspection module" for inspecting electronic substrates. The primary Examiner was the same all from 1999 to 2018.

EP0974066. PCT filed 07.04.1998. Grant 10.10.2018 in patent year 21!
European search report in 2003. Communications in 2005, 2006, 2013, 2018. Intention to grant in 2018 (interestingly enough with only two signatures on the signature page). Mining technology (oil fields).

EP1002401 - PCT filed 24.06.1998. Grant 13.04.2018 in patent year 20. Supplementary ESR in 2005, first Communication 2008, further Communications in 2008, 2016, Intention to grant in 2017.

EP0961923 - PCT filed 16.12.1998. Grant 16.12.1998; 1st Communication in 2007, then in 2014, Intention to grant in 2017. Solid phase extraction.

EP1042819 - PCT filed 15.12.1998. Grant 24.01.2018 in patent year 20. Communications in 2005, 2013, Intention to grant in 2017. Optoelectronic component.

EP1040398 - PCT filed 17.12.1998. Grant 21.02.2018 in patent year 20. Communications in 2004, 2008, 2014, 2016, Intention to grant in 2017. LED lamp.

EP1040645 - PCT filed 14.12.1998. Grant 28.03.2018 in patent year 20. Communications in  2008, 2009, 2014, 2017. Intention to grant in 2017. Software.

EP0921468 - EP filed 04.12.1998. Grant 31.01.2018 in patent year 20. Communications in 2007, 2008, 2013, 2016. Intention to grant in 2017. Computer hardware.

In the above, "grant" refers to the date of the publication of the mention of the grant in the Bulletin.

There were no patents granted in 2018 with actual filings in 1997, 1996 and 1995.

Two divisional applications were granted in 2018 with a filing date in 1995: EP2264911 (Intel; divisional filed in 2010) and EP3103799 (pharmaceutical composition; divisional filed in 2016) and one divisional with filing date in 1994 (EP2264475; div filed in 2010). 

If I missed any special circumstances (stay of proceedings) please feel free to contact me.

T 1981/15 - Rule 49(10) EPC and clarity

Key points

• In this examination appeal, the refusal was based on Article 84 and Rule 49(10) EPC, last sentence. That sentence reads: ""Only the technical terms, formulae, signs and symbols generally accepted in the field in question shall be used."
• The Board clarifies the meaning of the provision as follows: "The intention, in the opinion of the Board, is to prohibit the use of terminology (and formulae, signs and symbols) which would be misleading or unfamiliar to the person skilled in the art." 
• The Board then applies this rule to the term at issue.
• " While the term "leading" [in: "leading-end open line 50"; the invention is about a radio-frequency device], taken in isolation, might appear imprecise, the skilled person would, as set out above, understand from the claim that the open end is the distal end, remote from the pad. Labelling this end as the "leading" end does not add any new technical information, but neither can it be seen as misleading or detracting from the clarity of the claim. Hence, within the context of the subject-matter of claim 1, the Board finds that element 50 is described in a manner which is clear and comprehensible, using terms which would be understood by a person skilled in the technical field. The requirements of Article 84 and Rule 49(10) EPC are therefore met.

Reasons for the Decision

1. The appeal is admissible.

2. Article 84 and Rule 49(10) EPC

2.1 Claim 1 defines that the internal conductor pad includes a "leading-end open line 50". This term, which was present in the translation of the international application into English pursuant to Article 153(4) EPC, was objected to during the examination procedure under Article 84 and Rule 49(10) EPC for being "not generally accepted in the art" (see e.g. communication of 24 July 2014, point 1.1). As a result, this feature was amended to "slot line" in the version of the claims as refused. Since the term "leading-end open line 50" has been re-instated into claim 1 of the present main request, it is necessary for the Board to consider the objections previously raised against it.

2.2 The last sentence of Rule 49(10) EPC reads as follows:

"Only the technical terms, formulae, signs and symbols generally accepted in the field in question shall be used."

The intention, in the opinion of the Board, is to prohibit the use of terminology (and formulae, signs and symbols) which would be misleading or unfamiliar to the person skilled in the art.

2.3 In the present case, the term in question appears in claim 1 as follows:

"the internal conductor pad (5) includes a leading-end open line (50) having a length of a quarter of a wavelength of a radio-frequency signal used in the radio-frequency device (2)."

T 2282/17 - Form refusal, 10 procedural violations

Key points

• Yet another refusal with Form 2061, yet another substantial procedural violation. The Board identifies 10 procedural violations (no reasoned decision, and not replying to the applicant's arguments on various matters).
• The form refers to 3 earlier Communications, but not all objections were clearly pursued by the ED up to the last Communication.  "It is therefore left to the appellant and to the Board to speculate whether any of the objections above, not pursued up to the third and last communication, are considered by the examining division to be reasons prejudicial to the granting of the patent." This is the 1st procedural violation.
• The second procedural violation concerns the argument of the application that D7 was a US design patent, and hence is not the first application in the sense of the Paris Convention (design patents are not industrial property rights under the Paris Convention) as held in  J15/80, such that the claimed priority was valid. 
• "The examining division did not comment on the arguments presented by the appellant in its first reply, in either its second or third communication. In particular, there is on file no counter-argument of the examining division with regard to the relevance of decision J 15/80 to the present case or to the appellant's argument that some features of claim 1 cannot be derived from D7. The absence of any indication that the arguments put forward by the appellant have been considered constitutes a violation of Article 113(1) EPC."
• The third procedural violation is that the ED did not reply to the applicant's arguments that D2 was not novelty destroying for claim 1. This a violation of the right to be heard, because the objection is effectively maintained in the refusal with Form 2061. 
• The fourth procedural violation is that the ED did not reply to the applicant's arguments that D2 was not novelty destroying for claim 7. This a violation of the right to be heard.
• The fifth procedural violation is that the ED did not reply to the applicant's arguments that claim 5 was clear. This a violation of the right to be heard.
• The sixth procedural violation is that the ED "failed to indicate in the communication wherein D1 or D3 these features could be found" for the inventive step rejection. This is a violation of Rule 111(2) EPC.
• The Board identifies a further seventh procedural deficiency. The ED did not give reasons " why the absence in claim 1 of such features causes the subject-matter of the claim to extend beyond the content of the application as filed" thereby violation Rule 11(2) EPC.
• " Moreover, by not providing detailed counter-arguments with respect to the appellant's argument that claim 1 represents an allowable limitation of originally filed claim 24"  the ED violated the right to be heard. This is the 8th procedural violation.
• The ninth procedural violation concerns the dependent claims. " As for independent claim 1, in its reasoning the examining division fails to specifically indicate the features which are actually disclosed in combination with the features of dependent claims 2 to 4 and whose absence from the dependent claims gives rise to an unallowable intermediate generalisation, and to give reasons why this should be the case." 
• The 10th procedural violation is that "Furthermore, the examining division does not provide detailed counter-arguments to the appellant's argument that because claims 2, 3 and 4 were formulated with features taken from the example [they ad basis in the application as filed]". This violates the right to be heard.

X. The examining division issued the impugned decision in a standard form. The decision refers to the first, second and third communications. The full text of the grounds of the decision reads as follow:

"In the communication(s) dated 09.09.2016, 22.03.2016, 09.07.2015 the applicant was informed that the application does not meet the requirements of the European Patent Convention. The applicant was also informed of the reasons therein.
The applicant filed no comments or amendments in reply to the latest communication but requested a decision according to the state of the file by a letter received in due time on 08.03.2017.
The application must therefore be refused."

Reasons for the Decision

2. The appellant submits that a standard decision form for issuing a decision on the state of the file which refers to several communications and leaves it up to the Board to construct the applicable reasons by "mosaicing" various arguments from the file, or which leaves it in doubt which argument applies to which claim version, does not meet the "reasoned" requirement of Rule 111(2) EPC.

Visser's Annotated EPC 2018 edition

Yesterday the new Visser was delivered, with my name on the cover as well. I've contributed to the chapters on opposition, appeals, RFees and PCT. As you can see below, I am quite proud of it.

For the readers of this weblog, I would like to emphasize that writing for the Visser book involves much more thorough editing and a significantly higher level of proofreading and double checking. I estimate that each sentence/paragraph in the book takes me about as much time as writing a week's worth of blog posts. (In addition, I've only recently added a decent spell checker to my web browser so hopefully, things will improve for this weblog).

Visser's Annotated Patent Convention (2018 edition) is published by Kluwer and can be ordered here and here. 

T 0658/12 - Diverging requests before the Examining Division

Key points

• In this examination appeal for a software invention, the Board judges that the ED had applied the Comvik approach to easily. The ED had put some features in the business specification which were in fact technical according to the Board.  The features at issue concern the authentication and identification of computers. 
• However, this is not a substantial procedural violation. "The COMVIK-approach may have been incorrectly applied, but this is a substantive issue, only involving judgement. Thus, the decision is reasoned in the sense of Rule 111(2) EPC." 
• The applicant had also argued that the ED's decision to not admit the 2nd AR into the procedure was a substantial procedural violation. The Board does not agree.
• " The examining division exercised its discretion under Rule 137(3) EPC by using the following criteria: the timing of the request (one week before the oral proceedings), the divergence of the request and the prima facie unallowability of the request for lack of inventive step." 
• " Contrary to the appellant's arguments, the Board takes the view that divergence of a request is a factor which may be taken into account in the exercise of discretion under Rule 137(3) EPC. Amendments which do not increasingly limit the subject-matter of the independent claims of a main request in the same direction of a single inventive idea may be contrary to the EPO's interest to bring the proceedings to a close." 

EPO T 0658/12 -  link

Main request

2. Interpretation of independent claim 1

The Board agrees with the appellant's argument that the subject-matter of claim 1 involves at least some technical features which are not regarded as notorious knowledge of the skilled person.

2.1 Apart from business related aspects of order processing the claimed subject-matter also involves aspects concerning authentication and identification of users at different entities of the claimed system. The Board considers the latter to contribute to the technical character of claim 1 so that they cannot be regarded as being part of the non-technical requirement merely to be implemented by the technical skilled person.