G 0001/18 - Late appeal fee

Key points

• The Enlarged Board decides that in cases wherein the Notice of appeal is filed late, cases wherein the appeal fee is paid late, and cases wherein both the Notice of appeal is filed late and the appeal fee is paid late, the appeal is deemed to not have been filed (and not inadmissible). The appeal fee is to be reimbursed. If only the appeal fee is paid but no Notice of appeal is (actually) filed at all, the appeal fee is to be reimbursed.
• The established case law is hence confirmed (starting from J 2/78, J21/80, further including R4/15), the "minority opinion" case law of e.g. T 1897/17, proposing that the appeal is inadmissible, is rejected.
• The key question is the interpretation of the second sentence of Article 108: "Notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid."  The Enlarged Board combines this with the first sentence of Article 108 EPC (Notice of appeal shall be filed [...] within two months of notification of the decision.) to conclude that if a Notice of appeal is filed in time but the appeal fee is paid late or not at all, the appeal is deemed to not have been filed (r. IV.1.(2)(b) - the Enlarged Board does not use consecutive paragraph numbering). The Enlarged Board acknowledges that an alternative literal interpretation of Art.108(s.2) is also possible, namely that the fiction of "deemed to not have been filed" no longer applies if the appeal fee is paid, even if the payment is after the two-month appeal period; however this interpretation is not the one adopted by the Enlarged Board.
• The Enlarged Board analyses the travaux préparatoires and concludes that the legislative intent was that in case of non-payment or late payment of the appeal fee, the procedure of Rule 112 is followed.
• The Enlarged Board explains that the reference in Rule 101(1) EPC to the appeal being inadmissible, presupposes that an appeal exists. Hence, the phrase "if the appeal does not comply with Articles 106 to 108" in Rule 101 EPC refers only to existing appeals and not to appeals which are deemed to not have been filed (r. VII)
• The Enlarged Board explains that in case the appeal fee is paid within the time limit, but the Notice of appeal is filed after the expiration of the time limit, the appeal fee was paid before it was due (i.e. payable) under Rfees 4 (since the appeal fee becomes due upon filing of the Notice of appeal). Hence, the date of payment of the appeal fee is postponed until the date of filing the Notice of appeal. Because the Notice of appeal is late and hence deemed to not have been filed, the appeal fee is reimbursed. In the same way, the Notice of appeal is deemed to not have been filed if the appeal fee is not paid by the time limit and, therefore, any late paid appeal fee was paid while it not due and is accordingly refunded. 

Headnote

1. An appeal is deemed not to have been filed in the following cases:

(a) where notice of appeal was filed within the two‑month time limit prescribed in Article 108, first sentence, EPC AND the appeal fee was paid after expiry of that two‑month time limit;

(b) where notice of appeal was filed after expiry of the two‑month time limit prescribed in Article 108, first sentence, EPC AND the appeal fee was paid after expiry of that two‑month time limit;

(c) where the appeal fee was paid within the two‑month time limit prescribed in Article 108, first sentence, EPC for filing notice of appeal AND notice of appeal was filed after expiry of that two‑month time limit.

2. In the cases referred to in answers 1(a) to (c), reimbursement of the appeal fee is to be ordered ex officio.

3. Where the appeal fee was paid within or after the two‑month time limit prescribed in Article 108, first sentence, EPC for filing notice of appeal AND no notice of appeal was filed at all, the appeal fee is to be reimbursed.

EPO G 1/18 - G1/18 - G 0001/18 - link

Machine Translation

Table of Contents

A SUMMARY OF THE PROCEDURE

I Referral under Article 112 (1) (b) EPC

1. T 1897/17 - 3.4.01 dated 14 February 2018 - " Minority " case law  

2. T 1325/15 - 3.5.07 dated June 7, 2016 - " majority " case law  

3. T 2406/16 - 3.3.05 dated 21 September 2017 - " majority " case law 

 4. T 1946/15 - 3.2.02 dated 19 October 2016 and T 198/16 - 3.5.04 dated 20 March 2018 - " Majority " case law   

II Third party observations

B REASONS FOR THE OPINION

I Admissibility of referral

1. Corrected reading of the question asked

2. Conditions of admissibility - Article 112 (1) (b) EPC

II Application of Article 108, first and second sentences, EPC by the Boards of Appeal and the Enlarged Board of Appeal 

1. Article 108, first and second sentences EPC - case scenario

2. Jurisprudential stream known as " majority " 

(1) Case 1 - The appeal is lodged WITHIN the two-month period required AND the appeal fee has been paid AFTER the expiry of the said two-month period

(2) Case 2 - The appeal is lodged AFTER the expiry of the two-month period AND the appeal fee is paid AFTER the expiry of the said two-month period

(3) Case 3 - The appeal fee is paid within the period of two months AND the appeal is lodged AFTER the expiry of the two-month period 3. Jurisprudential stream known as " minority " 

4. Literature / Doctrine

III Rules of interpretation of the EPC

IV Application of the rules of interpretation

1. Literal interpretation

2. Systematic interpretation

3. Teleological interpretation

V legal consequence in case of non-fulfillment of the two acts or from one of the two acts in the period of two months of Article 108 EPC   

VI Scenarios 1 and 2 - Intermediate conclusions

VII Appalled as unformed - inadmissible appeal and Rule 101 (1) EPC

VIII Reimbursement of the appeal fee

IX Scenario 3 - intermediate conclusions

X " Preparatory work " of Article 108, first and second sentences EPC 

XI Case law of the Boards of Appeal in case of non-payment of the opposition fee

C Conclusion

A SUMMARY OF THE PROCEDURE

I Referral under Article 112 (1) (b) EPC

In a referral under Article 112 (1) (b) EPC, the President of the European Patent Office (EPO), by letter dated 7 June 2018, submitted to the Grand Chamber of resort to the following question :

" When the lodging of an appeal and / or the payment fee takes place after the expiry of the two-month period provided for in Article 108 EPC, is the appeal inadmissible or deemed to be unformed, and the appeal fee should she be reimbursed ? "  

T 0416/14 - No working embodiment

Key point

• In this examination appeal, the Board finds that the invention is insufficiently disclosed. Claim 1 specifies, as one of the features, that in the micro-electromechanical device, the contact structure and the conductive element are " configured to support an electric field therebetween with a magnitude [field strenght] of greater than 320 Vmym**(-1) without moving to the contacting position". 
• " The entire original application suggests that the inventors have, by suitably dimensioning the MEMS switch parts, found a way to avoid breakdown at and above the recited field strength" 
• " The application documents contain neither experimental data which allowed to verify the claims made, nor did the appellant submit any such data as evidence. The appellant is correct in that Article 83 EPC does not per se require experimental data for a sufficient disclosure. In light of the evidence to the contrary [journal articles D1 and D2 cited by the Board], the Board is, however, not convinced that the appellants were actually able to fabricate a switch that can withstand the claimed field strength without breakdown without any evidence for such claim." 
• "If the claim is directed to a result, as in the present case, then the disclosure of at least one embodiment successfully realising the result is needed. The mere mentioning of factors which should be taken into account when attempting to find a working embodiment, such as the surface asperities referred to by the appellant, cannot be considered to be adequate in this respect." 
• ' If, as in the present case, the claims are directed to a broad, open-ended range of parameters, even more embodiments might be necessary in order to sufficiently disclose the invention across the whole range claimed. " 

EPO T 0416/14 -  link

V. Claim 1 of the main request reads as follows

"A micro-electromechanical systems (MEMS) device comprising:
at least one switch having a contact (102), and a conductive element (104);
[...]
such that when said conductive element is disposed in the non-contacting position, said contact (102) and said conductive element (104) are configured to support an electric field therebetween with a magnitude of greater than 320 Vmym**(-1) without moving to the contacting position."

Claim 1 according to the first auxiliary request has the features of claim 1 of the main request and the additional feature: 

"wherein, when said conductive element (104) is disposed in the non-contacting position, said contact and said conductive element are configured to be separated by a distance that is less than or about equal to 4 mym."
[...]

Reasons for the Decision

2.5 The further arguments of the appellant also did not convince the Board. While there might not be a complete understanding of when breakdown occurs, this would mean that it is all the more important to include in the original application a detailed description of at least one working embodiment. The level of disclosure needed if the results found by inventors go against a common understanding is significantly higher than in a field which is already well understood. If the claim is directed to a result, as in the present case, then the disclosure of at least one embodiment successfully realising the result is needed. The mere mentioning of factors which should be taken into account when attempting to find a working embodiment, such as the surface asperities referred to by the appellant, cannot be considered to be adequate in this respect. If, as in the present case, the claims are directed to a broad, open-ended range of parameters, even more embodiments might be necessary in order to sufficiently disclose the invention across the whole range claimed. The argument that a patent on an invention which cannot be carried out would be of no harm, can also not be accepted. Article 83 EPC is a requirement of the Convention that has to be fulfilled, irrespective of what potential effects on competitors a patent might or might not have.

2.6 In conclusion, the application does not disclose the claimed invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. This applies to all requests, which thus do not meet the requirement of Article 83 EPC. Therefore none of the appellant's requests is allowable, so that the appeal has to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.

T 0602/18 - Res judicata

Key points

• This is the second appeal in this opposition case. In T 303/13, the Board had remitted the case with the "with the order to maintain the patent in amended form on the basis of claims 1 to 5 of auxiliary request 6, filed with the letter dated 26 April 2013, and the description and figures to be adapted" .
• In the decision of the OD, " the cover page, the page bearing the signatures of the opposition division and the "Druckexemplar" appear contain or refer to the claim set dated 7 July 2017", however, " the reasons of the decision as well as an enclosure of the decision refer to the claim set dated 26 April 2013." The wording of these two claim sets differ.
• The decision is therefore insufficiently reasoned. " it is not unambiguously clear from the impugned decision which request it is based on. None of the other parts of the file are of help here." 
• The patentee had introduced as sole request in appeal the set of claims of 26 April 2013. The opponent argues that this claims set should not be admitted under Article 12(4) RPBA on the ground that the patentee had failed to submit them before the OD.
• The Board admits the request, because: "The present board is thus bound by the order in decision T 303/13 made by the first board (Article 111(2); T 843/91 of 5 August 1993, Reasons 3.4 citing T 79/89). In T 303/13, the first board ordered the maintenance of the patent based on the claims of what is now the respondent's sole request. Considering the above binding effect, the present board has no discretion to reject as inadmissible the claims of respondent's main request." 

EPO T 0602/18 -  link

Reasons for the Decision

1. The appeal is admissible.

2. Substantial procedural violation

2.1 The board is competent to examine whether there are fundamental deficiencies apparent in the first-instance proceedings, even in the absence of a corresponding objection by the parties (T 405/12, Reasons 3).

2.2 According to the cover page (EPO Form 2327) of the impugned decision, the "Documents for the maintenance of the patent as amended" include claims 1 to 5 as filed on 7 July 2017. According to "Sheet 2" of EPO Form 2327, the decision contains enclosures comprising "2 page(s) reasons for the decision (Form 2916)", "Documents relating to the amended text" and "sixth auxiliary request".

2.3 The "Documents relating to the amended text" (or "Druckexemplar") contain sixteen description pages dated 23 March 2017, one claims page dated 7 July 2017, and seven pages of drawings dated 23 March 2017. On sheet 1 of EPO Form 2339 bearing the signatures of the members of the opposition division, reference is made to claims 1 to 5 filed on 7 July 2017 as "currently valid documents". The enclosure mentioned on "Sheet 2" of EPO Form 2327 and referred to as "sixth auxiliary request" is entitled "SIXTH AUXILIARY REQUEST" and dated 26 April 2013. The "Ground for the decision", section "II. REASONS FOR THE DECISION" contains the following statement:

T 0237/15 - Optimum dosage regimen is routine

Key points

• " The determination of the optimum dosage regimen required to achieve the therapeutic effect in the (human) patient is a matter of routine experimentation for the skilled person. Such routine tests do not require inventive skill and can consequently not establish an inventive step." 
• " The step from pre-clinical animal studies to clinical studies involving human patients is an unavoidable step when developing a new medicament. In the present case, the skilled person, aware of the complete disclosure of [D2], would take this step with a reasonable expectation of success. This expectation of success is based on the teaching of [D2], which discloses that SAHA was successfully used in the treatment of solid tumours in human patients (administered intravenously) [rather than orally as in the claim].  Consequently, a skilled person, in the knowledge that SAHA is bioavailable when given orally in animal studies [this is also described in D2] and having been given the information that SAHA achieves effective treatment in humans when introduced directly into the blood stream, would expect an effective treatment also for oral administration in human patients."

EPO T 0237/15 -  link

While the clinical trials with SAHA rely on intravenous administration of the drug (see reference 91 of document (2), which is on file as document (11)), the animal studies described in the passage on page 199, right-hand column, third paragraph, disclose successful treatment of rats or mice by oral administration of SAHA. In view of the effects achieved in these animal tests, i.e. the suppression of tumour growth in rats or mice, there remain no doubts that SAHA is bioavailable when given orally.

T 1024/15 - Novelty only

Key points

• In this opposition appeal, the opponent was the appellant. The opponent had only addressed lack of novelty in the Statement of grounds (only over D9, a US patent application), not lack of inventive step.
• " It was brought to the attention of the appellant that mere reference to the notice of opposition did not mean that the facts, arguments and evidence presented in this notice formed part of the appeal proceedings. The appellant did not comment or provide any further arguments.
• The present decision is thus limited to an assessment of novelty of claims 1, 4 and 9 of the patent as granted in view of [D9]  as set out in the appellant's statement of grounds for appeal."
• The Board finds the claims at issue to be novel over D9 and the appeal is dismissed. The Board does not consider whether the distinguishing feature provides any technical effect or is obvious.

EPO T 1024/15 - link

Reasons for the Decision

3. In accordance with Article 12(2) RPBA, the statement of grounds of appeal (and the reply) shall contain a party's complete case. The appellant's statement of grounds of appeal specified solely arguments concerning issues of novelty of granted claims 1, 4 and 9 in view of a single document, document (9).

With the communication pursuant to Article 15(1) RPBA, annexed to the summons to oral proceedings dated 21 September 2018, it was brought to the attention of the appellant that mere reference to the notice of opposition did not mean that the facts, arguments and evidence presented in this notice formed part of the appeal proceedings. The appellant did not comment or provide any further arguments.

The present decision is thus limited to an assessment of novelty of claims 1, 4 and 9 of the patent as granted in view of document (9) as set out in the appellant's statement of grounds for appeal.

T 1582/17 - The vagueness has to be lived with

Key points

• In this opposition appeal, sufficiency of disclosure is the issue. 
• " the limitation expressed in the characterising portion of the claim is vague [...] and extremely broad. The vagueness and the breadth of this definition are a matter of clarity and possibly of support by the description (Article 84 EPC), and affect the assessment of novelty. " 
• " Since claim 1 of the main request is the claim as granted, its clarity cannot be examined in opposition/appeal proceedings, but could only have been considered in the examination proceedings. 
• For the examination of the ground of opposition under Article 100(b) EPC the vagueness has to be lived with and the claim has to be interpreted. " 
• Repost - first posted on the wrong date (25 June instead of 26 July)

EPO T 1582/17 - link

3. Main request - sufficiency of disclosure

3.1 The invention of claim 1 does not concern a method but an apparatus. Therefore, in order to carry out the invention it is not necessary to actually "orient a relative position of the prosthetic femoral head to the acetabulum such that the indicia signifies proper relative position of the prosthetic femoral head in the acetabulum". What is necessary instead is to produce a device according to the claim.

[...]

The contentious issue is whether, on the basis of the information in the patent in suit and his common general knowledge, the person skilled in the art would be able to produce a device wherein the indicia "is configured to orient a relative position of the prosthetic femoral head to the acetabulum such that the indicia signifies proper relative position of the prosthetic femoral head in the acetabulum". To answer this question it is necessary to consider which product limitation, if any, is defined by this wording.

[...]

G 2/19 - Decision - Haar for oral proceedings

Key points

• The Enlarged Board announced at the end of the oral proceedings on 16 July 2019 that holding oral proceedings before the Boards in Haar does not violate Article 113(1) and Article 116(1) EPC.
• The Board also decided that the appellant in the underlying case has no right to oral proceedings under the (rather specific) facts of the case, that the Notice of appeal was filed by a third party to the examination proceedings appealing the grant of the patent with the request for re-entry into the examination proceedings to address clarity issues. Moreover, the appeal has no suspensive effect.
• The reasoned written decision will follow in due course.

1. Ein Dritter im Sinne von Artikel 115 EPÜ, der gegen die Entscheidung über die Erteilung eines europäischen Patents Beschwerde eingelegt hat, hat keinen Anspruch darauf, dass vor einer Beschwerdekammer des Europäischen Patentamtes mündlich über sein Begehren verhandelt wird, zur Beseitigung vermeintlich undeutlicher Patentansprüche (Artikel 84 EPÜ) des europäischen Patents den erneuten Eintritt in das Prüfungsverfahren anzuordnen. Eine solchermaßen eingelegte Beschwerde entfaltet keine aufschiebende Wirkung.
2. Mündliche Verhandlungen der Beschwerdekammern an deren Standort in Haar verstoßen nicht gegen die Artikel 113 (1) und 116 (1) EPÜ. 

EPO BoA News item (link)