G 0002/19 - Exceptions to the right to oral proceedings

Key points

• The full written decision in G2/19 was recently issued. The order was already announced during the oral proceedings:
  1. A third party within the meaning of Article 115 EPC who has filed an appeal against a decision to grant a European patent has no right to have its request for an order that examination proceedings in respect of the European patent are re-opened for the purpose of removing allegedly unclear claims (Article 84 EPC) heard at oral proceedings before a board of appeal of the European Patent Office. An appeal filed in such a way has no suspensive effect
  2. Oral proceedings before the boards of appeal at their site in Haar do not infringe Articles 113(1) and 116(1) EPC.
•  As to the place of oral proceedings, the EBA notes that the starting point is that the place and time of oral proceedings can have a connection with the right to be heard. Choosing a place or time that is entirely out of the ordinary can give the impression as a defective willingness (of the Board) to engage with the party's concerns. However, this is not seriously debated with regards to the relocation of the place of oral proceedings from Munich to Haar. 
• So the next time the Board summons you in Tokio and/or on Sundays, you can invoke Articles 113 and 116.
• The EBA notes that Article 116(1) EPC allows for exceptions; the circumstances of the underlying case justify such an exception. The EBA notes that Article 116(1) EPC applies to all kinds of procedures before the EPO. 
• "Diese Vielfalt im Anwendungsbereich spricht dagegen, Artikel 116 (1) Satz 1 EPÜ gleichsam Absolutheitscharakter beizulegen. Die Norm ist vom Konventionsgeber ersichtlich als Grundsatzregelung für die typischen Fallgestaltungen gedacht, mit denen die Verfahrensorgane des Europäischen Patentamts in ihrer täglichen Praxis konfrontiert sind. Ausnahmen vom Grundsatz sind aber nicht ausgeschlossen, wenn die Anwendung aufgrund der besonderen Umstände des Einzelfalls sinnwidrig wäre. So verhält es sich im Ausgangsverfahren."
• The EBA notes that the appellant is not a party to the grant proceedings (Article 115) and hence is not entitled to appeal (Article 107). 
• The EBA makes an interesting remark about Article 115, namely that the Examining Divisions are obliged to take note of the Third Party Observations. The EBA then states that  "Ungeachtet der Frage, inwieweit ein Verstoß dagegen justiziabel ist," the Examining Division had taken note of the TPO's at issue, according to the file. As a comment, I wonder if this means that answer 1 above is not absolute, i.e. that appeal is in fact possible in the event that the file does not show that the ED had taken note of the TPO's.
• The EBA discussed one decision of a national court, namely BGH X ZR 95/05. As a comment, I don't know if there are no decision of other national courts (FR, GB, NL) on the topic. It is always particular to see only a German national decision being discussed in German language EPO proceedings.
• Now for the reasons why there is an exception to Article 116(1) in this case:
"Artikel 116 (1) Satz 1 EPÜ ist vielmehr dahin einschränkend auszulegen, dass die bloße formale Position als faktischer Beteiligter am Beschwerdeverfahren nicht ausreicht, um die Durchführung einer mündlichen Verhandlung verlangen zu können, wenn der Petent, wie hier, nicht zur Beschwerdeeinlegung befugt ist, weil er im Rechtssinne nicht am vorangegangenen Verfahren beteiligt war oder wenn er – was hier zugleich vorliegt - einen der Beschwerde nicht zugänglichen Gegenstand verfolgt. "
• In the above, "Petent" means petitioner. I'm not sure why the EBA uses that term instead of "appellant" ("Beschwerdeführer"). The two grounds are hence 1) the appellant was not a party to the first instance proceedings and 2) the appellant 'pursues an object which is not accessible to the appeal'
• The effect is that the Board can reject the appeal as inadmissible "ohne Einhaltung weiterer prozessualer Formalitäten" (as in G1/97), i.e. without oral proceedings and (in view of G1/97) without giving the appellant an opportunity to comment under Article 113 EPC.
• The appeal also lacks suspensive effect. The EBA finds that Article 106(1) s.2 has a general character, just as Article 116. "Es besteht hingegen kein anerkennenswertes Interesse daran, die aufschiebende Wirkung auch einem Rechtsbehelf beizulegen, der, wie die Beschwerde eines Dritten wegen unklarer Ansprüche, keinen Rückhalt im Europäischen Patentübereinkommen hat und deshalb offensichtlich unzulässig ist. Dem ist durch eine entsprechende Ausnahme von der Grundsatzregelung in Artikel 106 (1) Satz 2 EPÜ Rechnung zu tragen. 
• As a comment, the referral was completely silent on the suspensive effect. I am not sure if there is precedent for the EBA answering more questions than those referred. 
• As to admissibility of the referral, the EBA finds that the second question (answer 1 above) is admissible. The fact that the appeal is inadmissible, does not make the referral inadmissible (contrary to the President's submissions). The first question of the TBA is inadmissible, because the second question already fully covers the Board's need for clarification. In contrast, the first question of the TBA involved a generalisation to all cases wherein the appeal appears inadmissible "at first sight". The EBA notes that this is an undefined legal term, which is not derived from the EPC and which is not defined in the referral decision.  
• Yet, the EBA considers the appeal to be an "offensichtlich unzulässigen Rechtsbehelfs". As a comment, apparently, this legal concept is sufficiently clear, in view of the EBA whereas the legal concept of "at first sight" inadmissible appeal (used by the TBA in its first question) was not, according to the EBA. "Offensichtlich unzulässig ist ein Rechtsbehelf etwa dann, wenn er von einer zur Rechtsmitteleinlegung nicht befugten Person stammt (hier: Dritter im Sinne von Artikel 115 EPÜ), oder wenn damit ein Beschwerdeziel verfolgt werden soll, das vom Europäischen Patentübereinkommen nicht als Gegenstand einer Beschwerde nach Artikel 106 (1) EPÜ anerkannt, sondern ausgeschlossen ist (hier: Beseitigung von vermeintlichen Undeutlichkeiten der Patentansprüche im Sinne von Artikel 84 EPÜ)."  (emphasis added).
• As a comment, the word "etwa" ("for example") may indicate that the exception also applies to other kinds of inadmissible appeals. It seems to me that the EBA only gives two examples of  " "offensichtlich unzulässigen Rechtsbehelfs" and I have found no definition of the term in G2/19. Moreover, the EBA does not seem to indicate what is the difference between a normally inadmissible appeal and an "offensichtlich unzulässigen Rechtsbehelfs". Comments (especially of German native speakers) are welcome; I have to say that I don't find G2/19 a very easy read.
• The EBA states that  "Ergänzend ist klarzustellen, dass die Einlegung eines aufgrund solcher Umstände offensichtlich unzulässigen Rechtsbehelfs konsequenterweise keine aufschiebende Wirkung entfaltet." So, "offensichtlich unzulässigen" appeals lack suspensive effect. This is a useful addition to the literature (e.g. Visser, Art.106(1):2 and the MGK discussed therein). However, in my view, the EBA's reasoning would have benefited from a definition of "offensichtlich unzulässigen" appeals rather than the indication of two examples. The underlying issue could be whether a patentee can appeal (timely) against the grant of his own patent (in order to file a divisional application during the appeal proceedings).
• Edited 04.10.2019 19:30

EPO G 2/19 G2/19 G0002/19 G 0002/19 - link

Headnote

(link)

1. A third party within the meaning of Article 115 EPC who has filed an appeal against a decision to grant a European patent has no right to have its request for an order that examination proceedings in respect of the European patent are re-opened for the purpose of removing allegedly unclear claims (Article 84 EPC) heard at oral proceedings before a board of appeal of the European Patent Office. An appeal filed in such a way has no suspensive effect.
2. Oral proceedings before the boards of appeal at their site in Haar do not infringe Articles 113(1) and 116(1) EPC.

Sachverhalt und Anträge

I. Vor der Technischen Beschwerdekammer 3.5.03 ist das Verfahren T 831/17 anhängig, das sich auf die Erteilung des europäischen Patents Nr. 2 378 735 (im Folgenden: Streitpatent) am 12. Januar 2017 bezieht. Auf die Erteilung ist am 8. Februar 2017 im Europäischen Patentblatt hingewiesen worden. Das Streitpatent geht auf eine Teilanmeldung aus der früheren europäischen Patentanmeldung Nr. 06113477.1 (im Folgenden: Stammanmeldung) zurück und betrifft ein Verfahren zum Betreiben eines Mobilfunknetzes mit mehreren nebengeordneten Ansprüchen. Patentanspruch 1 lautet:

T 0858/18 - Fax pages after midnight

Key points

• The Board decides that an opposition is inadmissible because the last few pages were received after midnight of the last day of the opposition period. The Board explains that the possibility to renounce the last pages and keep the previous date (Article 5(2) DPFF (decision on fax filings)) does not apply to subsequent documents.  " The clear wording and structure of the DPFF does not leave any room for an analogous application of Article 5(2) DPFF to other documents as regards their date of receipt. " 
• In the case at issue, three pages were received after midnight: the last page of the " Statement of Facts and Arguments" and EPO Form 1038.
• The Board considers the Statement of Facts and Arguments to be " a single document" . " The transmission of this document [...] extended beyond midnight, the information recorded on the last page reaching the EPO only after midnight." The Board then has to decide on which date this document was received. 
• The Board concludes that " if the facsimile transmission of a document extends beyond midnight, the date on which such a document is received within the meaning of Article 5(3) DPFF is the later of the two consecutive dates." 
• " The Board concedes that a delay of only a few minutes is minimal and the consequence can be harsh, as the present case clearly illustrates. But such a consequence is inherent whenever time limits have to be respected. " 
• The counter-intuitive result is that the opponent would likely have been better of if he had not submitted the last three pages at all, because a missing signature page can be repaired (see e.g. T0382/16).

EPO T 0858/18 -  link



EPO Headnote
If a facsimile transmission of a document within the meaning of Rule 50(3) EPC begins on an earlier date and extends beyond midnight to a later date, the entire document is accorded the later date as single date of receipt. There is no legal basis for according the earlier date as date of receipt to the part of the document arriving at the EPO before midnight (see in particular point 6 and for the term "document" point 4 and for the "date of receipt" point 5 of the reasons).
Deviating from decisions T 2061/12 and T 2317/13 (see points 7.3 and 7.4 of the reasons).

Summary of Facts and Submissions

I. This appeal by the patent proprietor (in the following: appellant) lies from the decision of the Opposition Division revoking European patent No. 2 392 194 pursuant to Article 101(3)(b) EPC.

II. Mention of the grant of the opposed patent was published in the Bulletin on 18 March 2015.

III. The opponent (in the following: respondent) filed a notice of opposition against this patent by facsimile including 19 pages. The facsimile transmission started on 18 December 2015 at 23:53:42 and ended on 19 December 2015 on 00:01:14. The facsimile contained, in this order:

(a) Form 2300 "Notice of opposition to a European patent" (pages 1 to 4, which reached the EPO on 18 December 2015),

(b) Form 1010 "Payment of fees and expenses" (page 5, which reached the EPO on 18 December 2015), and a

(c) "Statement of Facts and Arguments concerning EP 2 392 194 B1" (pages 6 to 17, of which pages 6 to 16 reached the EPO on 18 December 2015 whereas page 17 reached the EPO on 19 December 2015), and

(d) Form 1038 (pages 18 to 19, which reached the EPO on 19 December 2015).

IV. The Opposition Division held the opposition to be admissible following the reasoning of decision T 2061/12, according to which the earlier date of receipt could be attributed to the part of a document filed by facsimile arriving before midnight. All elements required for an admissible opposition were therefore deemed to have been received before the lapse of the opposition period.

Reasons for the Decision

1. The appeal is admissible.

2. Lapse of the opposition period

T 2609/18 - No RE for Notice appeal, refund fee

Key points

• In this examination appeal, the appellant filed only a debit order for the appeal fee (Form 1038E). The appellant requests re-establishment for the filing of the Notice of appeal (the appellant does not argue that the timely filed Form 1038E was a Notice of appeal).
• " In the present case, the appellant - contrary to its submission with the letter dated 4 January 2019 - learned already during the telephone call with the formalities officer on 24 October 2018 that a notice of appeal had not been sent to the EPO. It follows that [...] the two-month time limit started on 25 October 2018 and expired after the Christmas holidays on 2 January 2019. [] Since the appellant filed the request for re-establishment together with the notice of appeal only on 4 January 2019, the request was filed [late]".  Consequently, the request for re-establishment is inadmissible.
• The request is also not admissible for lack of substantiation. "The appellant merely submitted that the failure to file notice of appeal was "due to a clerical error made in good faith". It presented no facts whatsoever on the question whether the conduct of the appellant's representative complied with the requirement to exercise all due care under the circumstances. Hence, the request does not satisfy the requirement for a duly substantiated request under Rule 136(2), first sentence, EPC and is inadmissible for this reason as well." 
• " Following the opinion G 1/18 of the Enlarged Board of Appeal, Headnote 1 c), an appeal is deemed not to have been filed 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. Consequently, the appeal fee is to be reimbursed. This is to be ordered ex officio (see G 1/18, Headnote 2)." 

EPO T 2609/18 - link

Reasons for the Decision

1. According to Article 108, first sentence, EPC, notice of appeal must be filed at the EPO within two months of notification of the decision. The appeal fee must be paid within the same time limit, Article 108, second sentence, EPC.

2. The appellant received the decision of the examining division on 2 July 2018. Consequently, under Rules 126(2), 131(2) and (4) EPC the above two-month time limit started on 3 July 2018 and expired on 2 September 2018. Within this period, the appellant paid only the appeal fee but did not file notice of appeal.

3. It is established case law that, if no written notice of appeal has been filed within the time limit but only the appeal fee has been paid in time, the mere payment does not constitute a valid means of lodging an appeal (see Case Law of the Boards of Appeal of the European Patent Office, 8th edition 2016, section IV.E.2.5.4, and further references cited there).

4. Thus, the question of whether the appeal has been validly lodged hinges on whether the request for re-establishment of rights in respect of the time limit for filing the notice of appeal is admissible and allowable.

T 0382/16 - Last page missing

Key points

• In this opposition appeal, "the patent proprietor (respondent) submitted with their rejoinder (letter of 23 August 2016) comparative tests dated 15 [May] 2014 which will be referred to as D11." 
• The appellant objects that the letter of 23.08.2016 had not been signed.
•  "The respondent replied with a letter of 12 March 2019 indicating that the last page of the rejoinder of 23 August 2016 (page 5) bearing the signature of the representative had not been transmitted. Accordingly, the whole rejoinder including the missing page 5 with a signature of the representative was submitted with said letter of 12 March 2019." 
• The Board: " in analogy to the provisions of Rule 50(3) EPC, it was considered that the submissions made by the respondent with letter of 23 August 2016, i.e. pages 1 to 4 and experimental report D11, shall retain their original date of receipt. "
• Note that Rule 50(3) EPC supposes that the EPO " shall invite the party concerned to do so within a time limit to be specified." This decision clarifies that the signature can also be provided prior to such an invitation.

EPO T 0382/16 -  link


Summary of Facts and Submissions

VI. The patent proprietor (respondent) submitted with their rejoinder (letter of 23 August 2016) comparative tests dated 15 [May] 2014 which will be referred to as D11.

VII. The appellant submitted with a letter of 5 March 2019 that the rejoinder of the respondent had not been signed by a person authorized to represent the respondent. It was argued that a remedy to this deficiency would presuppose the existence of a communication under Rule 50(3) EPC which had not been issued.

VIII. The respondent replied with a letter of 12 March 2019 indicating that the last page of the rejoinder of 23 August 2016 (page 5) bearing the signature of the representative had not been transmitted. Accordingly, the whole rejoinder including the missing page 5 with a signature of the representative was submitted with said letter of 12 March 2019.

IX. In the communication of the Board of 8 April 2019 sent in preparation for the oral proceedings, the Board indicated that having regard to respondent's letter of 12 March 2019 and in analogy to the provisions of Rule 50(3) EPC, it was considered that the submissions made by the respondent with letter of 23 August 2016, i.e. pages 1 to 4 and experimental report D11, shall retain their original date of receipt.

[...]

Reasons for the Decision

1. The indication by the Board in its communication of 8 April 2019 that the submissions made by the respondent with letter of 23 August 2016, i.e. pages 1 to 4 and experimental report D11, shall retain their original date of receipt (see above point IX of the Summary of Facts and Submissions) was not disputed by the appellant. The submissions made by the respondent with letter of 23 August 2016 are therefore deemed to have been made within four months of notification of the grounds of appeal and are to be taken into account in the appeal proceedings (Rule 12(1)(b) and (4) RPBA).

T 0787/14 - Plausibility and patient subgroup

Key points

• In this opposition appeal, the issue is inventive step of the vaccine of claim 1 over D10.
• "[claim 1] differs from the disclosure of document D10 as regards the composition used, namely in that [details of the composition] and further in that the patient has been pre-immunised at least six months previously and within 1 year of the patient's birth with a conjugate of a capsular saccharide of an organism other than N. meningitidis and a diphtheria toxoid or CRM197."
• " the board notes that the patent is silent on the pre-immunisation status of the patients enrolled in the clinical trial V59P2 [described in the examples of the patent]"
• "Thus, from the information provided in the patent for clinical trial V59P2, the skilled person cannot conclude that the patients [...] represented the subgroup of patients to be treated according to the embodiment under consideration."
• " Accordingly, any advantageous effect of the composition that may be seen in clinical trial V59P2 cannot be taken into account in assessing inventive step. "
• About plausibility: "Nor can the appellant rely on post-published documents D14, D30, D34 and D35: The assessment of inventive step is to be made at the effective date of the patent on the basis of the information in the patent together with the common general knowledge then available to the skilled person. The verification of whether or not the claimed solution actually solves the problem, i.e. whether the claimed subject-matter actually provides the desired effect, must be based on the data in the application in order to avoid that an invention is based on knowledge available after the effective date only. "
• The Board then deals with the question of whether the distinguishing features relating to the composition are obvious and considers that the skilled person is "well aware" of these features based on prior art documents. Finally, the particular combination of features does not make the claim inventive.
• "The specific vaccine considered here by the board (see point 14 above) would be one of these vaccines. However, no surprising technical effect is linked to this vaccine in the specified patient population. Thus, in terms of its technically relevant effects, this vaccine is not distinguished from any of the other possible vaccines, i.e. it is a selection of one of several equally available alternative solutions to the problem formulated. Such a situation is referred to in the jurisprudence as an "arbitrary selection". Arbitrary selections are considered to be obvious"

EPO T 0787/14 - link

Closest prior art

6. In the decision under appeal, document D10 was considered to represent the closest prior art (see Reasons, point 1.3). The appellant maintains that document D26 rather than document D10 is the closest prior art.

[D10 Rennels M. et al., The Pediatric Infectious Disease Journal (2002), vol. 21, pages 978 to 979]

7. In accordance with established jurisprudence, the closest prior art for assessing inventive step is normally a prior art document disclosing subject-matter conceived for the same purpose or aiming at the same objective as the claimed invention and having the most relevant technical features in common, i.e. requiring the minimum of structural modifications (see Case Law of the Boards of Appeal of the EPO, 8th edition 2016, section I.D.3.1).

8. The invention concerns vaccines against Neisseria meningitidis (N. meningitidis) (also referred to hereinafter as "meningococcal vaccines" or "meningococcal conjugates"), in particular vaccines based on conjugated capsular saccharides from multiple meningococcal serogroups (see paragraph [0001] of the patent). [...]

T 2491/12 - A business-related administrative concept

Key points

• " The Board agrees with the decision under appeal [of the examining division sion] that the subject-matter of independent claim 1 lacks an inventive step." 
• "the question of inventive step requires an assessment of whether the invention makes a technical contribution over the prior art. Features which do not make such a contribution cannot support the presence of an inventive step" (Comvik)
• " The Board does not consider that the "configuration" of using a trading engine and a trade history database communicatively connected to each other and to counterpart computers provide for a real-time operation as argued by the appellant []" 
• " There is no disclosure on a technical level in the application as filed which supports such a point of view. In particular, there is no disclosure or corresponding features of the claims which contribute to making a technical process faster. The problem of difficulties for market counterparties (such as customers and dealers) to monitor outstanding transactions (such as tear-ups and assignments) are solved by establishing a notification system on the basis of a networked client-server computer system. [...] Consequently, the Board does not agree with the appellant's formulation of the problem as how to allow parties to monitor derivatives transactions in real time [.]"
• " The problem to be solved is the implementation of the claimed business related administrative concept [... on a  ...]  general purpose networked computer. The person skilled in the art within the meaning of Article 56 EPC, a computer expert provided with the complete description of the non-technical abstract administrative concept, would have considered the claimed implementation obvious in view of the normal skills and the general knowledge of computer programming." 

EPO Headnote
The claimed invention is not directed to a real-time problem in the sense of improving a technical process, but rather to automation in the sense of making (non-technical) financial information available quickly. This automation is achieved by mapping the financial concept of derivative transactions on a client-server computer system.


VI. Independent claim 1 of the main request reads as follows:

"1. A system for monitoring derivatives transactions, comprising:
a trading engine (10) capable of communication with a plurality of counterpart computers (50, 55) and enabling the execution of the derivatives transactions;
a trade history database (20) communicatively connected to the trading engine and capable of communication with the plurality of counterpart computers, the trade history database configured to store a set of records of at least a portion of the derivatives transactions executed on the trading engine; and
wherein the trading engine is configured to enable an unwinding of a derivatives transaction, initiate a record of the unwinding to be stored in the trade history database, and send a notification of the unwinding of the derivatives transaction."

Reasons for the Decision

Introductory remarks

1. The present main request corresponds to the set of claims on which the decision under appeal is based.

The assessment of inventive step in the decision under appeal considered a general purpose networked computer system as described in the description of the present application to be the closest prior art.

2. Article 56 EPC - Inventive step

The Board agrees with the decision under appeal that the subject-matter of independent claim 1 lacks an inventive step.

2.1 The claim is directed to a mix of technical and non-technical features. The Board does not dispute that the system according to claim 1 appears in a technical context. The system for monitoring derivatives transaction can be considered to be performed by technical means, because it involves a computer with means for storing data, means for processing data and means for transmitting and receiving data, and, therefore, has technical character. Accordingly, the claimed subject-matter is an invention in the sense of Article 52(1) EPC (see T 258/03 "Auction method/HITACHI").

T 2180/16 - A disadvantage of 16 years opposition proceedings

Key points

• In this opposition appeal, the Board notes that if the priority date of the patent is 1997 and the opponent invokes certain alleged common general knowledge for the first time during the oral proceedings before the Board in May 2019, the argument is 'rather an ex post facto analysis' if the opponent does not provide evidence of the CGK in 1997.
• Filing date of the patent in 1998, grant in 2002, notice of opposition on 03.04.2003. Summons for OD in 2012. Decision OD in 2013 (claims as granted and AR-3 lack basis, AR-4 not novel over D1. First appeal decision July 2015 (T2308/13; D1 does not anticipate the new Main Req, remittal). Second OD decision July 2016: patent maintained in amended form (things are speeding up). The present decision of 08.05.2019, notified in writing 01.07.2019: opponent's appeal dismissed.

EPO T 2180/16 -  link

2.6.5 La chambre rappelle que la priorité du brevet en litige date de 1997, c.-à-d. plus que vingt ans avant la procédure orale devant la chambre lors de laquelle la requérante a, pour la première fois, fait valoir des connaissances générales de l'homme du métier telles qu'énoncées aux points 2.6.3 et 2.6.4 ci-dessus. Or, la requérante n'a pas fourni de preuve pour de telles connaissances générales à la date effective du brevet en litige. En l'absence de telles preuves et au vu de l'enseignement de D1, la chambre ne peut accepter l'argument que l'homme du métier n'aurait pas suivi cet enseignement et n'aurait pas choisi les exemples 9 et 11 de D1 afin de résoudre le problème posé. Cet argument relève plutôt d'une analyse a posteriori. Par ailleurs et comme l'admet la requérante elle-même, bien que l'exemple 5 de D1 montre qu'une augmentation de la température de recuit mène à une valeur "r moyen" plus élevée (1,6 comparé à 1,5 pour l'exemple 4), l'homme du métier n'aurait pas augmenté davantage la température de recuit afin d'éviter des phénomènes de recristallisation. L'augmentation de la température de recuit n'aurait par conséquent pas permis à l'homme du métier d'obtenir une tôle selon la revendication unique qui requiert une valeur "r moyen" supérieure à 1,6.

2.6.6 Il résulte de ce qui précède que la revendication unique de la requête principale est considérée comme satisfaisant à la condition d'activité inventive requise dans l'article 56 CBE.

Dispositif

Par ces motifs, il est statué comme suit

Le recours est rejeté.