T 0124/16 - Not admitting attack

Key points

• This decision was given publication code [C], so I'm discussing it here.
• The opponent submitted that claim 1 of an auxiliary request was obvious over E1 and E12 for the first time during the oral proceedings before the Board. The Board does not admit this new line of attack, noting also that operative claim 1 is based on some of the dependent claims as granted.
• The opponent had only attacked the inventive step based on E14 during the appeal procedure. However, E14 was a document that had not been admitted by the OD 'in the framework of novelty'. In appeal, the opponent uses E14 for inventive step. The Board concludes that it has a discretion to admit E14 under Article 12(4) RPBA. The Board assesses that E14 is not prima facie highly relevant and does not admit E14.
• As a comment, under Art.12(6) RPBA 2020, "the Board shall not admit [] evidence which [was] not admitted in the proceedings leading to the decision under appeal, unless the decision not to admit them suffered from an error in the use of discretion or unless the circumstances of the appeal case justify their admittance." I wonder if the change of strategy of the opponent party (movant) itself can be considered a "circumstance of the appeal" justifying the admittance of E14. But under current Art.12(4) RPBA 2007, the Board has the discretion. 

EPO T 0124/16 -  link

Hilfsantrag B3

5. Nicht-Zulassung von E14 in das Verfahren

5.1 E14 ist unbestritten ein verspätet vorgebrachtes Beweismittel im Sinne von Artikel 114 (2) EPÜ. Im Rahmen der Neuheitsdiskussion hat die Einspruchs­abteilung E14 nicht ins Verfahren zugelassen.

5.2 Bei der Diskussion der erfinderischen Tätigkeit im Verfahren vor der Einspruchsabteilung fand E14 keine Erwähnung. Die Beschwerdeführerin hat den auf E14 gründenden Einwand mangelnder erfinderischer Tätigkeit erstmals im Beschwerdeverfahren vorgebracht, obwohl ein auf entsprechende Weise eingeschränkter Anspruch 1 von der Beschwerdegegnerin bereits im Einspruchs­verfahren vorgelegt worden war (vgl. Hilfsantrag IV vom 4. September 2015, jedoch noch umfassend die Alternative mit Thermostatventil und mit anderer Abgrenzung zwischen allgemeinem und kennzeichnendem Teil). Dieser neue, von E14 ausgehende Einwand mangelnder erfinderischer Tätigkeit hätte daher bereits im Verfahren vor der Einspruchsabteilung vorgebracht werden können.

T 0235/15 - Tube feeding is medical method

Key points

• Claim 1 of the main request is directed to a method of tube feeding an "adult normometabolic patient under the age of sixty-five who cannot receive nutrition through a normal diet". The question is whether such a method is excluded from patentability under Art.53(c) EPC.
• The Board: " it is clear that [the patients] suffer from a serious condition, namely that they cannot receive nutrition through a normal diet. If this condition were not overcome or at least alleviated, it would inevitably lead to the patient's death." 
• " the artificial administration of nutrition to patients who are unable to eat normally has to be seen as therapeutic since, in its absence, the patient would inevitably die of starvation." 
• " Particularly relevant is the fact that tube feeding requires the use of a tube as an essential element for overcoming the patient's incapacity to eat normally. It is precisely the use of this tube which allows the administration of nutrition and which prevents the patient's death by starvation. Consequently, the method of claim 1 is a method for treatment of the human body by therapy and is therefore excluded from patentability by Article 53(c) EPC." 

EPO T 0235/15 -  link

Reasons for the Decision

1. Exceptions to patentability - Article 53(c) EPC

1.1 Main request

Claim 1 of the main request is directed to a method of tube feeding an adult normometabolic patient under the age of sixty-five who cannot receive nutrition through a normal diet. Thus, although the patients treated according to the method of claim 1 are explicitly defined as not having any metabolic diseases, it is clear that they suffer from a serious condition, namely that they cannot receive nutrition through a normal diet. If this condition were not overcome or at least alleviated, it would inevitably lead to the patient's death. In consequence, the fact that the patient has no metabolic diseases or that the method does not involve the administration of a medicament is not sufficient to say that the method of claim 1 is non-therapeutic; the patient suffers from a serious condition that needs to be treated in order to prevent fatal consequences.

As noted by the respondent, the patient may be treated in two possible ways, either by tube feeding or by intravenous provision of nutrients. However, independently of the method used, the artificial administration of nutrition to patients who are unable to eat normally has to be seen as therapeutic since, in its absence, the patient would inevitably die of starvation.

In this context, contrary to the appellant's view, tube feeding cannot be equated with normal eating since it is not a natural way of providing nutrition and the subject who receives it is a patient with a serious condition. Particularly relevant is the fact that tube feeding requires the use of a tube as an essential element for overcoming the patient's incapacity to eat normally. It is precisely the use of this tube which allows the administration of nutrition and which prevents the patient's death by starvation. Consequently, the method of claim 1 is a method for treatment of the human body by therapy and is therefore excluded from patentability by Article 53(c) EPC.

[...]

T 0427/15 - The CEO wishes to speak

Key points

• In this case, the opponent is a French company. The CEO of the opponent wishes to speak. The Board allows this. 
• " The board is not aware of any case law which would limit a person's right to make submissions by reason only of the appointment of a professional representative, where that person is otherwise fully authorized to represent a party itself, and is therefore in fact inherently permitted to submit submissions of its own right." 
• This decision is in line with T2036/12. 

EPO T 0427/15 - link

Motifs de la décision

1. Le recours est recevable.

2. La question de savoir si M. Lorenz peut présenter ses observations pendant la procédure orale

2.1 L'opposante (« Mimotec S.A. ») a deposé un pouvoir daté du 28 mars 2019 autorisant M. Cyrille Poindron à agir pour la société. Le pouvoir était signé par « H. Lorenz, CEO » et une autre personne. L'abréviation « CEO » signifie en anglais "Chief Executive Officer", c'est-à-dire Directeur Général de la société. Pendant la procédure orale M. Lorenz a déclaré qu'il était encore « CEO » de Mimotec S.A., et la titulaire n'a fourni aucun élément de preuve que ce n'était pas le cas. La chambre considère donc que M. Lorenz est directeur de Mimotec S.A. (l'opposante).

2.2 La chambre n'a connaissance d'aucune jurisprudence qui limiterait le droit d'une personne à présenter des soumissions du seul fait de la nomination d'un mandataire agréé, lorsque cette personne est par ailleurs pleinement autorisée à représenter une partie elle-même, et est donc de fait autorisée de manière inhérente, à présenter elle-même des soumissions de son plein droit.

Par conséquent, M. Lorenz a le droit de s'exprimer pendant la procédure orale dans l'exercice de ses fonctions en tant que directeur, même si l'opposante a désigné un mandataire agréé en application de l'article 134(1) CBE.

T 1360/13 - Substitute drawings give inescapable trap

Key points

• In this slightly older decision (issued 03.04.2019), the drawings as filed were of poor quality; the patent was granted with the replacement "formal"  drawings filed during the PCT phase. This may be not so uncommon. The Board finds the amendment to contravene Article 123(2); moreover, deleting the drawings after grant contravenes Article 123(3) EPC. For the latter, the Board has a case-specific reasoning as well as generally applicable reasoning based on Article 69 EPC. So this is a kind of inescapable trap. Note that the WO publication normally contains the formal drawings under Rule 26 PCT; these are marked as substitute drawings in the WO publication. The drawings as actually originally filed can be obtained through the WIPO Patentscope site at least for newer patents (and in the present case in the EPO online file). 
• " It seems self-evident, as can be seen on the drawing sheets depicted above, that the figures shown in the drawing sheets according to the main request are close to technical drawings whereas in the originally filed figures it was not possible to guess any limit or element within the black zones. Therefore, the Board agrees with the opponent that the figures according to the main request show many more details, i.e. much more information not apparent in the figures as originally filed." 
• " Thus, many details present in the figures of the patent as granted are not disclosed directly and unambiguously by the application as originally filed. Hence, Article 100(c) EPC prejudices the maintenance of the patent on the basis of the main request." 
• " The documents of auxiliary request 9 correspond to the documents of the main request in which all drawing sheets have been deleted and all references to the figures in the description and claims have been deleted as well."  
• Under Article 123(3), "the fundamental question in the present case is thus whether the deletion of the drawings and references thereto in the description has a broadening effect on the extent of protection conferred."
• In view of Article 69 EPC " any change in the description or drawings may have an influence on the understanding of a claimed feature, in particular when it has to be considered ambiguous in view of a piece of prior art or an allegedly infringing product, and may thus lead to a broadening of the extent of the protection conferred." 
• " In the present case, [...] the deletion of the drawings and any reference to them in the description leads not only to a generalisation of the teaching of the patent but also to a more general interpretation of the claim." 
• "in the present case [...] the wording of several features of claim 1 is very general and may result in ambiguities needing interpretation. These ambiguities in claim 1 are also resolved in a more generalised way in the absence of the drawings (first sentence of the Protocol on the interpretation of Article 69 EPC)." 
• "Thus, in the present case, the teaching of the description is more general without the drawings, and the ambiguities in the claim are resolved in a more general way without the drawings. This results in an extension of the protection conferred by the patent. Or, using the words of the Enlarged Board in point 4.1 of the Reasons of G 2/88 (point 4.4 above), the "technical features are less narrowly defined as a result of the amendment, the protection conferred is therefore extended."
• The Board also has a more general observation. " it must be kept in mind that during the whole life of the patent the extent of protection conferred must be determined again by applying Article 69(1) EPC and the Protocol on its interpretation, both in proceedings before the EPO and within the Contracting States. In other words, the source necessary for interpretation must be kept. Hence, in view of Article 69(1) EPC which states that the description and the drawings shall be used to interpret the claims when determining the extent of the protection conferred by a European patent, after grant, any information in the description and/or drawings of a patent directly related to a feature of a claim and potentially restricting its interpretation cannot be removed from the patent without infringing Article 123(3) EPC."

Headnote

In view of Article 69(1) EPC which states that the description and the drawings shall be used to interpret the claims when determining the extent of the protection conferred by a European patent, after grant, any information in the description and/or drawings of a patent directly related to a feature of a claim and potentially restricting its interpretation cannot be removed from the patent without infringing Article 123(3) EPC.

EPO T 1360/13 -  link

Reasons for the Decision

1. Admissibility of the appeals

1.1 The appeal of the opponent is admissible. This was not disputed by the patent proprietor.

1.2 The opponent considered that the appeal of the patent proprietor was not admissible because in its notice of appeal and its statement setting out the grounds of appeal, the patent proprietor requested the maintenance of the patent on the basis of a request in relation to which it was not adversely affected. Indeed, neither claim 1 according to the patent as granted nor the version of claim 1 of the main request filed with the statement setting out the grounds of appeal was maintained by the patent proprietor in the opposition proceedings.

Rule 99(1)(c) EPC requires that the notice of appeal defines "the subject of the appeal". Under Rule 99(2) EPC, it is the statement setting out the grounds of appeal which has to indicate the "extent" to which the impugned decision is sought to be amended since in the vast majority of cases it is with the statement of grounds of appeal that new requests are filed (e.g. T 689/09, 1.1 to 1.12 of the Reasons; T 226/09, 1. to 1.10 of the Reasons). This applies in the present case.

The notice of appeal requested the reversal of the (impugned) decision and the maintenance of the patent as granted. Concerning the version of claim 1 of the main request filed with the statement setting out the grounds of appeal, the statement clearly indicates that the version to be taken as the main request is that filed during the oral proceedings of 8 October 2012. Thus, it is obvious which version is meant and that the patent proprietor can later correct any obvious mistake in the version attached to the statement setting out the grounds of appeal so it conforms to the meant version. This was done with the filing of 23 December 2014.

Thus, the appeal of the patent proprietor is admissible.

2. Main request - Added subject-matter - Article 100(c) EPC.

The patent was granted with drawing sheets exchanged according to Rule 26 PCT during the international phase, the originally filed drawing sheets being of poor quality, essentially showing black or grey elements (see the drawings below). The same exchanged drawing sheets which were part of the patent as granted are part of the main request documents.

T 1553/16 - Proprietary parameter

Key points

• In this opposition case, claim 1 is directed to a pipe comprising a polyethylene resin, the resin having a number of parameter features including "an F time in Jana Laboratories Procedure APTF-2 of at least 1000 hours, under the following conditions: ... (± 10 percent)".
• The Board finds the claim to be insufficiently disclosed.
• " in the absence of any information in the patent in suit on how to determine the F time feature, the skilled person has no idea which kind of installation should be used in order to carry out said test according to said procedure APTF-2, nor any knowledge of how the test is carried out and how a failure is identified. The mere indication of some parameters to be fulfilled (as indeed specified in claim 1 of the main request) is of no help if the skilled person does not know on which installation said parameters are to be set and how a failure is identified." 
• The patentee submitted that "the Jana Laboratories Procedure APTF-2 was an established procedure, which was publicly offered as a service by Jana Laboratories."
• The Board: "However, it is derivable from the fourth paragraph on page 1 of C9 that the testing methodology APTF-2 was kept secret (see wording "proprietary testing methodologies" and "proprietary analysis methodologies", whereby the emphasis is made by the Board), i.e. it was not available to the public." 
• "considering that the appellant has deliberately defined the subject-matter of operative claim 1 by the way of an - apparently - unusual parameter and using a method which was not shown to be commonly used in the art, it would have been its duty to provide full information how said method should be carried out. Since, as explained above, that requirement is in the present case not satisfied, there is a fundamental lack of technical information concerning the determination method of the F time feature according to the Jana Laboratories Procedure APTF-2 mentioned in operative claim 1, so that it is not possible to know what measures have to be taken to produce a pipe according to claim 1 as it is not possible to verify whether a product having the property as claimed is obtained. This amounts to a lack of sufficient disclosure." 
• The Patentee submitted that the issue was a matter of clarity. The Board "the issue at stake is not related to an alleged ambiguity in the determination of a parameter, which could indeed in some cases be a matter of clarity, but rather to a lack of essential information in order to run a specific procedure (namely the APTF-2 procedure), which was not shown to be usual in the art and which is necessary to determine an unusual feature (F time) mentioned in the operative claims. In other words the lack of information does not result in the claim being unduly broad or with unclear edges, but derives from the presence of a parameter which is in itself very specific, but whose method of measurement is kept secret. Therefore, the appellant's argument is rejected." 

EPO T 1553/16 - link

2. Sufficiency of disclosure

2.1 In order to meet the requirements of sufficient disclosure, an invention has to be disclosed in a manner sufficiently clear and complete for it to be carried out by the skilled person, without undue burden, on the basis of the information provided in the patent specification, if needed in combination with the skilled person's common general knowledge. This means in the present case that the skilled person should in particular be able to prepare a pipe according to claim 1, which is disputed by the respondents.

2.2 The pipe according to claim 1 is characterised by a combination of structural features related to the definition of a polyethylene resin and of antioxidants which have to be mandatorily present, with the additional functional feature "an F time in Jana Laboratories Procedure APTF-2 of at least 1000 hours, under the following conditions: ... (± 10 percent)".

2.3 The respondents argued that the patent failed to provide fundamental technical information on how to measure said feature "F time".

2.3.1 In that respect, it is noted that that issue was already addressed by the parties in the first instance proceedings, but that the opposition division reached its decision under the assumption that the patent proprietor's arguments could be adhered to (see section V above: last sentence).

2.3.2 In addition, the opposition division's conclusion according to which said functional feature was not mandatorily implicitly satisfied by all the pipes falling under the structural definition of claim 1 (reasons of the decision: page 9, second and third paragraphs), which was further adhered to by the respondents, was not contested by the appellant, in particular during the oral proceedings before the Board.

2.3.3 Furthermore, it was undisputed that the sole information provided by the patent in suit in relation to said F time feature and to the Jana Laboratories Procedure APTF-2 is the one which is indicated in operative claim 1.

T 0767/18 - Appeal fee only

Key points

• In this examination appeal case, only a debit order for the appeal fee was filed (in the proper format). The Board decides that the debit order is not an implicit notice of appeal. 
• The Board: "It follows from the above that the debit order in the present case does not constitute the notice of appeal required to institute appeal proceedings. Nor is there any other document on file which contains anything that could be regarded as notice of appeal. Nor has the applicant submitted that notice of appeal was filed in the present case. The board therefore concludes that the decision of the examining division has not been appealed at all."
• The order is that: "For these reasons it is decided that: 1. No appeal has been filed. 2. The reimbursement of the fee for appeal is ordered." 
• As a comment, oral proceedings had not been requested. Note that the Board furthermore does not decide that the appeal is deemed not to have been filed.
• The debit order for the appeal was filed by an in house professional representative.

EPO T 0767/18 - link

Summary of Facts and Submissions

I. In its decision posted on 27 November 2017, the examining division refused European patent application No. 13 716 288.9 pursuant to Article 97(2) EPC.

II. On 6 February 2018, the appeal fee was paid by means of an electronically filed debit form. Said form cited the above application number, and contained the name and address of the representative of the applicant.

T 0170/14 - Novelty as a new ground

Key points

• In this opposition case, the only ground of opposition in the first instance opposition proceedings was lack of inventive step. The opponent raises a novelty attack in appeal. The Board looks at the headnote of G 7/95 about lack of novelty and lack of inventive step being separate grounds of opposition, and the finding therein that "the allegation that the claims lack novelty in view of the closest prior art document may be considered in the context of deciding upon the ground of lack of inventive step " 
• The present Board: "The Enlarged Board considered only the case of the closest prior art destroying novelty; other documents were not mentioned. In the Board's opinion, however, it would seem odd not to apply this principle to other documents, since other such documents could always be used in a discussion of lack of inventive step".
• As a comment, the underlying issue is G10/91, hn.3: "Fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee" with the underlying reasoning in G9/91, r.18. Under current Art.12(4) RPBA 2007, novelty attacks based on documents (evidence) newly cited in appeal can already be held inadmissible. Under Art.12(6) RPBA 2020, the new attack (objection) can still be held inadmissible if it could have been submitted earlier, even if based on documents already cited during the first instance proceedings. 
• The difficulty is the Enlarged Board opted for a prohibition of new grounds - not a discretionary power - in G 10/91 whereas Art. 12 RPBA sets a discretionary power. I'm not sure if the Boards can make further exceptions to G10/91 besides the one of G7/95. If G10/91 is considered as too restrictive, a new referral may be considered. I also note that for the closest prior art document, the whole teaching of that document is considered in order to determine the distinguishing features whereas secondary references can be cited for only teaching the  distinguishing feature(s) at issue. 

T 0170/14 - link


3. Main request - novelty

The appellant/opponent considered that both D3 and D5 anticipated the subject-matter of claim 1.

The only ground for opposition present in the notice of opposition and used in the opposition proceedings was lack of inventive step. Pursuant to G 7/95 (OJ EPO 1996, 626), the respondent/patent proprietor considered that the only document which could be used for a lack of novelty objection under the ground for opposition of lack of inventive step was the closest prior art as mentioned in the above decision.

In decision G 7/95, the Enlarged Board of Appeal decided that: "In a case where a patent has been opposed under Article 100(a) EPC on the ground that the claims lack an inventive step in view of documents cited in the notice of opposition, the ground of lack of novelty based upon Articles 52(1), 54 EPC is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee. However, the allegation that the claims lack novelty in view of the closest prior art document may be considered in the context of deciding upon the ground of lack of inventive step."

More explicitly, in the reasons for the decision the following was stated:
"7.2 Nevertheless, in a case such as that under consideration in the decision of referral in case G 7/95, if the closest prior art document destroys the novelty of the claimed subject-matter, such subject-matter obviously cannot involve an inventive step. Therefore, a finding of lack of novelty in such circumstances inevitably results in such subject-matter being unallowable on the ground of lack of inventive step."

The Enlarged Board considered only the case of the closest prior art destroying novelty; other documents were not mentioned. In the Board's opinion, however, it would seem odd not to apply this principle to other documents, since other such documents could always be used in a discussion of lack of inventive step, so lack of novelty in view of D3 or D5 could be examined in the present case under the ground for opposition of lack of inventive step.