T 1503/17 - Other decisions not binding

 Key points

• If, say, the patent in the parent case is revoked due to legal problems with the priority claim, can you relitigate the matter in a divisional application?
• The present Board, in an unrelated case, has to decide on the admissibility of a late-filed request.
• “At the oral proceedings before the Board the appellant-opponent [sic, I think patentee was intended] also referred to an interpretation (of "endless belt") in an (unidentified) decision by this Board, in a related case, as justifying the late filing. Leaving aside the fact that the Board is in any case not bound by a decision in a different (even if related) case, Art 23(3) EPC, the Board is unable to see how claim interpretation in another case can have any bearing on the justification for a late filing in the present appeal, since they are distinct and independent proceedings.”

T 1503/17 

https://www.epo.org/law-practice/case-law-appeals/recent/t171503eu1.html

"At the oral proceedings before the Board the appellant-opponent also referred to an interpretation (of "endless belt") in an (unidentified) decision by this Board, in a related case, as justifying the late filing. Leaving aside the fact that the Board is in any case not bound by a decision in a different (even if related) case, Art 23(3) EPC, the Board is unable to see how claim interpretation in another case can have any bearing on the justification for a late filing in the present appeal, since they are distinct and independent proceedings."

T 1556/14 - Decision on cost apportionment

 Key points

• In this post a decision of a Board of Appeal, but not on the appeal. The OD had decided to maintain the patent in amended form, both Patentee and Opponent 1 appealed. With letter 09.08.2019, patentee withdrew its appeal, disapproved the text and requested revocation of the patent. The Board held oral proceedings on 12.08.2020 in the absence of the opponents (but in the presence of patentee) revoking the patent. 
• “By letter dated 15 August 2019, appellant II (Opponent 1) requested that costs be awarded against appellant I (Patentee) for the time spent preparing for the oral proceedings and for non-refundable travel costs (apportionment of costs).”
• As held in T765/89, the Board has “inherent original jurisdiction to consider requests made to it in matters arising out of or in connection with the former appeal procedure”
• The Board: “Where [a request for cost apportionment] cannot be submitted before termination of the proceedings, for example when the only appeal is withdrawn and the timing of that withdrawal or other related circumstances are the alleged grounds for requesting apportionment of costs, the request must be accepted as being admissible despite being submitted after termination of the proceedings. Decision T 765/89, to which [opponent 1] referred, seems to concern such a situation.”
• The Board: “in the case in hand the board is not convinced that appellant II was unable to file a request for apportionment of costs prior to the termination of the proceedings on 12 August 2019. Appellant II's representative was made aware of appellant I's letter of 9 August 2019 at 20:30 that day. It decided not to attend the oral proceedings and could therefore also have decided to file a request for apportionment of costs over the weekend, even if it had not been possible to consult appellant II. ”
• The present Board: “Under Rule 88(1) EPC, apportionment of costs is to be dealt with in the decision on the opposition. The rule implies that the request for apportionment is submitted before that decision is taken”. 
• The request for cost apportionment is rejected as inadmissible.
• Opponent 1 received Patentee's letter on Friday 9 August at 20:30 (the EPO at 21:13 CEST through online filing, link). The oral proceedings were held on Monday 12 August closing at 09:10 according to the minutes of the oral proceedings. I'm not sure what the Board means with filing a request 'over the weekend' and if any request filed on Monday 08:30 using e.g. fax would have effectively reached the Board before Monday 09:10. 
• I note that the minutes of the oral proceedings do not appear to acknowledge the withdrawal of Patentee's appeal by letter of Friday 20:30, e.g. Patentee is simply referred to as Appellant I in the minutes.
  
• T 765/89: “In the exercise of its inherent original jurisdiction to consider requests made to it in matters arising out of or in connection with the former appeal procedure, the Board still has to decide on the Respondents' requests to impose on the Appellants the costs for the preparations made in view of oral proceedings”. 
• 
  
• Of note: “In the case in hand the board ordered oral proceedings to be held on 12-14 August [sic!] 2019”. 

EPO  T 1556/14.

https://www.epo.org/law-practice/case-law-appeals/recent/t141556eu2.html

(decision text omitted)

T 2620/18 - More about the SME appeal fee; debit order correction

 Key points

• The appellant paid the appeal fee on 08.10.2018 at the SME rate without being an SME.
• The Board finds that the difference with the normal rate it is not a small amount lacking under Article 8 Rfees.
• The appellant requests correction under Rule 139. The Board considers it proven that the reduced fee rate was paid by mistake, basically because of the 'design choices' of the Online Filing Software (so this applies to selecting the wrong fee level by mistake in OLF).
• “wie von der Beschwerdeführerin vorgetragen, sind die Texte in den Textfeldern [in OLF] für die ermäßigte und die volle Beschwerdegebühr sehr ähnlich. Sie beziehen sich beide auf Regel 6 (4) und (5) EPÜ, einmal in positiver Weise, einmal in negativer Weise:” 
• I wonder if the EPO will ever change the Online Filing Software on this point. Until that time it seems very reasonable that the Board acknowledges that the two texts chosen by the EPO for identifying the fee levels are very similar. 
• “ Dabei ist zu berücksichtigen, dass der ermäßigte Gebührenbetrag mit dem vor dem 1. April 2018 geltenden "einheitlichen" Betrag für die Beschwerdegebühr übereinstimmte. Es erscheint daher glaubhaft, dass die Texte in den Boxen flüchtig gelesen wurden und sich der Leser am bisher geltenden, bekannten Gebührenbetrag von 1880 EUR orientierte und irrtümlich davon ausging, dass die volle Gebühr bezahlt wurde, obgleich dies ab dem 1. April 2018 lediglich der ermäßigte Betrag war.”
• However, the Board considers that the request for correction was not made timely, because it was made 8 weeks after paying the wrong appeal fee (payment 09.10.2018; request correction 07.12.2018) whereas the error had been noticed on 25.10.2018 and a debit order for the appeal fee at the normal rate had been filed on 25.10.2018 as well.
• This seems highly fact-specific.
• I note that GL A-X, 7.1.1 (2019) state that “ Payment is a matter of fact whereby a certain amount is transferred to and put at the disposal of the EPO. It is not, therefore, a procedural declaration which may be corrected pursuant to Rule 139. The same applies to debit orders.”
• The breakthrough decision was T 0317/19 as far as I know.

T 2620/18 - link

Decision text omitted.

T 1421/20 - Fast decision, first level of convergence

 Key points

• An appeal against a refusal decision. Statement of grounds filed 21.04.2020, forwarded to the Board under Art. 109 on about 21.06. Summons 23.06, preliminary opinion 26.06. Oral proceedings 02.11.2020, appeal dismissed (application filed already on 22.10.2003, on the other hand, so the EPO still needed 17 years to finally refuse it). 
• This is the first decision I know wherein the new 'first level of convergence' is applied, i.e. Article 12(4) RPBA 2020.
• “although the amendments carried out in the Auxiliary Requests 0a, 0b and 0c [filed with the Statement of grounds] may address the [clarity] objections raised by the examining division in the decision under appeal, they introduce new [clarity] issues that lead to new objections. Therefore, the board, exercising its discretion under Articles 12(2) and (4) RPBA 2020, decides not to admit the Auxiliary Requests 0a, 0b and 0c into the procedure.”
• The Board does not need to discuss whether these AR's should have been filed during the first instance proceedings. I guess that if the clarity objections of the Examining Division were first raised in the appealed decision, this would be an error under Article 113 EPC, but that would be something for the applicant to argue.
• The Board analyses the new clarity issues in detail in the appeal decision.
• Note that the requirement of “does not give rise to new objections” is in the second stage of convergence, Art.13(1)(s.4), clause (v)(b).
• The Board finds that Auxiliary Request 0a' and AR12 are not novel. The other requests are not admitted.
  
  
• “Auxiliary Requests 0b', 0b'-1 and 0c' [...] were filed with appellant's letter of 1 October 2020, i. e. after the board had issued summons to oral proceedings. They were incontestably late filed and constituted an amendment to the appellant's case. The appellant argued that these requests should exceptionally be admitted into proceedings because it could not predict that board would regard clear the feature that the examining division had considered not clear.”
• The Board does not admit them. “the board considers that the appellant could and should have filed these requests during the first instance proceedings. Moreover, the board regards that it could not deal with requests comprising such features without undue burden, since it was not even certain that appropriate prior art was readily available in the file”
  
  
• Perhaps even more relevant is the fate of AR1-5. “Although it is true that Auxiliary Requests 1 to 5 were underlying the decision under appeal, it is also true that they were replaced (i. e. withdrawn) in the beginning of the appeal and were, thus, not part of the appellant's case. The board regards, thus, their reintroduction with the appellant's letter of 1 October 2020 as an amendment to the appellant's case, which is to be admitted into the procedure under Article 13 RPBA 2020.The board notes further, that the examining division had rejected these requests for lack of clarity and no other opinion on them was given in the decision under appeal with respect to the other patentability requirements. Since the board did not agree with the lack of clarity objections of the examining division, these requests had to be assessed with respect to the other patentability requirements according to the EPC. Moreover, by replacing them in the beginning of the appeal, the appellant did not give the board the chance to examine them and form at least a preliminary opinion on them.” The Board is not prepared to examine novelty and inventive step, neither to remit the case, and does not admit these requests.
• Finally, AR-6 to 11 were held inadmissible by the Examining Division under Rule 137(3) EPC as being late-filed and prima facie unclear. The appellant does not contest this decision and the Board does not admit the requests on appeal.

T 1421/20 - link

T 1854/19 - Implicitly overruling the Administrative Council

 Key points

• This is a follow-up case to G 3/19 (Pepper). In pepper, the Enlarged Board gave a new interpretation of Article 53(b) EPC which corresponds to Rule 28(2) EPC in excluding ‘essentially biological plants’ from patentability (but in fact appears to exclude more from patentability than Rule 28(2) EPC). The Enlarged Board said in G 3/19 that “this negative effect does not apply to European patents granted before 1 July 2017 and European patent applications which were filed before that date and are still pending”; the ‘negative effect’ is that of Article 53(b) EPC for the types of plant-related subject-matter recited in G 3/19 hn.1. 
• However, the Administrative Council decided that Rule 28(2) EPC “shall apply to European patent applications filed on or after this date [01.07.2017], as well as to European patent applications and European patents pending at that time”, Article 3 of the Decision Administrative Council 29.06.20147 OJ 2017 A56.
• The Enlarged Board in G 3/19 has not said (or at least not explicitly) that Rule 28(2) is invalid, neither that said Article 3 of the AC Decision is invalid.
• Therefore, G3/19 strictly speaking leaves open the question of whether Rule 28(2) is to be applied to applications filed before 01.07.2020
• The present Board: “In view of the provisions set out by the Enlarged Board of Appeal for European patent applications pending before 1 July 2017, the new interpretation of Article 53(b) EPC - announced in opinion G 3/19 [...]- has no retroactive negative effect on the subject-matter of the main request (see opinion G 3/19, points XXVIII and XXIX). This implies that the opinion does not acknowledge the retroactive effect, as provided for in Article 3 of the Decision of the Administrative Council of 29 June 2017 [OJ 2017 A56] that introduced Rule 28(2) EPC.”
• This Board finds that “the subject-matter of the set of claims of the main request is not excluded from patentability” because of the filing date of the present application and because " Article 53(b) EPC, as interpreted by decisions G 2/12 and G 2/13 is applicable to the present application”. Strictly speaking, the present Board still does not say that Rule 28(2) is not applicable to this application but this is unambiguously implied by finding that the subject-matter is not excluded from patentability. 
• So this Board finds that the Enlarged Board implicitly overruled the Administrative Council in G3/19.
• I note that said Article 3 of said Decision of the AC is not strictly speaking a provision of the Implementing Regulation, so it is not clear if Article 164(2) applies. 

EPO T 1854/19 - - link

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 99 EPC and is therefore admissible.

Main request - claims 1 to 14

Exceptions to patentability (Article 53(b) EPC)

2. In view of the provisions set out by the Enlarged Board of Appeal for European patent applications pending before 1 July 2017, the new interpretation of Article 53(b) EPC - announced in opinion G 3/19 of 14 May 2020 and being consequential to the introduction of Rule 28(2) EPC on 1 July 2017 - has no retroactive negative effect on the subject-matter of the main request (see opinion G 3/19, points XXVIII and XXIX). This implies that the opinion does not acknowledge the retroactive effect, as provided for in Article 3 of the Decision of the Administrative Council of 29 June 2017 that introduced Rule 28(2) EPC.

3. Thus, Article 53(b) EPC, as interpreted by decisions G 2/12 and G 2/13 (OJ EPO, 2016, A27 and A28) is applicable to the present application and the subject-matter of the set of claims of the main request is not excluded from patentability.

4. The board thus considers the appeal allowable.

T 0492/18 - No hybrid vico appeal oral proceedings yet

 Key points

• "[The opponents] further request participation at the oral proceedings of a member of the opponent's patent department by means of the video messaging tool "Skype", at least periodically, where the video connection would be provided through the computer of the professional representative being present in the oral proceedings."
• The Board refuses the request. 
• "The possibility of holding oral proceedings by VICO is predicated on the Boards' ability to offer the necessary technical facilities. In the opinion of the Board, these technical facilities must be under the continued control and supervision of the Board. To the extent it is technically feasible, the Board must be in the position to control who is participating in the oral proceedings, and to establish that all participants can be seen and heard properly by all persons attending, while also ensuring that it is clear to all who is attending the oral proceedings. These conditions are seen as necessary for the oral proceedings held by VICO to be perceived as equivalent to usual oral proceedings held at the premises of the office with the parties being physically present. Additionally, at the time of deciding, the technical facilities of the Boards of Appeal are primarily geared towards all parties participating remotely."
• The Boards are working hard to introduce 'hybrid' oral proceedings where some participants attend the oral proceedings in person and others attend through video. It is proposed that the Chair may even order that a party or representative must use video conferencing (i.e. is prohibited from showing up in person, it seems); see proposed Article 15a(2) RPBA. 
• Comments can be submitted until 27 November, see here.
• Parties and representatives are of course prohibited from live streaming oral proceedings using their laptop since sound recording is prohibited (link); I think streaming comprises recording and transmission. The reasons for the prohibition are frankly not clear to me.

EPO T 0492/18 - link

decision text omitted.

T 0074/17 - Harmless error and much more

Key points

• Today's post can be filed under ‘advanced appellate procedure’ and deals with ‘harmless error’, though that is the term in US law. “In United States law, a harmless error is a ruling by a trial judge that, although mistaken, does not meet the burden for a losing party to reverse the original decision of the trier of fact on appeal, or to warrant a new trial.” (wikipedia)
• In EPO terms, a substantial procedural violation of the first instance department is only a ground for setting aside the impugned decision (and remitting the case) if it has a causal link with the order of the decision.
• In this case, the OD does not admit patentee's Main Request and patentee files a new Main Request. Patentee then complains in appeal that the OD's decision to hold the (first) Main Request inadmissible was a substantial procedural violation requesting remittal of the case.
• The Board does not agree or more precisely, considers the question irrelevant. “Daraus folgt nach Auffassung der Kammer, dass ein behaupteter Verfahrensmangel nur dann in einer Beschwerde berücksichtigt werden kann, wenn er sich auf die beschwerdefähigen Teile einer Entscheidung ausgewirkt hat, d.h. wenn er die Partei beschwert hat.” 
• The Board explains that the OD's conclusion that the (first) Main Request was not admitted, was not yet the final decision. The Board, in German: “Jedoch war das Einspruchsverfahren nach der Verkündung der Nichtzulassung des ersten Hauptantrags noch nicht beendet. Durch die Rücknahme konnte die erst lediglich als verfahrensführende Entscheidung wirkende Nichtzulassung eine materielle Rechtswirkung nicht mehr entfalten in dem Sinne, dass die abschließende Zwischenentscheidung der Einspruchsabteilung keine Entscheidung mehr über den ersten Hauptantrag, d.h. weder über dessen Nichtzulassung noch über die Nichtgewährbarkeit enthalten müsste. ”
• The Board indicates that there could be an exception if the OD presses the patentee to give up the inadmissible main request. 
• The Board appears to indicate that a request must be maintained as higher ranking than the requests decided on by the OD. “Dementsprechend muss die Kammer feststellen, dass der erste Hauptantrag durch seine Ersetzung durch den zweiten Hauptantrag implizit zurückgezogen wurde, oder jedenfalls nicht höherrangig war als alle in der Entscheidung behandelten weiteren Anträge.”
  
• Hence, this also deals with the implicit withdrawal of a request.
  
  A number of rules can  be inferred from the decision:
• Filing a new main request implies withdrawal or at least the non-maintenance of the previous main request.
• A conclusion of an OD that a request is not admissible is not a decision not to admit. If the request is subsequently withdrawn but the  OD nevertheless includes the reasons for inadmissibility on the written decision, these reasons are obiter and still not a 'decision not to admit' in the sense of Art. 12(6)(s.1).
• A withdrawal of a request during the first instance proceedings may be non-prejudicial for admissibility of the request in appeal if the withdrawal was made under pressure.
• Non-maintenance in the sense of Art. 12(6)(s.2) refers to maintaining as higher ranking than the requests decided on (found allowable) by the OD.
  
  
  
  
  
  
  
• The Board's reference to Art. 107 [see the full decision text] is not entirely clear to me. Typically, Article 107 (adversely affected) is analysed only with respect to the order of the decision - the opponent can not appeal if the OD revokes the patent finding the claims to be novel but not inventive. 
• A number of requests are not admitted, the other requests involve added subject-matter. The patent is revoked. 
• "Diese Hilfsanträge 1, 4, 7 und 8 scheinen dem Hauptantrag und den Hilfsanträgen IV, VIII und IX zu entsprechen, die mit Schreiben vom 5. September 2016 eingereicht, aber in der mündlichen Verhandlung vor der Einspruchsabteilung nicht weiterverfolgt wurden. Eine Nicht-Weiterverfolgung kommt einer impliziten Rücknahme gleich. " (see Art. 12(6)(s.2) RPBA 2020)

EPO T 0074/17 -  link

3. Hauptantrag - Antrag auf Zurückverweisung und wesentliche Verfahrensmängel

3.1 Nach ständiger Rechtsprechung der Beschwerdekammern setzt eine zulässige Beschwerde eine Beschwer der beschwerdeführenden Partei durch die angefochtene Entscheidung voraus, Artikel 107 EPÜ, siehe weiter Rechtsprechung der Beschwerdekammer (RSBK), 9. Auflage, 2019, V.A.2.4.2.a). Dieser Grundsatz gilt für alle Arten von Beschwerden und auch für solche, deren Gegenstand ein wesentlicher Verfahrensmangel des Verfahrens vor der Abteilung ist, deren Entscheidung angefochten wird. Das Vorliegen einer Beschwer ist jedoch auf der Grundlage der der Entscheidung zugrunde liegenden Anträge und der Ergebnisse der Entscheidung zu beurteilen (RSBK V.A.2.4.2.a). Es ist auch ständige Rechtsprechung, dass ein Verfahrensmangel nur dann als wesentlicher anerkannt wird, wenn er in einem kausalen Zusammenhang mit der Entscheidung steht, in dem Sinne, dass das Ergebnis der Entscheidung von dem behaupteten Verfahrensmangel abhängig sein muss (RSBK V.A.9.5.2).