T 2028/16 - New evidence prior use in appeal

Key points

• The Board admits new evidentiary documents which support the public prior use that was already asserted before the OD which were filed with the Statement of grounds. The reason is that the OD had found, after a witness hearing, that the devices at issue were delivered to the armies of Netherlands and Italy (without secrecy agreement, according to the OD) before the priority date, but that it was not proved that these devices exhibited a specific feature.
• The filing of the new documents "ist somit bei der nächstmöglichen Gelegenheit erfolgt und ist auch inhaltlich als sachdienliche Reaktion auf die Schlussfolgerung" of the OD.
• The documents are furthermore prima facie highly relevant to show that the prior use devices exhibited the feature at issue.
• Moreover, the new documents do not involve a new case. “Durch das Einreichen dieser Beweismittel entsteht kein sachlich bzw. patentrechtlich gänzlich neuer Streitgegenstand, sondern es werden lediglich weitere Beweismittel für die Behauptung vorgelegt, dass 1998 und 1999 Periskope PERI-RTNL-80 mit zugehörigen Absenkvorrichtungen an die deutsche Bundeswehr geliefert worden seien, wie die Beschwerdeführerin und die Zeugen im erstinstanzlichen Verfahren behauptet haben.”
  
  
• The Board does no doubt that the weapon system at issue was delivered to the armies without secrecy agreement. However, this does not amount to a public prior use, according to the Board (contrary to the OD), because military weapon systems are typically not accessible to the general public.
• “Die Auslieferung der Panzerhaubitzen mit dem Periskop PERI-RTNL-80 und der zugehöriger Absenkvorrichtung ohne Vereinbarung einer Geheimhaltungspflicht führt für sich genommen noch nicht zur Offenkundigkeit. Die Annahme einer offenkundigen Vorbenutzung durch die Auslieferung setzt vielmehr eine hinreichende Wahrscheinlichkeit voraus, dass beliebige Dritte und damit auch Fachkundige das Periskop der Panzerhaubitzen untersuchen und dadurch Kenntnis von den konstruktiven Merkmalen der dort eingesetzten Optikaufnahme erhalten konnten. Nach der Lebenserfahrung sind Waffensysteme wie Panzerhaubitzen der Öffentlichkeit nicht zugänglich und werden auch zur Wahrung von militärischen Geheimhaltungsinteressen seitens des Militärs nicht öffentlich gemacht (siehe ebenso z. B. T 1069/15”).
• The Board finds that soldiers have a secrecy obligation and the weapon system was not accessible to the public. So the delivery to the army was not a public prior use.
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T 2028/16 - link

decision text omitted.

T 0232/14 - Storing ranges in database

 Key points

• This is an appeal about the refusal of a patent application directed to "method for identifying manufactured items in containers". The appeal was filed in 2014, decision 06.10.2020. The decision is given publication code [B]. The claimed method boils down to collecting items each having a unique item number in a container, wherein the container has a container number, and storing in a database the item numbers collected in each container. The distinguishing feature is that ranges of item numbers contained in each container are determined and stored in the database.
• “The invention relates to the identification of specially taxed or branded manufactured items (also called units or cartons, e.g. cigarette cartons), packaged into containers (also called cases). Identification allows products to be authenticated as genuine, tracked and traced, which helps to detect contraband and counterfeit products”. 
• “Conventional identification systems stored an individual record of the identifier for each item in the container together with its associated container identifier (see Table 1). This required a large amount of data storage. The invention essentially replaces the individual records with ones representing any contiguous ranges of identifiers for items packed in a container. Since items are generally packed as they are produced, there are fewer ranges than items and thus fewer records in the database.”

• The Board: “Even if the "determining of ranges of unit identifiers" achieved a technical effect, such as reducing data storage and data bandwidth requirements, it is a matter of routine design for the skilled person, a software programmer or a database expert, based on common general knowledge to store the first and the last element of a list of items, instead of the whole list.”
• However, the Board first judges that the “using ranges of unit identifiers to label a number of (consecutive) unit identifiers of manufactured items is, at the level of generality at which it is claimed, on the business side of the line between technical and non-technical subject-matter”

EPO Headnote


The Board judges that using ranges of unit identifiers to label a number of (consecutive) unit identifiers of manufactured items is, at the level of generality at which it is claimed, on the business side of the line between technical and non-technical subject-matter (see e.g. T 144/11 - Security rating System / SATO MICHIHIRO, points 2.1, and 3.6 to 3.9).(See point 2.5 of the reasons)

The ranges of unit identifiers do have a meaning for the business person. They correspond to batches of units produced on a production line. (See point 2.6 of the reasons)

Even if the "determining of ranges of unit identifiers" achieved a technical effect, such as reducing data storage and data bandwidth requirements, it is a matter of routine design for the skilled person, a software programmer or a database expert, based on common general knowledge to store the first and the last element of a list of items, instead of the whole list. (See point 2.9 of the reasons)

T 0232/14 -  link

decision text omitted.

T 2049/16 - Review of decision to admit

 Key points

• D2 was filed by the opponent one month before the oral proceedings before the OD and admitted then. Patentee argues that the OD should not have admitted the document because its late filing constituted a tactical abuse of proceedings.
• “The board is not convinced that the opponent's (now: respondent's) behaviour can be deemed an abuse of proceedings. As undesirable as it may be, the filing of additional, allegedly relevant prior art one month before oral proceedings is not uncommon, not least because this is a commonly set time limit for filing written submissions and because parties often start preparing for oral proceedings shortly before that time limit.”
• “The board is not aware of any explicit legal basis that would make it possible to retroactively exclude evidence that has been admitted into the proceedings and decided upon by the department of first instance. In this respect, the board shares the opinion expressed in decision T 617/16”
• See this post here with comments of readers.
• “However, it could be argued that the opposition division's decision to admit document D20 is part of the decision under appeal and as such is part of the appeal under Article 12(2) RPBA 2020 and open to review.”
• “It is doubtful whether the Enlarged Board's statement [ in G7/93 about the Board overruling discretionary decisions of the first instance proceedings] provides a sufficient basis for the possibility, let alone the obligation, for a board to review an opposition division's discretionary decision to admit a late-filed piece of prior art it considered relevant.”
• “The assertion that the late filing of document D20 was an intentional abuse of proceedings does not lead to a different conclusion. This assertion is a mere allegation: as already mentioned above, the board cannot see any clear evidence for an abuse of proceedings. And even if there had been an abuse of proceedings, it is highly questionable, especially in view of Article 114(1) EPC, that the opposition division, after having found the document to be prima facie relevant, should have simply ignored the document and maintained a patent which it considered to be prima facie invalid. There are other, better ways to deal with such a situation, such as the postponement of oral proceedings and a decision on apportionment of costs under Rule 88(1) EPC.”
• Practice point: if you need more time as patentee, request a postponement and if appropriate a cost apportionment. 
• “In summary, the board is of the opinion that document D20 cannot be disregarded in the appeal proceedings. As a consequence, the board has dealt with the novelty objection based on this document”
  
  
• As to whether to admit documents filed by the Rule 116 date: “ the need to avoid the maintenance of European patents which are invalid justifies, in first-instance proceedings, the admittance of documents that, in the opposition division's view, are prima facie relevant.”
  
  
• Note 19.02.2021: see also T 1348/16 where the Board decided the OD's decision to admit D13 filed during the oral proceedings.
  

• EPO T 2049/16 -  link

3. Exclusion of document D20

Document D20 was filed by the opponent (now:

respondent) in a letter received at the EPO on 6 May 2016, i.e. one month before the oral proceedings before the opposition division, which took place on 7 June 2016.

T 0398/19 - Open-ended parameter features

 Key points

• Claim 1 is directed to a porous material specified inter alia by having a specific surface area of 40 m2/g. A high specific surface area is a desirable property for the material at issue. Clearly, the patent does not give examples over the entire open-ended range. The open-ended range includes by definition compositions that are currently impossible to prepare.
• The opponent refers to  T 1697/12 and T 0113/19 and the German decisions X ZR 32/17 and X ZR 34/17.
• The Board notes that the patentee declared in writing that the patent is limited to compositions having a specific surface area in the same order of magnitude as illustrated in the patent and as can be achieved using the steps of the method claim of the patent. 
• The Board, in translation from French: “For the Board, it is therefore clear that specific surface area [] values very far from the values specifically disclosed do not form part of the claimed invention; this is therefore well limited to the contribution of the disclosure of the invention compared to the existing state of the art.”
• The Board, “The Board is further of the opinion that the present case does not concern a new preparation of a known composition but a new class of mixed oxides characterized by a new combination of parameters having structural implications. Consequently, it can no longer follow the conclusions of decisions X ZR 32/17 ([headnote 1a and 1b]) and X ZR 34/17 (paragraphs 29 and 30 of the reasons) of the Federal Court of Justice of Germany.” 
• The reference for  X ZR 32/17 is to the headnote about sufficiency of that decision.  (link)
• The Board indicates that they follow T 0113/19 (point 2.1 i), T 1018/05 (point 2.3), T 1697/12 (point 5.5.5),  T 0624/08 (point 3.2.2) and consider that T 1697/12 concerns a different case. 4

T 0398/19 -  https://www.epo.org/law-practice/case-law-appeals/recent/t190398fu1.html

decision text omitted

T 0693/17 - No attacks admitted

 Key points

• The opponent appeals. Board 3.2.07 decides not to admit any of the objections based on Art.12(4) RPBA 2007.
• As a comment, Art. 12(4) RPBA 2007 refers to  "the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings" and does not refer to 'objections'.
• The opponent raises an Art. 123(2) objection in the Statement of grounds. The Board: “This objection is not dealt with in the appealed decision ... The appellant [opponent]  acknowledged at the appeal oral proceedings that the above objection was not explicitly raised at the oral proceedings in opposition. ... The Board notes that it is the party's responsibility to present their case and to submit promptly all their objections. ”
• “The Board concludes therefore that the above objection of added subject-matter could and should have been maintained during the oral proceedings in opposition and therefore exercises its discretion pursuant to Article 12(4) RPBA 2007 by not admitting this objection into the appeal proceedings.”
• The Board also does not admit the novelty attack based on D1. The opponent had only contested novelty over D3 for the request at issue during the oral proceedings before the OD. The Board: “The Board cannot follow the argument of the appellant, that the present objection should be admitted into the proceedings because the lack of novelty in view of D1 was not pursued at the oral proceedings in opposition only for reasons of procedural economy, since the opposition division considered D1 not to deprive novelty of the subject-matter of claim 1 according to the initial main request. ... The Board notes that the fact that the decision does not deal with D1 is solely the consequence of the appellant's own procedural strategy. Had the appellant raised the objection at the oral proceedings, the opposition division would necessarily have dealt with it in the decision under appeal.
• The Board also does not admit the inventive step attack because: “The Board notes that the technical problem identified by the appellant in opposition proceedings was a different one, ” So the same combination of documents (D1+D3) was used for the inventive step attack before the OD.
• “The inventive step attacks starting from D3 submitted in the appeal proceedings differ therefore substantially from the inventive step argumentation brought forward in opposition proceedings. No reason why these new lines of argument are presented for the first time in appeal proceedings has been indicated by the appellant, nor is it apparent to the Board.”
• So even 'new lines of arguments' in the Statement of ground can be held inadmissible under Art. 12(4) RPBA 2007, according to this Board.

 
• Finally, “the Board notes that, since none of the objections and lines of argument of the appellant are admitted into the proceedings, as also acknowledged by the appellant at the oral proceedings before the Board, there are no admissible reasons for allowing the appeal or for remitting the case to the opposition division.”

EPO T 0693/17  - https://www.epo.org/law-practice/case-law-appeals/recent/t170693eu1.html

(decision text omitted)

T 0492/16 - Not mentioning Art. 11 RPBA

 Key points

• This is an examination appeal. “Lack of novelty over the disclosure in document D1 was the sole reason given in the decision under appeal for not allowing the main request. The board has reviewed this finding. The examining division has not taken an appealable decision on any other patentability requirement with respect to the set of claims of the main request. ”
• This is of course nothing unusual. Nevertheless the Board remits the case to the Examining Division. The Board does not expressly identify any 'special reasons' for remitting as specified by Art. 11 RPBA 2020. In the decision, the Board directly refers to Art. 111(1) EPC as giving the Board a discretion to remit without any mention of Art. 11 RPBA 2020. 
• The applicant had requested the remittal, so that could be the special reason for remitting.

https://www.epo.org/law-practice/case-law-appeals/recent/t160492eu1.html 

Remittal - Article 111(1) EPC

14. Pursuant to Article 111(1) EPC, following the examination as to the allowability of the appeal, the board will decide on the appeal and, in this respect, it may either exercise any power within the competence of the department which was responsible for the decision under appeal or remit the case to that department for further prosecution.

15. Lack of novelty over the disclosure in document D1 was the sole reason given in the decision under appeal for not allowing the main request. The board has reviewed this finding. The examining division has not taken an appealable decision on any other patentability requirement with respect to the set of claims of the main request. Accordingly, in line with the appellant's request, the board decides to remit the case to the examining division for further prosecution.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division for further prosecution on the basis of the set of claims of the main request filed with the appellant's letter dated 7 October 2019.

T 1861/17 - The subjective problem

Key points

• The present Board emphasizes that the objective technical problem can only be formulated on the basis of the distinguishing features in view of the closest prior art / suitable starting point document. 
• The Board thereby departs from e.g. T 0606/99 which had held that "Dabei ist zunächst von der im Streitpatent formulierten Aufgabe auszugehen. Erst wenn festgestellt wird, daß die dort gestellte Aufgabe nicht gelöst ist, muß untersucht werden welche andere Aufgabe objektiv bestand (siehe z. B. T 246/91 oder T 495/91)."
• The present Board: “ sollte die Formulierung dieser "objektiven Aufgabe" nach Auffassung der Kammer regelmäßig erst nach Festlegen des nächstliegenden Stands der Technik erfolgen”.
• As a comment, historically indeed the objective technical problem is 'reformulated' but in my view it needs to be formulated only once, namely on the basis of the distinguishing features and the technical effects that are made plausible and derivable for said features in the application as filed (see T 1/80, hn.II, the very first decision of the Technical Boards of Appeal, cf. Szabo 1986). T1/80 concerned a case wherein the applicant made a technical effect credible in appeal by filing comparative results. 

T 1861/17 - https://www.epo.org/law-practice/case-law-appeals/recent/t171861du1.html 

3.4 Obwohl in der Rechtsprechung bisweilen bei der Ermittlung der objektiven technischen Aufgabe zunächst grundsätzlich von der im Patent genannten Aufgabe ("subjektive Aufgabe") ausgegangen wird (siehe z.B. T 246/91, Gründe 4.4; T 495/91, Gründe 4.2; T 606/99, Gründe 5.3.1 und die nachfolgenden Entscheidungen, die sich darauf berufen), sollte die Formulierung dieser "objektiven Aufgabe" nach Auffassung der Kammer regelmäßig erst nach Festlegen des nächstliegenden Stands der Technik erfolgen. Nur auf der Basis der Unterscheidungsmerkmale im Vergleich zum nächstliegenden Stand der Technik (geeigneten Ausgangspunkt) kann ja nach dem etablierten Aufgabe-Lösungs-Ansatz überhaupt die objektive technische Aufgabe bestimmt werden (siehe z.B. R 9/14, Gründe, 2.1.1). Die Patentschrift kann aber logischerweise nicht vorab vom später zu ermittelnden, tatsächlichen nächstliegenden Stand der Technik ausgegangen sein.