T 0103/15 - Anonymous experimental report

 Key points

• In this opposition appeal, the opponent is a straw man (admitted). 
• “The opposition division decided not to take the test report D9 ("Rapport d'essais") into account, which the opponent (now appellant) had filed in order to demonstrate that the disclosure of the claimed invention in the patent was insufficient and that the subject-matter of claim 1 was not based on an inventive step. Since the name and qualification of the author of the test report were unknown, the test report was not considered to be sufficiently reliable”
• The Board considers that the OD was right in doing so.
• “with respect to the probative value of test evidence, it is important not only to indicate the conditions under which these tests have been conducted, but also to specify the name of the testers and their employers so that the relationship between the testers and the party can be established if necessary. This also applies in cases where the opponent is acting as a straw man on behalf of a company, because then the relationship between that company and the testers could be a factor in the decision on the probative value of the test evidence filed by the straw man.”
• “Generally, a straw man acting as opponent cannot derive any advantage from their position with regard to the evaluation of the evidence they have submitted. In the present case a neutral institute could have been assigned to perform the tests of document D9. This would have allowed the opponent to provide all necessary information for assessing the probative value of the test results without disclosing the identity of the client on behalf of which the opposition was filed.”
  
  
• Regarding Art.117 in general: “he Enlarged Board of Appeal has recalled that proceedings before the EPO are conducted in accordance with the principle of free evaluation of evidence (see [G1/12]). Thus, the departments of the EPO have the power to assess whether the alleged facts are sufficiently established on a case-by-case basis. Under the principle of free evaluation of evidence, each piece of evidence is given an appropriate weighting according to its probative value. The deciding body takes its decision on the basis of all evidence available in the proceedings and in the light of its conviction arrived at freely on the evaluation of the submitted evidence.”
  
  
• Regarding the admissibility of documents filed with the Statement of grounds under Art. 12(4) RPBA 2007:
• “In its communication annexed to the summons to oral proceedings, the opposition division did not give a preliminary opinion on novelty or inventive step. Therefore, there was no specific reason apparent for the appellant to present these documents already during the first-instance opposition proceedings. Moreover, the documents represent the common general knowledge relating to thermosets, gelation and curing ...  Generally, the skilled person's common general knowledge has to be considered when assessing inventive step.”
• Hence the documents are admitted.

T 0103/15 

https://www.epo.org/law-practice/case-law-appeals/recent/t150103eu1.html

Reasons for the Decision

1. Non-consideration of document D9 by the opposition division - right to be heard (Article 113(1) EPC 1973)

1.1 The opposition division decided not to take the test report D9 ("Rapport d'essais") into account, which the opponent (now appellant) had filed in order to demonstrate that the disclosure of the claimed invention in the patent was insufficient and that the subject-matter of claim 1 was not based on an inventive step. Since the name and qualification of the author of the test report were unknown, the test report was not considered to be sufficiently reliable (see contested decision, point 3 of the Reasons).

1.2 Neither in the EPC nor in the case law of the boards of appeal are formal rules laid down for the evaluation of evidence. The Enlarged Board of Appeal has recalled that proceedings before the EPO are conducted in accordance with the principle of free evaluation of evidence (see G 1/12, OJ EPO 2014, A114). Thus, the departments of the EPO have the power to assess whether the alleged facts are sufficiently established on a case-by-case basis. Under the principle of free evaluation of evidence, each piece of evidence is given an appropriate weighting according to its probative value. The deciding body takes its decision on the basis of all evidence available in the proceedings and in the light of its conviction arrived at freely on the evaluation of the submitted evidence.

T 1839/18 - Strawman oppositions revisited

 Key points

• In this opposition appeal, patentee argues that the opposition was filed by a strawman and that the opposition is hence inadmissible. The named opponent is a natural person.
• Patentee's argument is that “at no point had the opponent proven that he had a true interest in the opposition, which however was a condition for any procedural act under the EPC. This position was supported by decision G 1/06 that thereby superseded earlier decisions to the contrary such as G 3/97.” G 3/97 hn.1(a) held that “an opposition is not inadmissible purely because the person named as opponent [...] is acting on behalf of a third party.”*
• G1/06 pertains to the application of Article 76(1) EPC for divisional applications but includes the paragraph: “13.4 The Board accepts that the principle of prohibition of double patenting exists on the basis that an applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter if he already possesses one granted patent therefor.” 
• This paragraph is the subject of referral G4/19 (pending as of 21.04.2021).
• The Board undertakes an extensive review of the case law and also a comparative and historical legal analysis (legal board member Mr. Heath). 
• The Board: “Summarising, the political rationale behind the remedy of opposition to be initiated by any person is the public interest. Already the English Statute of Monopolies 1623/24 has spelt out that patent monopolies are a burden to society. Their grant can only be justified by their technical contribution to society. Any person challenging a patent by way of opposition contributes to society by clearing the register from undeserved monopolies (where the patent is revoked), by reducing monopolies to the scope of their technical contribution (where the patent is limited in scope), or by adding legal certainty (where the patent is maintained unamended). Patents that are granted without meeting the requirements of patentability put in jeopardy the patent system's purpose of fostering industrial development in that competitors wishing to engage in research and development may divert such activities due to such wrongful titles. A further reason is that by opposition proceedings, legal certainty is enhanced.”
• “The Board therefore remains unconvinced that the Enlarged Board's case law on "straw man" oppositions is inconsistent with later decisions, has been superseded or is in contravention of Art. 6 ECHR. Nor is it able to see how such an opposition might put the proprietor at a procedural disadvantage. Finally, labelling an opponent as a "straw man" is misguided, as no interest in raising an opposition is necessary or needs to be proven, and consequently any argument based on an opponent's alleged lack of "real interest" must fail.”
  
  

*) of course hn.1b adds: "Such an opposition is, however, inadmissible if the involvement of the opponent is to be regarded as circumventing the law by abuse of process" with further details given in the decision and in headnote 1(c).

Disclosure: the decision indicates V.O. - the firm where I work - as representative of the opponent.

https://www.epo.org/law-practice/case-law-appeals/recent/t181839eu1.html

Reasons for the Decision

1. The appeals are admissible.

2. Admissibility of the opposition

2.1 The patentee argued that the opposition was not validly filed because the opponent, whom the patentee referred to as a garage owner in Valladolid (Spain), had no interest whatsoever in doing so.

2.2 Of the various arguments advanced by the patentee to question admissibility of the opposition is decision G 1/06 (OJ 2008, 307), namely the following passage:

"13.4 The Board accepts that the principle of prohibition of double patenting exists on the basis that an applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter if he already possesses one granted patent therefor."

The patentee construes this statement as a general acknowledgement that every act performed before the EPO requires a legitimate interest, thereby making previous case law of the Enlarged Board in regard of straw man oppositions obsolete.

T 0998/17 - It raised to prominence, for the first time

Key points

• This is an opposition appeal.  The Board has to decide on the admissibility of a document filed by the opponent with its Statement of grounds.
• “just 1 month before the opposition oral proceedings [i.e. before the opposition division], the proprietor withdrew all its previous auxiliary requests and filed 12 new auxiliary requests. During the oral proceedings, auxiliary request 12 was made the first auxiliary request and is the current main request. 3.3 This request combines granted claims 7 and 10. In so doing, it raised to prominence, for the first time, the feature [X] as an indispensable feature of the invention.”
• The Board: “there are no provisions in the EPC which oblige the opponent to provide evidence against every possible fallback position defined in dependent claims.” [citing T1830/11 hn.]
• “in the Board's view, just as an opponent cannot be expected to know which claim of a set of granted dependent claims might be used to uphold a patent, so too could the opponent in the present case not have known which of the 12 auxiliary requests on file at the start of the opposition oral proceedings might eventually be used to uphold the patent. This only became clear at the oral proceedings. Under these circumstances, the Board considers that filing E11 at the earliest opportunity in appeal was a timely reaction to the impugned decision. In other words, the Board considers E11 to have been filed in due time in the sense of Article 114(2) EPC.
• As a comment, the Board considers document E11 to have been filed "in due time in the sense of Article 114(2) EPC". Still it would have been a case amendment under Art. 12(4) RPBA 2020 (based on the text of Art.12(4)(s.1) RPBA 2020 and therefore a submission that “may be admitted only at the discretion of the Board” (Art. 12(4)(s.2) RPBA 2020). The question may be raised whether Art. 12(4) RPBA 2020 here confers powers on the Boards that the EPC does not give them. 

T 0998/17 -

https://www.epo.org/law-practice/case-law-appeals/recent/t170998eu1.html

3. Admission of document E11

3.1 E11 was filed with the grounds of appeal. It is thus late filed and its admittance is subject to the discretion afforded by Article 12(4) RPBA (2007) with Article 114(2) EPC. E11 is said to have been filed as a response to the amended claims of the main request.

3.2 The Board notes (see impugned decision, facts and submissions, points 6 and 9) that just 1 month before the opposition oral proceedings, the proprietor withdrew all its previous auxiliary requests and filed 12 new auxiliary requests. During the oral proceedings, auxiliary request 12 was made the first auxiliary request and is the current main request.

3.3 This request combines granted claims 7 and 10. In so doing, it raised to prominence, for the first time, the feature of the front metal layer and adhesive layers covering only a part of the scratch-off layer as an indispensable feature of the invention.

According to established jurisprudence (see Case Law of the Boards of Appeal, 9th edition, 2019 (CLBA) V.A.4.11.3.c, in particular T1830/11, headnote and reasons, part 1) there are no provisions in the EPC which oblige the opponent to provide evidence against every possible fallback position defined in dependent claims.

In the present case, it is true that the proprietor filed auxiliary requests 1 to 12 in opposition just within the 1 month time limit defined by Article 116 EPC. The circumstances of the present case are therefore different from T1830/11 where a new request combining dependent claims was filed at oral proceedings.

Nevertheless, in the Board's view, just as an opponent cannot be expected to know which claim of a set of granted dependent claims might be used to uphold a patent, so too could the opponent in the present case not have known which of the 12 auxiliary requests on file at the start of the opposition oral proceedings might eventually be used to uphold the patent. This only became clear at the oral proceedings. Under these circumstances, the Board considers that filing E11 at the earliest opportunity in appeal was a timely reaction to the impugned decision. In other words, the Board considers E11 to have been filed in due time in the sense of Article 114(2) EPC.

3.4 Moreover, the Board considers E11 (see for example abstract, column 4, lines 22 to 26 and figure 5a) to be prima facie relevant to claim 1, since it discloses scratch-off labels where a front security element 6 is adhesively attached to the scratch off layer 5 and extends only partly over the scratch off layer.

3.5 For these reasons, the Board decided to exercise its discretion under Article 12(4) RPBA with Article 114(2) EPC by admitting document E11 into the proceedings.

4. Main request, claim 6, inventive step starting from E1 with E

T 2730/16 - Losing inventive step attack

 Key points

• This case provides a stern warning in my view regarding the admissibility of inventive step attacks in opposition appeal, and in particular the risk of losing inventive step attacks in the course of the first instance opposition proceedings in cases wherein the opposition division aims for first selecting one (and only one) closest prior art document and then discussing inventive step.
• “During the written opposition proceedings, the appellant [opponent] initially argued on the basis of D1, D2 or D3 as the closest prior art. [The] opposition division took the preliminary view that D2 could not constitute the closest prior art. In its subsequent letter in response to the summons, the [opponent] put forward inventive-step objections based on D1 and D3 only. Then, at the oral proceedings before the opposition division, the appellant agreed to D1 being the closest prior art - see minutes page 2 - and apparently did not put forward inventive-step objections based on D2 or D3. Consequently, the decision under appeal [] only discusses the objection based on D1, but not those based on D2 or D3.”
• “The course of the proceedings described above shows that the appellant did not actively maintain its objection based on D2 as the closest prior art during the oral proceedings before the opposition division and that it did indeed abandon it, thereby preventing it from being discussed in the decision under appeal. However, in its statement of grounds of appeal, the appellant again put forward an objection based on D2 as the closest prior art.”
• The inventive step attack based on D2 is not admitted under Art.12(4) RPBA 2007. 
• I doubt if Art.12(4) RPBA 2007 provides legal basis for doing so but Art. 12(4) RPBA 2020 seems to support such an approach.
• In appeal, the opponent/appellant argued " that it had not actively withdrawn or abandoned the inventive-step attack starting from D2 as the closest prior art in the opposition proceedings".
• The  Board: “ It may be that the appellant had not withdrawn its inventive-step objection based on D2 verbatim during the opposition proceedings; however, as explained above, the course of the opposition proceedings and the decision under appeal show that such a withdrawal had occurred (at least) implicitly. In this connection, it is also noted that the appellant did not at any time request a correction of the minutes, nor did it claim that the decision under appeal was erroneous in that it did not deal with the appellant's objection based on D2.”
• I note that the Chair was M. O. Müller.

Crystalline forms

• “The subject-matter of claim 1, i.e. the SC-3 form, differs from amorphous dapagliflozin [of D1] in that it is a crystalline form further comprising (S)-PG and water.”
• “it has to be concluded that the SC-3 form has a higher stability, i.e. a lower hygroscopicity, than amorphous dapagliflozin.”
• The Board finds the crystalline form to be inventive. In particular D4 would not make the solution obvious. “ the skilled person would have considered the effect suggested by D4, namely the universal decrease in hygroscopicity, to be a mere allegation. Given the generally recognised high unpredictability of solvate properties (see above), the skilled person would not have had a reasonable expectation of obtaining a less hygroscopic form of dapagliflozin.”

T 2730/16

https://www.epo.org/law-practice/case-law-appeals/recent/t162730eu1.html

4. Closest prior art

4.1 The appellant considered both D1 and D2 to be suitable as the closest prior art.

4.2 D2 as the closest prior art

During the written opposition proceedings, the appellant initially argued on the basis of D1, D2 or D3 as the closest prior art. In the annex to the summons to oral proceedings (page 11, penultimate paragraph), the opposition division took the preliminary view that D2 could not constitute the closest prior art. In its subsequent letter in response to the summons, the appellant put forward inventive-step objections based on D1 and D3 only. Then, at the oral proceedings before the opposition division, the appellant agreed to D1 being the closest prior art - see minutes page 2 - and apparently did not put forward inventive-step objections based on D2 or D3. Consequently, the decision under appeal (page 11 f., point 4) only discusses the objection based on D1, but not those based on D2 or D3.

The course of the proceedings described above shows that the appellant did not actively maintain its objection based on D2 as the closest prior art during the oral proceedings before the opposition division and that it did indeed abandon it, thereby preventing it from being discussed in the decision under appeal. However, in its statement of grounds of appeal, the appellant again put forward an objection based on D2 as the closest prior art.

In its communication pursuant to Article 15(1) RPBA 2020 the board expressed its preliminary view that this objection should not be admitted into the appeal proceedings pursuant to Article 25(2) RPBA 2020 in conjunction with Article 12(4) RPBA 2007 because, inter alia, the appeal proceedings were judicial in nature, meaning that the decision of a board of appeal should in principle be based on the substance of the dispute before the department of first instance; see T 724/08 (point 3 of the Reasons) and Article 25(1) RPBA 2020 in conjunction with Article 12(2) RPBA 2020.

T 1338/18 - The discovery of the magnitude of an effect

 Key points

• This opposition case is about a second non-medical use. Claim 1 is directed to, in translation: " Use of expanded graphite [having certain features such as density and particle size] in order to confer, on the composition which it forms with a thermoplastic polymer, superior thermal conductivity properties, comparable electrical conductivity properties and an improved fluidity, with respect to those obtained with the use of carbon nanotubes".
• Prior art document A11 describes adding the same expanded graphite to a thermoplastic polymer and also teaches that this results in good thermal and electric conductivity, and also loss of fluidity, but compared to the thermoplastic polymer alone. A11 does not include a comparison of these properties with a reference product comprising thermoplastic polymer and carbon nanotubes. 
• Claim 1 at issue specifies " improved fluidity, with respect to those obtained with the use of carbon nanotubes", i.e. the product comprising the polymer and expanded graphite (instead of carbon nanotubes) has improved fluidity compared to carbon nanotubes. I understand that improved fluidity means higher fluidity. So claim 1 appears to specify that the expanded graphite causes a small decrease of fluidity, upon addition to the polymer than carbon nanotubes. 
• The Board has to decide whether this is a valid use feature under G2/88.
• The Board reviews G2/88 and T231/85 and T59/87 as being illustrative.
• The Board notes that in the present case, the use feature does not specify a new use of the expanded graphite, as was not contested by the patentee, but only the improvement in certain effects.
• The Board, in translation (r.3.4): “However, there is nothing in decisions G 2/88 and G 6/88 to indicate that the discovery of the magnitude of an effect occurring during the use of a prior art product, when such effect was already known to be exerted by the said product, justifies that this magnitude, even compared to that obtained with another product which was known to have the same effect, can in itself serve as a basis for a technical characteristic of a functional nature.”.
  
  
• Please check the original French text of the decision carefully before citing this decision. The above summary is provisional. 

T 1338/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t181338fu1.html

(decision text omitted)

T 1399/17 - Adapting the description

Key points

• In this opposition appeal, “The parties disagreed as to whether the patent specification had been correctly adapted to reflect the added mandatory feature of claim 1. The respondent [patentee] argued that it considered the adaptation of the description appropriate. The term "natural fat" neither excluded modified triglyceride molecules nor was relevant for the patentability of the claims.”
• The Board: “This is not convincing. Article 84 EPC requires that the claims be supported by the description. This also applies to claims which have been amended in opposition (Article 101(3)(a) EPC). A mandatory feature of claim 1 is that the dietary fat be a blend of natural fats. However, the specification of the patent as amended in the oral proceedings does not reflect this. Therefore, it casts doubts on the scope of the claim.”
• “On the basis of this alone, it is manifest that the description of the patent does not comply with the requirement of Article 84 EPC. Consequently, the main request is not allowable.”

T 1399/17 -

epo.org/law-practice/case-law-appeals/recent/t171399eu1.html

2. Main request - adaptation of the description

2.1 Claim 1 includes the feature, added from a dependent claim as granted, that the "dietary fat is a blend of natural fats". The parties disagreed as to whether the patent specification had been correctly adapted to reflect the added mandatory feature of claim 1. The respondent argued that it considered the adaptation of the description appropriate. The term "natural fat" neither excluded modified triglyceride molecules nor was relevant for the patentability of the claims.

2.2 This is not convincing. Article 84 EPC requires that the claims be supported by the description. This also applies to claims which have been amended in opposition (Article 101(3)(a) EPC). A mandatory feature of claim 1 is that the dietary fat be a blend of natural fats. However, the specification of the patent as amended in the oral proceedings does not reflect this. Therefore, it casts doubts on the scope of the claim. The following non-exhaustive examples are given:

- According to paragraph [0014], last sentence, it is not a mandatory feature but only a desirable one:"Desirably the balance of fatty acids is achieved using a blend of natural fats...".

- In paragraph [0040], it is still stated that

"[p]referably" the dietary fat composition is a blend of natural fats. The entire paragraph and in particular the second sentence, in which it is discussed that the dietary fat composition "is... a structurally modified triglyceride-based dietary fat composition", does not support claim 1.

- In paragraph [0125], it is stated that interesterified fats "may still be used in the present invention". It would be straightforward for the skilled person that interesterified fats are not natural fats. This is confirmed in paragraph [0191] of the patent in suit ("The terms 'natural fat' and 'natural oil' ... does not contain a significant level of triglyceride molecules which have been artificially structurally modified (e.g., by chemical or enzymatic interesterification)...") and also in D11-N (e.g. page 110, left column, third paragraph).

- The section of the patent in suit entitled "Examples" and beginning before paragraph [0208] suggests that interesterified fats are part of the invention.

2.3 On the basis of this alone, it is manifest that the description of the patent does not comply with the requirement of Article 84 EPC. Consequently, the main request is not allowable.

T 1991/17 - By inducing osteogenesis

 Key points

• This is an opposition appeal: “The opposition division came to the conclusion that the main request fulfilled the requirements of the EPC. The opponent filed an appeal. ”
• “There was [] disagreement between the parties on whether the term "by inducing osteogenesis" was suitable for establishing novelty over document (11). A closer look is thus necessary.”
• In the present case, the respondent [patentee] has relied on two aspects that would constitute such specific use [in the sense of G2/08] : 1) the term "by inducing osteogenesis" as a technical effect and 2) the sub-group of patients to be treated, distinguished on the basis of this technical effect.
• Claim 1 is directed to “A compound for use in the treatment or prevention of bone metabolic diseases associated with osteopenia by inducing osteogenesis, [wherein the compound is selected from the group consisting of ...]”
• The Board, after an extensive analysis: “To sum up, the technical effect of inducing osteogenesis is closely and inseparably linked to the known effects of the compound under consideration. In consequence, the terms "by inducing osteogenesis" cannot define the inherent presence of a new (sub) group of patients. Such a group of patients is also not explicitly mentioned in claim 1 [at issue]. Therefore, the technical effect of inducing osteogenesis is not suitable for establishing a new specific use in the treatment of osteopenia. In view of the above, the board concludes that the subject-matter of claim 1 of auxiliary request 1 relates to the same compound for use in the same treatment of the same condition as document (11). The subject-matter of claim 1 of auxiliary request 1 lacks novelty (Article 54 EPC).”
• In more detail: “In conclusion, the board considers that the patent in suit provides information on a new mechanism of action of peptide D, one of the claimed compounds. This mechanism of action is closely and inseparably linked to the known activity of peptide D of inhibiting bone resorption. No evidence of complete uncoupling of these two activities has been shown. The claimed use cannot be distinguished from the known use of peptide D. The technical effect of inducing osteogenesis is therefore not apt to constitute a new specific use in the sense [of G2/08] ”
• As to the admissibility of AR-2 filed during the oral proceedings before the Board after the Board had announced its conclusion on AR-1: “The fact that claim 1 of auxiliary request 2 differs from claim 1 of auxiliary request 1 merely in the deletion of features does not change the situation. The patent proprietor is the party that is solely responsible for determining the text of the patent (see Article 113(2) EPC). It is obliged to submit amendments or possible fall-back positions. For reasons of procedural economy and fairness to the other party this must be done at the earliest possible opportunity. The nature of the amendments is not decisive for the application of Article 13(2) RPBA.”
  
  

https://www.epo.org/law-practice/case-law-appeals/recent/t171991eu1.html

T 1991/17 -

Reasons for the Decision

1. The appeal is admissible.

2. Admission of documents (31) to (34)

Documents (31) to (34) have been admitted into the proceedings. In view of the outcome of the proceedings, it is not necessary to provide reasons for their admission.

3. Main request - sufficiency of disclosure

3.1 Claim 1 of the main request defines compounds for use in a method referred to in Article 53(c) EPC. The definition of the compounds falling under (i) relies on a functional and a structural part.

3.2 The functional part requires that any of these compounds "acts on osteoblasts or cells capable of differentiating into osteoblasts and promotes differentiation, proliferation, maturation, or calcification of osteoblasts or cells capable of differentiating into osteoblasts".

The application as filed contains information on how to determine whether the conditions required by the functional part of the definition of the compounds are fulfilled. In paragraph [0044] (of the A publication) the increase in the alkaline phosphatase activity of the cells and the degree of calcification of the cells is mentioned. Protocols for in vitro tests for these two methods can be found in Examples 1 and 2.

3.3 The structural part includes references to precise structures (peptidic structure known as RANK (or fragment thereof)), compounds comprising certain amino acid sequences (SEQ ID NO: 7 or SEQ ID NO: 16), certain functionally defined structures (antibody or functional fragment thereof having a certain specificity), but also includes compounds of which the structure is merely related to a known structure in an unspecific way, i.e. "a variant of RANK".