T 2255/15 - Admissibility of third party observations

 Key points

• In this opposition appeal, third party observations were filed, first anonymously, later signed by a ‘real industry company’. The Board has to decide on the admissibility of these observations.
• The Board: “ The board observes that in accordance with the case law of the boards, observations by third parties pursuant to Article 115 EPC can also be filed during an appeal proceedings (T 390/90, G 9/91, OJ 1993, 408, T 1756/11). This interpretation is consistent with the wording of Article 115 EPC, which sets no time limit in this respect (T 390/90, OJ 1994, 808). However, in accordance with the case law, Article 115 EPC must not be interpreted in such a way as to grant third parties rights which extend beyond those of the parties to proceedings (T 951/91, OJ 1995, 202; see also Schachenmann, Article 115 EPC, in Singer-Stauder, The European Patent Convention, Vol 2, 3rd ed.). Since Article 114(2) EPC confers to the bodies of the EPO the discretionary power to disregard submissions not filed in due time, this provision must also apply to observations by third parties.”
• The Board:“ Since the Rules of Procedures of the Boards of Appeals specify some criteria for exercising this discretion in appeal proceedings with respect to the submissions of the parties to the proceedings, in the board's view, these criteria must also apply to third-party observations. Hence, the criteria laid down in Article 12(2) RPBA 2020 and 12(4) RPBA 2007 are to be taken into consideration in deciding whether and to what extent the submissions at issue must be considered.”
• As a comment, I agree that TPO's should not be treated more favourably than party submissions. This does not mean automatically that TPO's should be treated equally to party submissions in opposition and opposition appeal proceedings in my view. 
  
  
• The opponent requested a remittal. The  Board does not remit the case. “The attack starting from D4 as the closest prior art was filed for the first time during the oral proceedings before the board and thus is an entirely new attack. If by filing such a new attack, a party could force the board to remit the case, it would be at the party's disposition to shift the case back to the first instance at whatever stage of the appeal proceedings and to thereby start, at any point in the appeal proceedings, a new opposition before the opposition division. This would not only run counter to the principle of procedural economy but to the very nature of appeal proceedings, which is to review the appealed decision (Article 12(2) RPBA 2020) rather than to allow for the start of a second opposition proceedings.”
• The Board does not admit the new attack. “Document D4 was discussed in the appeal proceedings in the context of novelty of the granted claims. It was also discussed in the assessment of inventive step of the claims of auxiliary request 7 but for establishing the obviousness of the solution to the problem formulated in view of D1 or D2 rather than D4 as the closest prior art.”

T 2255/15 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t152255eu1.html

1.5 The board observes that in accordance with the case law of the boards, observations by third parties pursuant to Article 115 EPC can also be filed during an appeal proceedings (T 390/90, G 9/91, OJ 1993, 408, T 1756/11). This interpretation is consistent with the wording of Article 115 EPC, which sets no time limit in this respect (T 390/90, OJ 1994, 808). However, in accordance with the case law, Article 115 EPC must not be interpreted in such a way as to grant third parties rights which extend beyond those of the parties to proceedings (T 951/91, OJ 1995, 202; see also Schachenmann, Article 115 EPC, in Singer-Stauder, The European Patent Convention, Vol 2, 3rd ed.). Since Article 114(2) EPC confers to the bodies of the EPO the discretionary power to disregard submissions not filed in due time, this provision must also apply to observations by third parties. Since the Rules of Procedures of the Boards of Appeals specify some criteria for exercising this discretion in appeal proceedings with respect to the submissions of the parties to the proceedings, in the board's view, these criteria must also apply to third-party observations. Hence, the criteria laid down in Article 12(2) RPBA 2020 and 12(4) RPBA 2007 are to be taken into consideration in deciding whether and to what extent the submissions at issue must be considered.

As set out above, the following objections were raised in the third-party observations:

- lack of novelty of the subject-matter of claims 1 and 4 as granted in view of A006 and D3a

- lack of novelty of the subject-matter of claim 1 of claim set D over A012

- lack of inventive step of the subject-matter of claims 2 and 6 as granted and the claims of all claim sets submitted by the patent proprietor over A006 in combination with A007

- lack of inventive step of the subject-matter of claims 1 and 4 as granted and claim 1 of claim sets A' to F' over A014 as the closest prior art in combination with A015

- lack of inventive step of the subject-matter of claim 1 as granted and claim 1 of claim sets A' to C' over D3a

None of these objections had been raised before in the opposition or appeal proceedings. Document A006 is a document discussed in the context of novelty of the granted claims. It is also discussed, in combination with annexes 1-2, in the context of inventive step of the claims of auxiliary request 7 (claim set D). Annexes 1 and 2 were filed to show activity of compositions according to the invention and compositions not according to the invention. The submission of A006 and annexes 1-2 does not constitute a direct and timely response to facts, objections, arguments or evidence on which the decision under appeal is based. The third-party observations of 15 February 2016 do not provide any argument why the impugned decision would not be correct and which would justify the submission of A006 and annexes 1-2. The same reasoning applies with regard to the attack of lack of inventive step over A006 in combination with A007; A014 and the attack of lack of inventive step based on this document as the closest prior art; the attack of lack of novelty based on D3a; and the attack of lack of novelty based on document A012.

T 2443/18 - (II) The CPA

Key points

•  In this opposition appeal, inventive step had to be decided for a second medical use claim. I focus on the discussion of the choice of the closest prior art. The patentee argued that “Document D3[] had the same object as the patent in suit [] For this reason, D3 was the closest prior art. It was also the only suitable starting point for the assessment of inventive step. In contrast, document D4 was inappropriate as a starting point.”
• The Board: “ If there were several workable routes, starting from different prior-art documents, which might have led the skilled person to the claimed subject-matter, the rationale of the problem-and-solution approach developed in the Boards' case law requires that all these possible routes be assessed before an inventive step can be acknowledged. Conversely, it is sufficient for denying inventive step if the claimed subject-matter lacks an inventive step in respect of one of the possible starting points [].”
• “It may happen that a piece of prior art is so remote from the claimed invention, in terms of intended purpose or technical features, that it can be argued in a prima facie assessment that the skilled person would not realistically have chosen it as a starting point and could not conceivably have modified it so as to arrive at the claimed invention. Such prior art might be referred to as "unsuitable". (Nonetheless, this would in principle not prohibit its consideration as a starting point in the problem-and-solution approach, which may in such a case be expected to result in a finding of non-obviousness.)”
• “If inventive step is to be denied, the choice of starting point needs no specific justification (see T967/97, Catchword II).”
  
  

T 2443/18

https://www.epo.org/law-practice/case-law-appeals/recent/t182443eu1.html

 If there were several workable routes, starting from different prior-art documents, which might have led the skilled person to the claimed subject-matter, the rationale of the problem-and-solution approach developed in the Boards' case law requires that all these possible routes be assessed before an inventive step can be acknowledged. Conversely, it is sufficient for denying inventive step if the claimed subject-matter lacks an inventive step in respect of one of the possible starting points (see T 967/97, Catchwords; T 1742/12, Reasons 6.6; Case Law of the Boards of Appeal of the European Patent Office, 9th edition 2019, I.D.3.1).

2.7 A promising starting point is typically a prior-art document that discloses subject-matter conceived for the same purpose or aiming at the same objective as the claimed invention and has the most relevant technical features in common. A further criterion is the similarity of the technical problem to be solved.

2.8 It may happen that a piece of prior art is so remote from the claimed invention, in terms of intended purpose or technical features, that it can be argued in a prima facie assessment that the skilled person would not realistically have chosen it as a starting point and could not conceivably have modified it so as to arrive at the claimed invention. Such prior art might be referred to as "unsuitable". (Nonetheless, this would in principle not prohibit its consideration as a starting point in the problem-and-solution approach, which may in such a case be expected to result in a finding of non-obviousness.)

T 2443/18 - (I) Drug development

Key points

• In this opposition appeal, claim 1 is directed to tapentadol for use in the treatment of irritable bowel syndrome. The starting point for inventive step is D4 which relates to tapentadol and its confirmed efficacy in animal models of visceral pain. “While D4 does not specifically refer to IBS, visceral pain is a typical manifestation of IBS, the therapeutic indication named in claim 1 of the patent in suit.”
• The patentee argued that “a drug developer would typically seek to provide a suitable drug for a given medical indication rather than investigate further medical indications for a given drug. As the objective technical problem formulated [by the Board] did not reflect reality document D4 could not be considered an eligible starting point for the assessment of inventive step. Moreover, this technical problem did not correspond to the problem stated in the patent in suit”
• The Board is not convinced. “In fact, either approach may be taken by a person skilled in the art, depending on the stages reached in the development and life of a drug compound and the rationale for its development. After the initial stage of drug discovery, the suitability of the drug for different therapeutic uses may conceivably be explored.”
• I.e, a person skilled in the art may either “seek to provide a suitable drug for a given medical indication” or “investigate further medical indications for a given drug”, “depending on the stages reached in the development and life of a drug compound” (and presumably this is a non-exclusive OR). 
• I think this conclusion of the Board could be quite important in the pharma field.
• “The objective technical problem as established starting from the teaching of D4 is thus realistic: It reflects the task the skilled person would have faced after the initial development of tapentadol.”
• “there would have been no hindsight involved in considering IBS as a possible field of application for a drug effective against visceral pain.” 

T 2443/18 -

https://www.epo.org/law-practice/case-law-appeals/recent/t182443eu1.html

Summary of Facts and Submissions

I. European patent No. 2 588 093 (patent in suit) was granted with a set of eight claims. Claim 1 reads as follows:

"1. Tapentadol for use in the treatment of irritable bowel syndrome."

The remaining claims 2 to 8 are dependent claims.

II. The patent was opposed under Article 100(a) EPC on the grounds that the claimed subject-matter lacked novelty and did not involve an inventive step.

III. The documents cited in the proceedings included the following:

D1: Drugs of the Future 31(12), 1053-1061 (2006)

D3: J Clin Gastroenterol 35(Suppl), S58-S67 (2002)

D4: Neurology 70(Suppl 1), A164, P03.157 (2008)

IV. The decision under appeal is the opposition division's decision rejecting the opposition, announced on 13 June 2018 and posted on 23 July 2018.

V. According to the decision under appeal, the subject-matter of claim 1 as granted was novel. It also involved an inventive step: Prior-art document D3 taught that loperamide was a compound suitable for the treatment of irritable bowel syndrome (IBS). Loperamide, like tapentadol, belonged to the class of my-opioid receptor agonists. Starting from D3 as the closest prior art, the technical problem to be solved consisted in providing an alternative my-opioid receptor agonist useful for the treatment of IBS. This problem was credibly solved by claim 1 of the patent in suit in view of the experimental data on tapentadol presented in examples 1 and 2. The person skilled in the art would not have found any indication in the cited prior-art documents that tapentadol, instead of loperamide, could be successfully used in the treatment of IBS.

VI. The opponent (appellant) appealed this decision.

VII. Oral proceedings before the board were held on 9 April 2021.

VIII. The appellant's [opponent's] arguments on inventive step may be summarised as follows.

Document D4, which disclosed the efficacy of tapentadol in several animal models of visceral pain, was a promising starting point for the assessment of inventive step. The objective technical problem was to provide a further medical use of tapentadol.

It was known (e.g. from document D3) that visceral pain was a major symptom of IBS. There was no relevant distinction between visceral pain and visceral pain in IBS. The animal models mentioned in D4 included those relied on in the examples of the patent in suit in support of the efficacy of tapentadol in the treatment of IBS. No inventive skill would thus have been required to suggest tapentadol for treating IBS.

IX. The respondent's arguments on inventive step may be summarised as follows.

T 1860/17 - No remittal, Board examines 9 AR's

Key points

• The OD found the claims as granted allowable. The opponent appeals.  The Board finds the claims as granted to be obvious. In the first instance proceedings the patentee had filed AR-1 to 9, the patentee had maintained these requests with their Appeal Reply Brief. After the Board's conclusion on the main request, the Patentee requests that the case be remitted for consideration of these requests. The opponent opposes the requested remittal. Note, these requests had not been considered by the OD. So either the Board considers these requests for the first time in appeal or remits the case.
• The Board recalls that under Article 111(1) it has a discretionary power to remit the case or not. The Board does not expressly recall Article 11 RPBA 2020.
• The Board decides to not remit the case. The Board, in translation: “In the present case, auxiliary requests 1-9 undisputedly relate to combinations of granted claims. In addition, the appellant/opponent commented in detail on the dependent claims of the patent in suit in their statement of grounds (pages 19-21). The respondent/patent proprietor was thus prepared to discuss, in particular, the inventive step of these claims. Ultimately, there is a general public interest in achieving legal certainty in the matter as quickly as possible. A remittal, which always opens up the possibility of a further appeal, does not serve this interest and is always weighed against the interest of the parties in being able to present their arguments in two instances. In the present case, it must be taken into account that the opponent did not agree to the request for remittal and the patent has a priority date from 2010 already. In the opinion of the Board, both are weighty reasons that speak against remittal”.
• The Board finds all requests to be obvious starting from the same document D2 as for the main request.
  
  
  
• The Board, on the admissibility of some other auxiliary requests, notes that convergence as a factor for admissibility does not apply to the first instance proceedings and neither to the admissibility in appeal of requests filed and maintained in the first instance proceedings. “Allerdings betrifft die Rechtsprechung der Beschwerdekammern zur Nicht-Zulassung von nicht konvergierenden Hilfsanträgen hauptsächlich Anträge, die erst nach Beschwerdebegründung bzw. Erwiderung eingereicht wurden, und somit dem Ermessen der Kammer nach Artikel 13 VOBK unterlagen, vgl. RdBK V.A.4.12.4 und die darin zitierten Entscheidungen. Diese Rechtsprechung ist daher im vorliegenden Fall nicht einschlägig und stellt kein Hindernis für die Zulassung der Hilfsanträge 3, 8 und 9 dar.”

T 1860/17 -

https://www.epo.org/law-practice/case-law-appeals/recent/t171860du1.html

6. Hilfsanträge - Zulassung zum Verfahren

6.1 Die Hilfsanträge 1-9 wurden bereits im Verfahren vor der Einspruchsabteilung gestellt und mit der Erwiderung der Patentinhaberin vom 9. März 2018 auf die Beschwerdebegründung erneut gestellt. Die Beschwerdeführerin Einsprechende bestreitet die Zulassung der Hilfsanträge 3, 8 und 9 mit dem Argument, dass die geänderten unabhängigen Ansprüche in diesen Anträgen nicht gegenüber dem in höherrangigen Anträgen beanspruchten Gegenstand konvergieren.

Allerdings betrifft die Rechtsprechung der Beschwerdekammern zur Nicht-Zulassung von nicht konvergierenden Hilfsanträgen hauptsächlich Anträge, die erst nach Beschwerdebegründung bzw. Erwiderung eingereicht wurden, und somit dem Ermessen der Kammer nach Artikel 13 VOBK unterlagen, vgl. RdBK V.A.4.12.4 und die darin zitierten Entscheidungen. Diese Rechtsprechung ist daher im vorliegenden Fall nicht einschlägig und stellt kein Hindernis für die Zulassung der Hilfsanträge 3, 8 und 9 dar. Die Zulassung der Hilfsanträge 1, 2 und 4-7 wurde nicht gerügt, und die Kammer sieht aufgrund der darin enthaltenen Änderungen, die auf Kombinationen von erteilten Ansprüchen gerichtet sind, ebenfalls keinen Grund, der gegen die Zulassung dieser Hilfsanträge zum Beschwerdeverfahren spricht.

Aus diesen Gründen entschied die Kammer, die Hilfsanträge 1-9 in das Verfahren zuzulassen (Artikel 12(4) VOBK 2020).

6.2 Die Vorlage der Hilfsanträge 0 und 0' erfolgte erst in der mündlichen Verhandlung vor der Kammer. Diese verspätet vorgelegten Hilfsanträge stellen geändertes Vorbringen dar, dessen Zulassung nach Maßgabe der Erfordernisse des Artikels 13 VOBK 2020 erfolgt.

T 0474/17 - Implicit disclosure

 Key points

• In this opposition appeal, the opponent argues that the claim is not novel over Example 22 of E1, a prior art European patent publication. The claim under examination is directed to a cutting tool with a titanium carbonitride layer defined inter alia by certain parameters describing the texture. E1 does not describe the texture. The opponent performed experiments and filed a report repeating Example 22 of E1.
• The Board: “ this sample reproduced by the appellant according to the teaching of E1 fulfils the texture requirements of features M9 and M10 of claim 1 of the patent irrespective of the method used for processing the [electron backscattering diffraction] data. The parameters defined in claim 1 are therefore implicitly disclosed by E1 in line with established case law such as T 1523/07 and T 1085/13 cited by the respondent.”
• As a comment, in my article in epi Information 4/2020, I propose that it may be more precise to say that E1 discloses a product that inherently falls within the ambit of claim 1 because probably an amendment of E1 to add the texture features would involve added subject-matter under Article 123(2).
  
  
• The Board, on when an experiment is a sufficiently close repetition of a prior art example: “The Board agrees with the conclusions presented in the case law cited by the respondent [patentee] that only a true repetition of an example of the prior art can be taken into account for proving that a parameter is implicitly met by an example of the prior art. However, the technical particularities of the specific example, the technical field and the practical implications thereof have to be taken into account. In the present case, the Board concludes that [opponent's] sample 17ELi05-N25M is sufficiently close to example 22 of E1 to prove, that the texture parameters defined in features M9 and M10 of claim 1 are unambiguously fulfilled by said example.”

T 0474/17

https://www.epo.org/law-practice/case-law-appeals/recent/t170474eu1.html

Hence, E1 does not describe which overall texture is obtained for the TiCN layer.

1.2.2 The appellant performed experiments on the basis of the examples of E1 comprising a TiN innermost layer and a TiCN layer having (111)(222)(200) orientation. The results of these experiments are reported in Annexes 1, 2 and 8.

The following reasoning focuses on sample 17ELi05-N25M, which is considered by the Board to represent a fair repetition of example 22 of table 6 of E1.

The sample 17ELi05-N25M produced according to Annex 8 comprises a cemented carbide substrate having the composition 5.35 wt% Co, 2.70 wt% Ta, 0.42 wt% Nb, 1.80 wt% Ti and balance W+C, an innermost TiN layer having a thickness of 0.5 µm and an inner TiCN layer having a thickness of 6.4 µm.

T 1663/12 - A (reportedly) billion dollar re-establishment case

 Key points

• This is an older case wherein a Notice of appeal was filed late and the Board refused the request for re-establishment. In the resulting litigation, the patentee reportedly alleged a loss of profits of about €1 billion
• However, the decision has become topical again because of this news item at ManagingIP (link):  “BASF targets [patent attorney firm] in €1bn row over missed patent deadline”.
• Managing IP writes that according to documents seen by them, BASF alleges that the total “loss of profits” suffered by BASF as a result of the revocation of the patent was €1.05 billion. The trial was reported to begin on 16 April 2021. Managing IP writes that the  “firm admitted it was responsible for the loss of the appeal”. However, reportedly the firm stated that the patent at issue was a “classic example” of the patentee trying to “over-reach its attempted scope of monopoly, followed by a series of futile attempts to add in limitations that could not have saved the claims”, Managing IP writes. 
  
• Managing IP mentioned the expiry date of the patent which allowed me to search for the filing date and the applicant. These matched with the Board decision below. 
• Addendum: see also this article: https://www.juve-patent.com/news-and-stories/cases/basf-sues-carpmaels-for-damages-over-missed-appeal-deadline/
• Addendum 01.11.2021: the damages claim was rejected by the UK High Court, in first instance, see here: https://www.bailii.org/ew/cases/EWHC/Ch/2021/2899.html 
• Addendum: the case was settled for nominal damages of £1 according to https://www.juve-patent.com/news-and-stories/people-and-business/basf-and-carpmaels-settle-missed-appeal-deadline-case/ 

https://www.epo.org/law-practice/case-law-appeals/recent/t121663eu1.html

http://k-slaw.blogspot.com/2013/02/t-166312-drop-dead-appeal.html 

https://register.epo.org/application?number=EP04779814&tab=main 

[...]

19. The appellant further argued that in assessing the requirement of "all due care" under Article 122(1) EPC it should be borne in mind that the notice of appeal was filed only a short time after the due date and that the public should have been aware that an appeal would be filed. The present Board does not share the appellant's opinion that the principle of proportionality can be applied when assessing the requirement of "all due care" under Article 122(1) EPC. Rather, it takes the view that the requirement of "all due care" means that only circumstances which happened before the time limit expired can be considered or, in other words, the obligation to exercise "all due care" must be assessed in the light of the situation as it stood before the time limit expired (see decisions T 1465/07 of 9 May 2008, reasons, point 16, and T 439/06 of 31 January 2007, reasons, point 15).

20. In considering the requirement of "all due care" under Article 122(1) EPC, the Boards have ruled in numerous decisions that the circumstances of each case must be looked at as a whole (see e.g. decision T 1465/07 of 8 May 2008, reasons, point 18). In the present case, looking at the whole series of failures and mistakes which took place, the Board sees no basis to argue that the failure to meet the appeal time limit could be considered an isolated mistake in a well functioning time monitoring system.

Final conclusions

21. As, therefore, the circumstances of the present case do not satisfy the requirement of "all due care" pursuant to Article 122(1) EPC, the request for re-establishment must be refused. Consequently, both the notice of appeal and the payment of the appeal fee were belated and the appeal is deemed not to have been filed pursuant to Article 108, first sentence, EPC. Furthermore, as there is no appeal in existence, the appeal fee must be reimbursed (decision J 21/80 of 26 February 1981, reasons, point 4, OJ 1981, 101, decision T 493/08 of 29 September 2009, reasons, point 7).

ORDER

For these reasons it is decided that:

1. The appellant's request for re-establishment of rights is refused.

2. The appeal is deemed not to have been filed.

3. The appeal fee is reimbursed.

T 0390/18 - Rule 137(5) discretionary?

Key points 

• In this examination appeal, the Examining Division had refused to admit an auxiliary request under Rule 137(5). 
• In the auxiliary request, a feature is added taken from the description. The Board considers that the added feature is directed to a different problem than the original claims, such that it lacks unity of invention with the claims as filed. The decision does not indicate that the applicant had disputed this. This also seems a straightforward and correct application of Rule 137(5), first sentence, to me.
• However, the Board adds, in translation, “The board also notes that, under G7/93, a board of appeal should only overturn a discretionary decision by an examining division if it concludes that the examining division is exercising its discretion on the basis of the wrong criteria, disregarding the correct criteria, or in an arbitrary or arbitrary manner. inappropriately exercised. In the present case, the appellant only questioned the outcome of the discretionary decision, not the way in which the department exercised its discretion.”
• However, Rule 137(5) reads: “Amended claims may not [dürfen ... nicht / ne doivent pas] relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept”. In my view, this can only be understood as meaning that the Examining Division must refuse such amended claims and that Rule 137(5) first sentence can not be used as a ground for not admitting the claims if the two cumulative requirements of that sentence are not met. Hence, Rule 137(5) seems non-discretionary. However, the Examining Division is not barred from carrying out a further search (C-IV 7.2 and 7.3) in which case the subject matter could possibly become searched in the sense of Rule 137(5).* However, I'm not sure if this is what the Board means. 
• * I expressed the same view in my article in epi Information 2/2018, footnote 17.

T 0390/18

https://www.epo.org/law-practice/case-law-appeals/recent/t180390du1.html

Sachverhalt und Anträge

I. Die Beschwerde der Patentanmelderin richtet sich gegen die Entscheidung der Prüfungsabteilung, mit der die europäische Patentanmeldung Nr. 06 724 073.9 zurückgewiesen worden ist. Die angefochtene Entscheidung beruhte auf den Anträgen der Patentanmelderin, ein Patent auf Grundlage des in der mündlichen Verhandlung vom 13 Oktober 2017 geänderten Hauptantrags oder ersten Hilfsantrags zu erteilen. Diese Anträge bleiben für das Beschwerdeverfahren relevant.

[...]

Der erster Hilfsantrag wurde nach Regel 137(3) EPÜ nicht zugelassen, weil die hinzugefügten Merkmale mit der ursprünglichen Erfindung nicht durch eine einzige allgemeine erfinderische Idee verbunden seien und nicht recherchiert worden seien (Regel 137(5) EPÜ).

Entscheidungsgründe

2. Hilfsantrag

2.1 Auf Seite 11, Zeilen 8 bis 14 der Beschreibung der vorliegenden Anmeldung sind die Erhöhungen 100, die Vertiefungen 101 und der Stapelrand 31 (Merkmale M und N) beschrieben, sowie die technischen Wirkungen, die sie erzielen.