T 1038/18 - (IV) Case amendment after summons

 Key points

•  To jump to the conclusion: “Consequently, the mentioned considerations constitute in the board's view cogent reasons justifying exceptional circumstances under which the board, in the exercise of its discretion under Article 13(2) RPBA 2020, considered appropriate to admit the appellant's arguments of lack of inventive step over document D1 into the proceedings.”
• So what are the exceptional circumstances? I think the Board is quite liberal but as noted below, the reasoning is a bit unclear as to what precisely the relevant procedural facts are.
• “The board notes that in [the preliminary opinion the Board expressed the view that]  that, contrary to the opposition division's view[,] D1 disclosed [features X and Y] and that, also contrary to the opposition division's view, document D1 did not disclose [feature Z]. Therefore, the board's preliminary opinion substantially deviated from the opposition division's assessment of novelty. In particular, the preliminary opinion was, on the one hand, favourable to the appellant's [opponent] submissions as regards the claimed feature [X and Y] but, on the other hand, the appellant was confronted with the board's preliminary opinion that [feature Z] would constitute, contrary to the opposition division's view, a distinguishing feature of the claimed device over document D1 and that this feature would constitute the sole distinguishing feature of the claimed device. ”
• “In the board's view these considerations justified, in the circumstances submitted by the appellant and mentioned above [see below], that the appellant [opponent], in reply to the preliminary opinion expressed by the board, submitted for the first time during the appeal proceedings arguments of lack of inventive step over document D1 in respect of a claimed feature that did not correspond to the features identified by the opposition division as new, but was subsequently identified in the board's preliminary opinion as the sole distinguishing feature over document D1. ”
• The opponent/appellant also submitted that “ with the statement of grounds of appeal the appellant submitted arguments in support of their view that the features of claim 1 identified by [the opposition division] as being new over document D1 were disclosed in document D1. In these circumstances - as already stated in the statement of grounds of appeal - there was, according to the established case law ([CLBA IV.C.3.4.2]), no need to present at that time arguments relating to inventive step.”
• As a comment, it is not clear to me if the patentee/respondent had defended feature Z as a distinguishing feature in its appeal reply brief, or that the Board identified the feature of its own motion as providing a difference with D1. In the former case, the appropriate time to submit inventive step arguments in reply would be the appellant's/opponent's rejoinder. In the latter case, this would be a regular reason to admit response submissions under Art. 13(2). So, in the former case, it is remarkable that the Board does not explain why the appellant/opponent was not expected to have submitted the attack already with its rejoinder. In the latter case, the  Board's extensive reasoning on admissibility seems superfluous. 

T 1038/18 -

https://www.epo.org/law-practice/case-law-appeals/recent/t181038eu1.html

3.2 Inventive step over the embodiment of Fig. 16a to 16c of document D1 as the closest state of the art

3.2.1 Amendment to the appellant's case after notification of the summons - Article 13(2) RPBA 2020

In the statement of grounds of appeal the appellant, in addition to raising an objection of lack of novelty of the device of claim 1 over document D1 and submitting arguments in support of the objection, also raised an objection of lack of inventive step of the mentioned device over document D1, without however submitting arguments in support of this objection. Subsequently, with a letter filed after notification of the summons to oral proceedings before the board, the appellant submitted substantive arguments in support of their view that the subject-matter of claim 1 did not involve an inventive step over document D1. These arguments constitute an amendment to the appellant's case in appeal within the meaning of Article 13(2) RPBA 2020.

The respondent objected that the appellant's arguments of lack of inventive step over document D1 were not, but could precautionarily have been, submitted with the statement of grounds of appeal, that the arguments were submitted at a late stage of the appeal proceedings, and that for these reasons these arguments of lack of inventive step should not be admitted into the proceedings.

T 1038/18 - (III) Fresh grounds in appeal

 Key points

•  “The appellant [opponent] submitted during the appeal proceedings that the subject-matter of claim 1 of auxiliary request 3 resulted in an unallowable generalisation of the content of the application as filed (Article 123(2) EPC).”
• “The respondent [patentee] submitted that the appellant's objection under Article 123(2) EPC amounted to the introduction of the ground for opposition under Article 100(c) EPC and that they did not give their consent to the introduction of this ground for opposition.”
• Art. 100(c) was not invoked in the Notice of opposition, nor introduced by the OD. Hence, G 10/91 applies.
• “The board notes that the opposition was only based on the grounds for opposition under Articles 100(a) and 100(b) EPC (cf. point I above, second paragraph), that claim 1 only results from the combination of claims as granted (see point 6.1.1 above, first paragraph), and that therefore - as submitted by the respondent - the appellant's objection under Article 123(2) EPC amounts to an objection under Article 100(c) EPC in respect of the corresponding claims as granted and therefore to the introduction of a ground for opposition neither invoked by the appellant in the notice of opposition, nor introduced by the opposition division during the first-instance proceedings. In these circumstances, and in view of the fact that the respondent did not consent to the introduction of the ground for opposition under Article 100(c) EPC, the mentioned objection cannot be considered by the board (see G 10/91 [headnote 3])”
• I recall that G 10/91 r.19 stated that: “In order to avoid any misunderstanding, it should finally be confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. with regard to the provisions of Article 123(2) and (3) EPC)”. 
• As this present decision illustrates, this must be applied in the same way as for G 3/14: does the amendment introduce a new (alleged) deficiency into the claims? See also T 0895/18 for a different (in my view, incorrect) approach. 

T 1038/18 

 

https://www.epo.org/law-practice/case-law-appeals/recent/t181038eu1.html

6.1.2 The appellant [opponent] submitted during the appeal proceedings that the subject-matter of claim 1 of auxiliary request 3 resulted in an unallowable generalisation of the content of the application as filed (Article 123(2) EPC).

The respondent submitted that the appellant's objection under Article 123(2) EPC amounted to the introduction of the ground for opposition under Article 100(c) EPC and that they did not give their consent to the introduction of this ground for opposition.

The board notes that the opposition was only based on the grounds for opposition under Articles 100(a) and 100(b) EPC (cf. point I above, second paragraph), that claim 1 only results from the combination of claims as granted (see point 6.1.1 above, first paragraph), and that therefore - as submitted by the respondent - the appellant's objection under Article 123(2) EPC amounts to an objection under Article 100(c) EPC in respect of the corresponding claims as granted and therefore to the introduction of a ground for opposition neither invoked by the appellant in the notice of opposition, nor introduced by the opposition division during the first-instance proceedings. In these circumstances, and in view of the fact that the respondent did not consent to the introduction of the ground for opposition under Article 100(c) EPC, the mentioned objection cannot be considered by the board (see G 10/91 (OJ EPO 1993, 420), point 3 of the Opinion).

T 1038/18 - (II) Art.83 and dependent claims

 Key points

• “The opposition division held in its decision that the requirement of Article 83 EPC was met because, first, the requirements were met by the corresponding independent claim 1 and a dependent claim only represented additional non-essential details of the invention and, second, any potential contradiction with claim 1 would represent a clarity issue, which was not a ground for opposition.
• The board, however, cannot follow the opposition division's arguments because the requirement of sufficiency of disclosure under Articles 100(b) and 83 EPC is not confined to the invention defined in independent claims and ... it also concerns the invention defined in dependent claims referring back to them. 
• In addition, the mere fact that the appellant's objection under Article 100(b) or 83 EPC is based on a possible contradiction and that a contradiction may give rise to an objection of lack of clarity under Article 84 EPC which does not constitute a ground for opposition does - contrary to the opposition division's view - per se not justify omitting consideration of the mentioned objection under Articles 100(b) or 83 EPC.”
• The Board: on the merits of the objection: “Therefore, only a strict literal reading of claims 1 and 7 of auxiliary request 3 without taking into account the limitations imposed by the technical features of the claimed subject-matter would lead to the contradiction alleged by the appellant [opponent].”
• In this case, if the objection would have had merits regarding dependent claim 7, cancelling dependent claim 7 would have addressed the issue, without any need to amend claim 1. 

T 1038/18

https://www.epo.org/law-practice/case-law-appeals/recent/t181038eu1.html

The opposition division held in its decision that the requirement of Article 83 EPC was met because, first, the requirements were met by the corresponding independent claim 1 and a dependent claim only represented additional non-essential details of the invention and, second, any potential contradiction with claim 1 would represent a clarity issue, which was not a ground for opposition.

The board, however, cannot follow the opposition division's arguments because the requirement of sufficiency of disclosure under Articles 100(b) and 83 EPC is not confined to the invention defined in independent claims and - as submitted by the appellant - it also concerns the invention defined in dependent claims referring back to them. In addition, the mere fact that the appellant's objection under Article 100(b) or 83 EPC is based on a possible contradiction and that a contradiction may give rise to an objection of lack of clarity under Article 84 EPC which does not constitute a ground for opposition does - contrary to the opposition division's view - per se not justify omitting consideration of the mentioned objection under Articles 100(b) or 83 EPC.

T 1038/18 - (I) The respondent's rejoinder in appeal

 Key point

• The opponent appeals. 
• “ With the letter dated 1 March 2019 filed in reply to the respondent's reply to the statement of grounds of appeal the appellant [opponent] submitted for the first time during the proceedings that the priority of the patent was not validly claimed in respect of the claimed invention, that consequently document D3 (publication date of 27 May 2010) considered during the first-instance proceedings as constituting state of the art within the meaning of Article 54(3) EPC constituted state of the art within the meaning of Article 54(2) EPC in respect of the patent in suit (filing date of 1 March 2011), and that the subject-matter of claim 1 of auxiliary request 2 did not involve an inventive step over document D1 as closest state of the art in combination with document D3.”
• “The respondent [patentee] objected that the appellant's submissions relating to the validity of the priority and the combination of documents D1 and D3 were submitted too late and could already have been submitted with the statement of grounds of appeal, especially in view of the fact that the claims of auxiliary request 2 corresponded to the claims of the third auxiliary request submitted during the first-instance proceedings.
• The Board, in a very important analsyis: “The board notes, however, that document D3 was considered by the appellant during the first-instance proceedings in support of the ground for opposition of lack of novelty raised in respect of the patent as granted and that, as far as this ground for opposition is concerned, it was irrelevant at that time whether document D3 constituted state of the art within the meaning of Article 54(3) EPC or within the meaning of Article 54(2) EPC. In addition, in the present case the opposition was rejected by the opposition division, and the appellant was only required in the statement of grounds of appeal to substantiate why they considered non-convincing the reasons given by the opposition division in respect of the patent as granted. Consequently, there was no need at that time to consider whether the priority was validly claimed, i.e. whether document D3 constituted state of the art within the meaning of Article 54(2) EPC. The question of the validity of the priority and of the status of document D3 as state of the art became only pertinent when subsequently the respondent, in reply to the statement of grounds of appeal, filed auxiliary requests, and in particular the amended claims of the then auxiliary request 3 and now auxiliary request 2. Therefore, there was no need for the appellant to submit the issues under consideration already with the statement of grounds of appeal, and the submission of the mentioned issues in reply to the respondent's reply to the statement of grounds of appeal are, in the board's view, justified in the circumstances of the case.”

• “It is also noted that the claims of auxiliary request 2 correspond to the claims of the third auxiliary request submitted during the first-instance proceedings, and that the appellant [opponent] could precautionarily have filed submissions in respect of the mentioned claims with the statement of grounds of appeal. However, contrary to the respondent's view, there was no need for the appellant to have followed such an approach. 
• “in particular, as submitted by the appellant by reference to decision T 919/17 (point 1 of the reasons), it cannot be expected from the appellant [/opponent] in the circumstances noted above to speculate at that point in time which lines of defence the respondent [/patentee] would adopt, let alone to anticipate that the respondent, in reply to the appeal, would re-submit in appeal the same claims of auxiliary requests previously submitted during the first-instance proceedings. 
• Analogous considerations apply to the respondent's submissions relating to the dependent claims and the facts that claim 1 of the present auxiliary request 2 results from the combination of claim 1 as granted with the feature of dependent claim 2 as granted and the appellant already objected in the opposition notice (section VII) and in the statement of grounds of appeal (point VIII.2) to the patentability of the features of the dependent claims. The fact that the appellant [opponent] already submitted arguments in support of the mentioned objection in respect of dependent claims [in the first instance proceedings and in the SoG] does, in the board's view, not imply that the appellant's case was then to be seen as complete as regards the features of the dependent claims or that the appellant's case was then subsequently necessarily confined to these submissions.”
  
  
• The Board, in a further important remark: “It follows from the above considerations that the submissions relating to the issue of the validity of the claimed priority and to the issue of inventive step in view of the combination of document D1 with document D3 were filed by the appellant in reply to the respondent's reply to the statement of grounds of appeal in the exercise of their right to be heard and to submit comments in respect of the amended claims submitted with the mentioned respondent's reply to the statement of grounds of appeal. In these circumstances, the board considers that the mentioned submissions, although constituting an addition to the appellant's case in appeal, do not constitute an amendment of their appeal case within the meaning of Article 13(1) RPBA 2020, i.e. an amendment that may be admitted only at the discretion of the board, because the submissions are, in the mentioned circumstances, part of the appellant's case in appeal and are to be taken into account in the proceedings - i.e. without a consideration of the mentioned submissions being subordinated to a discretionary decision of the board.”
• I'm not sure if only changes of a party's appeal case which can be held inadmissible without violating Art. 113 (1) EPC, are amendments to the appeal case in the sense of the RPBA.

https://www.epo.org/law-practice/case-law-appeals/recent/t181038eu1.html

3.2 Inventive step over the embodiment of Fig. 16a to 16c of document D1 as the closest state of the art

3.2.1 Amendment to the appellant's case after notification of the summons - Article 13(2) RPBA 2020

In the statement of grounds of appeal the appellant, in addition to raising an objection of lack of novelty of the device of claim 1 over document D1 and submitting arguments in support of the objection, also raised an objection of lack of inventive step of the mentioned device over document D1, without however submitting arguments in support of this objection. Subsequently, with a letter filed after notification of the summons to oral proceedings before the board, the appellant submitted substantive arguments in support of their view that the subject-matter of claim 1 did not involve an inventive step over document D1. These arguments constitute an amendment to the appellant's case in appeal within the meaning of Article 13(2) RPBA 2020.

The respondent objected that the appellant's arguments of lack of inventive step over document D1 were not, but could precautionarily have been, submitted with the statement of grounds of appeal, that the arguments were submitted at a late stage of the appeal proceedings, and that for these reasons these arguments of lack of inventive step should not be admitted into the proceedings.

The appellant submitted that the issue of inventive step over document D1 as closest state of the art was already addressed during the first-instance proceedings and in particular by the opposition division in the decision under appeal, that the objection was already raised in the statement of grounds of appeal, and that with the statement of grounds of appeal the appellant submitted arguments in support of their view that the features of claim 1 identified by the opposition division's as being new over document D1 were disclosed in document D1. In these circumstances - as already stated in the statement of grounds of appeal - there was, according to the established case law ("Case Law of the Boards of Appeal", EPO, 9th edition (2019), section IV.C.3.4.2), no need to present at that time arguments relating to inventive step. Furthermore, the preliminary assessment of novelty presented by the board deviated substantially from that of the opposition division so that it was justified to react to the preliminary opinion of the board by submitting substantive arguments of lack of inventive step.

The board notes that in the communication annexed to the summons to the oral proceedings the board expressed the preliminary opinion that, contrary to the opposition division's view (see point 3.1.2 above, second paragraph), document D1 disclosed first and second microimage components having different colour densities and that, also contrary to the opposition division's view, document D1 did not disclose a coloured layer as claimed, and in particular a layer such that the second microimage components "appear in a colour dependent [...] on the [...] coloured layer" (see point 3.1.5 above). Therefore, the board's preliminary opinion substantially deviated from the opposition division's assessment of novelty. In particular, the preliminary opinion was, on the one hand, favourable to the appellant's submissions as regards the claimed feature relating to the microimage components having different colour densities but, on the other hand, the appellant was confronted with the board's preliminary opinion that the different colour of the claimed layer would constitute, contrary to the opposition division's view, a distinguishing feature of the claimed device over document D1 and that this feature would constitute the sole distinguishing feature of the claimed device.

In the board's view these considerations justified, in the circumstances submitted by the appellant and mentioned above, that the appellant, in reply to the preliminary opinion expressed by the board, submitted for the first time during the appeal proceedings arguments of lack of inventive step over document D1 in respect of a claimed feature that did not correspond to the features identified by the opposition division as new, but was subsequently identified in the board's preliminary opinion as the sole distinguishing feature over document D1. Consequently, the mentioned considerations constitute in the board's view cogent reasons justifying exceptional circumstances under which the board, in the exercise of its discretion under Article 13(2) RPBA 2020, considered appropriate to admit the appellant's arguments of lack of inventive step over document D1 into the proceedings.

[...]

5. Auxiliary request 2

5.1 Novelty

Claim 1 of auxiliary request 2 differs from claim 1 of the main request in that the claim further requires that the second microimage components are formed as a screened pattern. It was undisputed that this feature was new over document D1. Therefore, the device of claim 1 of auxiliary request 2 is new over the device of document D1 in the distinguishing feature already identified in point 3.1.5 above, and in that the second microimage components are formed as a screened pattern (Articles 52(1) and 54(1) EPC).

5.2 Addition to the appellant's case in appeal in reply to the respondent's reply to the statement of grounds of appeal - Consideration of Article 13(1) RPBA 2020

5.2.1 With the letter dated 1 March 2019 filed in reply to the respondent's reply to the statement of grounds of appeal the appellant submitted for the first time during the proceedings that the priority of the patent was not validly claimed in respect of the claimed invention, that consequently document D3 (publication date of 27 May 2010) considered during the first-instance proceedings as constituting state of the art within the meaning of Article 54(3) EPC constituted state of the art within the meaning of Article 54(2) EPC in respect of the patent in suit (filing date of 1 March 2011), and that the subject-matter of claim 1 of auxiliary request 2 did not involve an inventive step over document D1 as closest state of the art in combination with document D3.

The respondent objected that the appellant's submissions relating to the validity of the priority and the combination of documents D1 and D3 were submitted too late and could already have been submitted with the statement of grounds of appeal, especially in view of the fact that the claims of auxiliary request 2 corresponded to the claims of the third auxiliary request submitted during the first-instance proceedings. In addition, in the statement of grounds of appeal the appellant already referred to their first-instance submissions relating, among other issues, to the issue of novelty over document D3 under Articles 52(1) and 54(3) EPC and to the patentability of the dependent claims, and all these submissions were silent as to the validity of the priority and the new attack of inventive step. Therefore, the new appellant's submissions constituted a significant deviation from the case previously presented by the appellant and should not be admitted into the proceedings.

5.2.2 The board notes, however, that document D3 was considered by the appellant during the first-instance proceedings in support of the ground for opposition of lack of novelty raised in respect of the patent as granted and that, as far as this ground for opposition is concerned, it was irrelevant at that time whether document D3 constituted state of the art within the meaning of Article 54(3) EPC or within the meaning of Article 54(2) EPC. In addition, in the present case the opposition was rejected by the opposition division, and the appellant was only required in the statement of grounds of appeal to substantiate why they considered non-convincing the reasons given by the opposition division in respect of the patent as granted. Consequently, there was no need at that time to consider whether the priority was validly claimed, i.e. whether document D3 constituted state of the art within the meaning of Article 54(2) EPC. The question of the validity of the priority and of the status of document D3 as state of the art became only pertinent when subsequently the respondent, in reply to the statement of grounds of appeal, filed auxiliary requests, and in particular the amended claims of the then auxiliary request 3 and now auxiliary request 2. Therefore, there was no need for the appellant to submit the issues under consideration already with the statement of grounds of appeal, and the submission of the mentioned issues in reply to the respondent's reply to the statement of grounds of appeal are, in the board's view, justified in the circumstances of the case.

It is also noted that the claims of auxiliary request 2 correspond to the claims of the third auxiliary request submitted during the first-instance proceedings, and that the appellant could precautionarily have filed submissions in respect of the mentioned claims with the statement of grounds of appeal. However, contrary to the respondent's view, there was no need for the appellant to have followed such an approach. In particular, as submitted by the appellant by reference to decision T 919/17 (point 1 of the reasons), it cannot be expected from the appellant in the circumstances noted above to speculate at that point in time which lines of defence the respondent would adopt, let alone to anticipate that the respondent, in reply to the appeal, would re-submit in appeal the same claims of auxiliary requests previously submitted during the first-instance proceedings. Analogous considerations apply to the respondent's submissions relating to the dependent claims and the facts that claim 1 of the present auxiliary request 2 results from the combination of claim 1 as granted with the feature of dependent claim 2 as granted and the appellant already objected in the opposition notice (section VII) and in the statement of grounds of appeal (point VIII.2) to the patentability of the features of the dependent claims. The fact that the appellant already submitted arguments in support of the mentioned objection in respect of dependent claims does, in the board's view, not imply that the appellant's case was then to be seen as complete as regards the features of the dependent claims or that the appellant's case was then subsequently necessarily confined to these submissions.

5.2.3 It follows from the above considerations that the submissions relating to the issue of the validity of the claimed priority and to the issue of inventive step in view of the combination of document D1 with document D3 were filed by the appellant in reply to the respondent's reply to the statement of grounds of appeal in the exercise of their right to be heard and to submit comments in respect of the amended claims submitted with the mentioned respondent's reply to the statement of grounds of appeal. In these circumstances, the board considers that the mentioned submissions, although constituting an addition to the appellant's case in appeal, do not constitute an amendment of their appeal case within the meaning of Article 13(1) RPBA 2020, i.e. an amendment that may be admitted only at the discretion of the board, because the submissions are, in the mentioned circumstances, part of the appellant's case in appeal and are to be taken into account in the proceedings - i.e. without a consideration of the mentioned submissions being subordinated to a discretionary decision of the board.

T 0031/18 - Imatinib and (no) plausibility

 Key points

• I missed this case when it was published in Feb. 2020.
• “The respondents [patentees] concur with the opposition division in the definition of the problem, namely the provision of imatinib tablets improving patients compliance, i.e incorporating the entire daily dosage of 400 mg imatinib in a single tablet of acceptable dimensions, or reducing the dimensions of a tablet comprising a 100 mg dose, wherein the tablets have acceptable properties, as regards hardness, and a disintegration time of 20 minutes or less.”
• “It has to be investigated whether there is sufficient evidence supporting the alleged effects. For this purpose, documents C76 and C70 were mentioned by the respondents [patentees] and discussed during oral proceedings in support of the existence of an effect.”
• “The use of document C76 was contested by [opponent] appellant 02. According to appellant 02, this document related to experiments on desired tablet properties which were carried out after the filing date and which referred to effects not plausibly shown to be achieved by the claimed tablets in the original application. There was no mention or evidence in the original application that an effect as regards hardness, abrasion resistance, friability or disintegration time had been plausibly achieved by the claimed tablets.”
• “The Board cannot share this view. This line of argumentation appears to be incompatible with the assessment of inventive step according to the problem-solution approach, ... Said technical effect or problem must either be explicitly mentioned in the application as filed or at least be derivable therefrom, but not necessarily originally supported by experimental evidence. It can indeed not be expected from a patent applicant to include an extensive number of experimental evidences corresponding to all technical features which can possibly be claimed in the application as filed and which can possibly constitute a future distinguishing feature over the closest prior art, since said closest prior art and its technical disclosure may not be known to the applicant at the filing date of the application.”
• “C76 has been filed with the intention to proof the [advantageous properties stated in the patent] reached by tablets [...] comprising cross-linked PVP in the claimed amount over the tablets obtained by wet granulation and comprising cross-linked PVP in an amount lower than 10% by weight. Hence, disregarding the tests of C76 which intend to demonstrate an improvement in the tablet properties over the closest prior art would be incompatible with the problem-solution approach.” 
• However, C76 is not a clear comparison with example 8 of the prior art document D7. “Accordingly, the experiment C76 cannot constitute evidence supporting the alleged effects.”
• This implies that the above remarks regarding the plausibility requirement being incompatible with the problem-solution approach is obiter, i.e. is also a point that Board 3.3.07 wanted to express in this decision.
• The difference was using wet granulation vs. dry compression to make the tablets, document C76A and C76B purportedly showing the same advantages but using direct compression, as in C7. However, these documents were not admitted as being late filed. 
• “Since it is not possible to establish the existence of an improvement over the prior art as regards the amount of cross-linked PVP, the technical problem must be formulated as proposed by [opponent] appellant 02, namely the provision of an alternative tablet comprising a high amount of compound I [imatinib].”
• After detailed analysis, “Accordingly, the claimed solution as regards the amount of 10-35% by weight of cross-linked PVP is obvious.”
• The patent is revoked.
• It was the 2nd appeal, after T 0571/11. The patent was granted in 2007, with PCT application filed in 2003. So the patentee managed to keep something pending for about 18 years, with the EPO needing 14 years to finally dispose of the opposition.
• Let me be clear: I think such a length of proceedings is generally unacceptable for the general public, not only but in particular for patents for medicaments.
  
  
• The Board, regarding partial problems: “The Board can however not follow this argument [of patentee, that the partial problem approach must not be used because the two distinguishing features are interrelated], since the application as filed is silent as regards this alleged interrelation or interdependence, which is also not implicitly derivable from the disclosure of the application as filed.” “the alleged interrelation between the amount of compound I of 30-80% by weight and of cross-linked PVP of 10-35% by weight does not find any basis in the application as filed and is also not implicitly derivable therefrom. The effect of each distinguishing technical feature has therefore to be considered separately.”

T 0031/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t180031eu1.html

2.4 The respondents concur with the opposition division in the definition of the problem, namely the provision of imatinib tablets improving patients compliance, i.e incorporating the entire daily dosage of 400 mg imatinib in a single tablet of acceptable dimensions, or reducing the dimensions of a tablet comprising a 100 mg dose, wherein the tablets have acceptable properties, as regards hardness, and a disintegration time of 20 minutes or less.

Appellant 09 defines the problem as the provision of a tablet comprising a high drug load, that disintegrates within a certain amount of time and that employs a compound other than microcrystalline cellulose as a binder.

T 0137/17 - Art. 123(2) and claim specifying combinations

Key points

• Claim 1 as granted is directed to a composition "comprising A, B1 and/or B2, and C1 and/or C2".
• Claim 1 as filed specified a composition comprising A, B, and C. Hence, during prosecution, B was limited to B1 and/or B2, and C was limited to C1 and/or C2.
• “The [opponent] argued that claim 1 required an explicit basis in the application as originally filed for each of the combinations arising from that feature, namely B1+C1, B1+C2, B1+C1+C2, B2+C1, B2+C2, B2+C1+C2, B1+B2+C1, B1+B2+C2 and B1+B2+C1+C2, and not every combination found the required basis.”
• The Board: “claim 1 does not individualise any of these combinations. This argument is thus not convincing.”
• The Board's reasoning seems rather remarkable in asserting that “claim 1 does not individualise any of these combinations”. On the other hand, it seems indeed straightforward that an Art. 123(2) objection can not be based on claim embodiments which are not "individualised" in the claim. However, when exactly is an embodiment "individualised"?
• There appears to be a connection with the two-list principle. 

 

T 0137/17  -

https://www.epo.org/law-practice/case-law-appeals/recent/t170137eu1.html

3. Amendments

3.1 Claim 1 as originally filed required a catalyst comprising

(A) a transition metal

(B) an organopolyphosphite, and

(C) an organomonophosphite ligand

T 1337/18 - Correction identity appellant

 Key points

• The Board finds the appeal admissible. The Board, in machine translation: “The board of appeal follows the established case law of the boards of appeal (see T 0875/06, T 97/98, G 1/12), which assumes that an incorrect or erroneous indication of the person of the appellant can be corrected or rectified. The prerequisite for such a correction is that it can be inferred with sufficient probability from the notice of appeal and the other contents of the file that the intention was to file the appeal on behalf of this person [i.e. the person requested to be entered as appellant], see T 875/06, r.3.” 
• The Board is convinced that the intention was to file the appeal in the name of the opponent and not in the name of the holding company.
• The requested correction was made by the registry of the board of appeal in line with T 875/06, r.4.
• 
  

T 1337/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t181337du1.html

Entscheidungsgründe

1. Die Beschwerde ist zulässig. Die Beschwerdekammer folgt der ständigen Rechtsprechung der Beschwerdekammern (siehe T 0875/06, T 97/98, G 1/12), die davon ausgeht, dass eine inkorrekte oder irrtümliche Angabe zur Person der Beschwerdeführerin korrigiert oder berichtigt werden kann. Voraussetzung einer solchen Berichtigung ist, dass aus der Beschwerdeschrift und dem übrigen Akteninhalt mit hinreichender Wahrscheinlichkeit entnommen werden kann, dass die Absicht bestand, die Beschwerde im Namen dieser Person einzulegen (siehe T 875/06, Entscheidungsgründe, Punkt 3.).