T 2951/18 - Intervention and Art.14 RPBA

Key points

•  "The patent proprietor argued that, following decision T 384/15, the Board had to consider wether, in the present case, when invoking Article 105 EPC, the intervener attempted to circumvent the law by abuse of process."
• "The patent proprietor submitted that the legal requirement to present relevant evidence within the original 9 months opposition period was circumvented by the intervener."
• The Board: "The alleged existence of a relationship between the appellant and the intervener, even if confirmed, would not be sufficient for concluding that procedural abuse occurred."
• The Board derives from G3/97 r.2.1 that "it is neither vexatious nor illegitimate if the opponent and the intervener coordinate their actions within the limits of the applicable procedural framework."
• "Referring to documents and objections submitted by the opponent does not represent an abuse but rather an attempt of the intervener to pursue their legitimate interest by using information which was publicly available, e.g. by file inspection, when the intervention was filed. There is also no requirement in the EPC that the objections and the evidence submitted by an intervener should not be related to those previously submitted by an opponent."
• Finally, "The argument that using a straw man as opponent allowed the intervener to create a second, abusive, opportunity to circumvent the legal requirement to present relevant evidence within the original 9 months opposition period is therefore not convincing."
• "The procedural conduct of the intervener leading to the timing of the intervention is also not regarded as abusive, because in the present case it was the cease and desist letter, e.g. the legal action initiated by the patent proprietor against a third party, which triggered the filing of the notice of intervention at a very late stage of proceedings before the EPO."
  
  
• "The patent proprietor further argued that the evidence submitted by the intervener not be admitted into opposition proceedings in application of Articles 12(6) and 14 RPBA 2020. This was because [] Article 14 RPBA 2020 specified that Article 12(6) RPBA 2020 also applied to interventions, with the result that there were clear limits to what an intervener is allowed to submit in appeal proceedings, which were similar to those foreseen for an appellant-opponent."
• The Board: "In the present case the Board, taking into account the principle, firmly established in the case law, that an intervener has the right to present a new ground for opposition at the appeal stage (G 1/94), concludes that the purpose of an intervention under Article 105 EPC during appeal proceedings would be meaningless if the evidence upon which the intervener decides to rely was not admitted therein. Systematically preventing interveners from referring to duly filed prior-art documents only because the same or similar evidence was filed late by an opponent would force these third parties to pursue their legitimate interest, recognized under Article 105 EPC, in national proceedings. This would lead to a situation which is incompatible with the spirit and purpose of the EPC (Article 23 RPBA 2020). As a consequence of the above the Board concludes that the evidence filed by the intervener should be admitted into the present proceedings."
• Hence: " Article 12(6) RPBA 2020 is not applicable to the present case" (for the intervener)
• The Board remits the case without considering any of the substantive issues. "the particular circumstances of the present case, in particular in view of the filing of an intervention based on substantially new evidence after the decision under appeal had been announced by the opposition division, call for remitting the case to the opposition division (see also G 1/94, point 13 of the Reasons)."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2904/19 - Intervention in appeal period

Key points

• An intervention was filed under Art.105: “The decision under appeal was announced at the end of the oral proceedings held before the opposition division on 12 June 2019. Two days later, on 14 June 2019, the intervention of an assumed infringer according to Article 105 EPC was filed. The intervention meets the formal requirements and is substantiated and therefore is seen as admissible in the sense of Rule 89 EPC. In accordance with G 4/91, point 6 of the reasons, in this particular situation where an intervention is filed after the opposition division announced its decision and where a party to the opposition proceedings files an appeal, the notice of intervention will be deemed to be filed in appeal proceedings, see also T 791/06 of the same Board in different composition, point 2.2 of the reasons. 
  ... Therefore, the Board concludes that the intervention cannot be rejected and that it forms part of the proceedings.
• The patentee is the respondent and filed new AR's with its Appeal Reply Brief. The Board: "In the case at hand, new matters have been raised in view of the notice of intervention, which was filed after oral proceedings before the opposition division were held. The respondent was thus not in place of reacting to these new matters during opposition proceedings with arguments and/or auxiliary requests. The Board concludes that due to the course of the opposition proceedings and the subsequent intervention, the filing of auxiliary requests 1 to 14 with the reply to the statement of grounds of appeal and to the intervention, where the respondent is required to form its complete appeal case in the sense of Article 12(3) RPBA 2020, was, in the present case, an appropriate point of time to present the auxiliary requests. In view of these particular circumstances, the Board, exercising its discretion under Article 12(4) RPBA 2007, admits auxiliary requests 1 to 14 into the appeal proceedings."
• The Board deals with the attacks of the opponent/appellant. "It follows that the appellant has not provided admissible objections and/or convincing arguments that would demonstrate that the subject-matter of claims 1 and 9 according to auxiliary request 7 lacks an inventive step in the sense of Article 56 EPC."
• However, "The intervener confirmed that it had objections to the claimed subject-matter of auxiliary request 7 other than the appellant's objections. The intervener also requested that the case be remitted to the opposition division"
• The Board remits the case taking into account that the Board "concludes that new facts, evidence, arguments and objections filed with the intervention, in combination with the new auxiliary requests filed by the respondent cannot be decided without an undue burden for all parties and the Board, amount to special reasons in the meaning of Article 11 RPBA 2020 that, hence, justify a remittal to the opposition division for further prosecution."

EPO T 2904/19

The link to the decision is provided after the jump.

T 1667/15 - Crystalline forms inventive

Key points

• There is definitely a new trend that polymorphs and crystalline forms are nowadays frequently considered to be inventive by the Boards (Board 3.3.02 in the case at hand).
• “ The claims as granted comprise two independent claims directed to specific crystalline forms (i.e. polymorphs) of febuxostat. Claim 1 is directed to a crystalline form designated "Form F10", while claim 6 is directed to a crystalline form designated "Form F2".”
• “Claim 1 concerns Form F10 of febuxostat. It is undisputed that this form is different from Form A disclosed in D2 and Form CN700 disclosed in D3A. According to the contested patent, Form F10 is said to have advantageous properties, and a list of such properties is provided. In particular it is stated that form F10 "has better solubility in ethanol compared to other crystalline forms" (paragraph [0065]). The patent does not contain any working examples or experimental data demonstrating said solubility.”
• Plausibility is not discussed in the decision
• " The respondent [patentee] submitted inter alia Annexes 5, 6 and 7a and argued that the data therein demonstrated that Form F10, compared to Form A of D2, possessed advantages in terms of its dissolution rate." 
• "  the objective technical problem underlying the subject-matter of claim 1 vis à vis Form A of D2 is the provision of a crystalline form of febuxostat with an improved dissolution rate in aqueous solution." 
• As to obviousness, " [the opponent / appellant] argued that it was incorrect to assume that in the field of polymorph screening, it would be entirely unexpected to find a polymorph with an improved dissolution rate compared to Form A. Rather, the skilled person was in a "try and see" situation in which absolute certainty was not needed (citing in particular decision T 1396/06). Accordingly, the skilled person, in addition to being motivated by the knowledge that Form A of D2 was known to be metastable, would have had a clear incentive to continue routine polymorph screening in order to prepare new crystalline forms having the desired property, and thereby would have arrived at Form F10 of claim 1. " 
• " The board is not convinced by these arguments. The situation in the present case is not the same as that underlying case T 1396/06" 
• "[The] situation in the present case may be more appropriately contrasted with that underlying decision T 777/08 [Atorvastatin] in which inventive step was denied. In that case, the problem was the provision of atorvastatin in a form having improved filterability and drying characteristics compared to the amorphous form (reasons, 5.1). The solution was the provision of a specific polymorphic form IV. " 
• "  In contrast, in the present case, as stated above, there is no teaching in the prior art on the basis of which a crystalline form of febuxostat with an improved dissolution rate in aqueous solution could be expected to exist. Therefore, the skilled person would have had no reasonable expectation of success in attempting to provide a solution to the objective technical problem vis à vis Form A of D2 as set out above." 
• " Therefore, inventive step must be acknowledged for the subject-matter of claim 1 vis à vis the disclosure of Form CN700 in D3A."
• The interested reader can read the full inventive step analysis, also for Form F2, after the jump.

EPO T 1667/15

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1371/16 - Applying G 1/19

Key points

•  “The application concerns [a] method for aiding a design of wiring paths of wire harnesses”
• “Claim 1 concerns an apparatus for computer aided design of a wire harness wiring path which outputs "data on corrected wiring path" as a final result. It thus relates to a design process which uses computer-implemented simulation to produce numerical data describing a wiring path.”
• As seems typical with this kind of software patent applications, there is no relevant difference between the apparatus claim and the method. In practical terms, the subject-matter can be seen as a method.
• In practical terms, a wire harness is an (electric) cable in a vehicle and the method is for designing a path for a cable in a vehicle. 
• “The claimed subject-matter is thus analogous to a computer-implemented simulation of a technical system. Its patentability is to be assessed taking into account the criteria established by the recent decision G 1/19 of the Enlarged Board of Appeal on the patentability of computer implemented simulations ”
• “ G 1/19 presents its conclusions for the application of the COMVIK approach to simulations. It explains that the underlying models of the simulation may contribute to technicality if, for example, they form the basis for a further technical use of the outcomes of the simulation (e.g. a use having an impact on physical reality). In order to avoid patent protection being granted to non-patentable subject-matter, such further use has to be at least implicitly specified in the claim [].”
• “The board is however not convinced that the distinguishing features contribute to a technical effect in accordance with the criteria established by decision G 1/19.”
• “The only purpose of the wire harness wiring path design aiding apparatus according to claim 1 is to output "data on corrected wiring path data", which is numerical data about the wiring path design. As explained above, the distinguishing features result in wiring path data being output by the apparatus which takes into account the force of the worker's hand.”
• Force of worker's hand: see [0030] of the A2: basically the maximum curvature that a worker placing a though cable in a car can impose on the cable by hand.
• The Board, applying G1/19: "“Claim 1 does not specify any further use of the output wiring path data, further properties or specific data format that could limit the possible uses of the data. In view of that, other relevant uses of the output data for non-technical purposes, for example informational, study or training purposes, are within the scope of the claim. Since the data can be output in any form or format, it cannot be considered to be specifically adapted for the purposes of an intended technical use. In particular, the output data is not specifically adapted to be used in controlling a technical device or manufacturing a wiring path. It can thus be concluded that the data produced by the apparatus of claim 1 is not limited to a further technical purpose and does not contribute to an "implied" technical effect that is to be taken into account in the assessment of inventive step.”

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1051/20 - Substantial procedural violation, no OP Board necessary

Key points

•  The Board finds a substantial procedural violation in that the refusal decision does not discuss two auxiliary requests filed by the applicant during the oral proceedings before the ED.
• The Board decides to remit the case.
• “ The appellant requested oral proceedings before the board in the event that the board considers not to grant a patent based on the present main request.”
• Clearly, the Board does not order the grant of the patent, rather a remittal for further substantive examination. Are oral proceedings before the Board necessary under Art.116?
• “The board recalls that a request for oral proceedings under Article 116(1) EPC must be granted if it is envisaged that a final decision might be issued which is adverse to the party making that request (see e.g. T 47/94, Reasons 6). However, it is established jurisprudence that a remittal of an appeal case without any consideration of the substantive issues is not to be considered as being adverse to a party, so that no hearing before the board is deemed necessary or appropriate solely to discuss whether or not such case should be remitted (see e.g. T 42/90, Reasons 5; T 166/91, Reasons 7; T 315/92, Reasons 5; T 47/94, Reasons 6; T 1727/12, Reasons 3).”

EPO  T 1051/20 -

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1259/17 - Deleting dependent claim is case amendment

Key points

• The Board: “The new requests [under Art. 13(1) RPBA 2020, in effect] are distinguished from the previous ones by the deletion of the features of granted [dependent] claims 4, 5 and 12. ” The deleted dependent claims involved added subject-matter, according to the preliminary opinion of the Board.
• The Board: “This amounts to an "amendment of the party's appeal case" within the meaning of Article 13(1) RPBA 2020. Some boards have taken the position that the deletion of claims in a new claim request was not to be regarded as an "amendment to the party's appeal case" if the deletion does not change the factual and legal framework of the case (see for example T 1480/16, reasons 2.3; T 2243/18, reasons 2; T 1792/19, reasons 2; T 1151/18, reasons 2.1).”
• “Other boards have taken the position that the deletion of claims was indeed to be regarded as an "amendment to the party's appeal case" and have applied Article 13 RPBA 2020 and assessed whether to admit the request in exercising their discretion in view of the criteria set out in Article 13 RPBA 2020, (T 2091/18, reasons 4; T 494/18 reasons 1.3-1.4; T 1597/16, reasons 4; T 1439/16, reasons 2; T 1224/15, reasons 5; T 908/18, reasons 1; see also T 682/16, reasons 5 to 8; and concerning Article 13(1) RPBA 2007 see T 168/16, reasons 2.1 and 2.2). ”
• “The board follows this [latter] approach as it is in line with the systematic context of Articles 12(3) and 13 RPBA (T 494/18, reasons 1.3-1.4). Article 12(3) RPBA 2020 provides that the statement of grounds of appeal and the reply shall contain a party's complete appeal case. Accordingly, all requests shall be specified expressly at this stage. It follows from this that only those requests that have been filed with a party's statement of grounds of appeal or the reply thereto form part of a party's appeal case.”
• I wonder if we will see a referral to the Enlarged Board.
• Hence, the Board needs to decide on admissibility. The Board turns to the question of whether the amendments are suitable to address the Art.123(2) objections. After a very extensive review in r.2.7 - 2.7.10, the Board finds that the amended claims still lack basis in the application as filed.
•  “Thus none of MR, AR1 to 5 and 7 to 10 is allowable under Article 123(2) EPC. Therefore, the board exercised its discretion not to admit these requests into the proceedings under Article 13(1) RPBA 2020.”
• The Board's assessment of Art. 123(2) under admissibility was extensive and in my view amounts to implicitly admitting the requests. For instance, see the remark in T 0847/20 r.4.1, addressed to an opposition division: “The opposition division has therefore not carried out a prima facie assessment but has fully considered the requests. By doing so, the opposition division has implicitly admitted the requests. Consequently, the Board takes the view that the opposition division wrongly exercised its discretion because, having implicitly admitted the requests, there was no discretion left not to admit them”."
  
  
• The decision also contains interesting points regarding the burden of proof for a technical effect.
• " In such a situation, in which the scope of the claimed composition, apart from the presence of the SRP, is much broader than that of the specific examples in the patent, the burden of proof that all the claimed compositions lead to the alleged advantageous effects mentioned in the patent rests upon the patent proprietor (T 97/00, reasons 3.1.6). In this respect, PP has also to give evidence that an improvement over the closest prior art is achieved over the whole breadth of the claim (T 653/07, reasons 5.1.7; T 1188/00, reasons 4.9)." 

EPO T 1259/17 - 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1367/19 - CPA for different purpose

Key points

• "3.1 The invention according to [method] claim 1 relates to a method for culturing animal cells. 
• 3.2 The appellant [opponent] based its inventive-step objection on the [public prior use] Ecover fermenter as closest prior art. The Ecover fermenter, including the whole control system, [] was used for microbial applications.
• 3.3 The problem to be solved is to provide a method for effectively culturing animal cells []
• 3.5 There is no reason to doubt that the problem is successfully solved.
• 3.6 The solution to the problem is not obvious. The Ecover fermenter was installed with the sole aim of culturing bacteria. While the vessel, which as such is part of the overall system installed, is suitable for culturing animal cells as set out above, there was no indication or pointer to the skilled person leading them to use that fermenter for culturing animal cells. Rather, the skilled person would have understood that the fermenter was specifically provided for bacterial applications, as is also evident from D18, which distinguishes between fermenters for microbial applications and fermenters for cell culture applications (page 7).
• The skilled person trying to solve the problem posed knows that both types of fermenter are available on the market. There is no reason why they would take a fermenter that is used to cultivate bacterial cells and convert it into a different system when there is no indication that the conversion would lead to a successful result. The skilled person would rather turn to the Biostat DC series described in D18 (which does not comprise the stirrer system of D24) when trying to cultivate animal cells.
• The argument [of the opponent] that the secondhand market would trigger broad usability of fermenters is based on speculation, for which no proof has been provided in relation to the specific fermenter.
• 3.7 The subject-matter of claim 1 is considered to be based on an inventive step."
  
  
• As a comment, I think that such a rejection of an inventive step attack is more satisfying than merely asserting that the prior use is not suitable as a starting point because it has a different purpose than the claim. 

EPO T 1367/19

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.