T 0862/16 - Secondary legislation

 Key points

• This decision was published already in March 2021.
• In an opposition appeal, "the board raised, ex officio, a further objection under Article 76(1) EPC (to be referred as objection (vii)), namely that claim 1 uses the formulation "means for performing an RRC Reconfiguration procedure to resume a data radio bearer other than a signaling radio bearer 1  when an RRC connection is re-established", whereas the parent application as filed uses the formulation "all radio bearers other than a signaling radio bearer 1" (cf. claim 1 and paragraph [0003], line 10 of the parent application as published). Thus, claim 1 now embraces the possibility that not all other radio bearers will be resumed, as opposed to the teaching of the parent application as filed." 
• " The appellant [patentee] objected to the board's raising new issues in the appeal proceedings, arguing that new Article 12(2) RPBA 2020 establishes the character of the appeal proceedings as a judicial review in which the parties have only very limited room for amending their case with respect to the first-instance proceedings. The board therefore should be similarly constrained from introducing new objections of its own motion. This is not persuasive, as will be discussed later when dealing with the request for referral to the Enlarged Board of Appeal (cf. point 8 below)." 
• The Board admits an auxiliary request. " In the present case, the board, exceptionally, raised a new objection ex officio. Consequently, the requirement for there to be "exceptional circumstances" is met." 
• Turning again to the issue of the Board raising a new objection: " The board sees here no provision, or any other provision of the Rules of Procedure, which could and would restrict its power conferred by Articles 111(1) and 114(1) EPC to raise new objections of its own motion. This would, moreover, be "incompatible with the spirit and purpose of the Convention" (cf. Article 23 RPBA 2020). Thus, provisions of the RPBA as "secondary legislation" according to Article 23(4) and Rule 12c EPC could never take precedence over the provisions of the EPC itself (cf. Article 23(3) EPC)." 
• " Although G 10/91, OJ 1993, 420, imposes a limitation on the scope of examination, in inter partes appeal proceedings, that fresh grounds for opposition can only be introduced with the proprietor's consent, by "ground for opposition" is here meant one of the legal bases set out in Article 100 EPC. This is consistent with a "ground" being considered as the legal basis (cf. G 1/95, OJ 1996, 615, point 5.4 of the reasons), and not the factual basis, which concerns the facts, arguments and evidence relied on ([G 1/95] cf. point 3.1 of the reasons). The board is not aware of any case law which would regard two objections having the same legal basis, e.g. Article 76(1) EPC, which concerns the ground for opposition pursuant to Article 100(c) EPC, as being separate grounds for opposition within the meaning of G 10/91." 
• " Moreover, in case of amendments of the claims in the course of inter partes appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (see G 10/91, point 19 of the reasons). The board notes in passing that in ex parte appeal proceedings any new ground, i.e. not examined by the first-instance department, can be invoked by a Board of Appeal under Article 114(1) EPC during the appeal proceedings (cf. G 10/93, OJ 1995, 172, Headnote)." 
•  " That the board may raise new objections, such as even a new inventive-step objection, is furthermore confirmed by the Enlarged Board of Appeal (see e.g. R 16/13, points 5.1 and 5.2 of the reasons). This is also consistent with Article 13(1) RPBA 2020, which mentions "the issues which were admissibly raised by another party in the appeal proceedings or which were raised by the Board". 
• " It goes without saying that, when a new objection is raised, the proprietor's right to be heard must be respected (Article 113(1) EPC), but that is a separate issue (see also explanatory remarks to Article 13(1) RPBA 2020, penultimate paragraph, last sentence: "Where the Board raises an issue of its own motion under Article 114(1) EPC, the party's right to be heard under Article 113(1) EPC must be respected")." 

T 0862/16

decision text omitted.

https://www.epo.org/law-practice/case-law-appeals/recent/t160862eu1.html

J 0005/19 - Allowed retraction of withdrawal application

Key points

• "with a letter dated 3 May [2018], the appellant withdrew the application and requested that the fees be refunded. A divisional application was filed on 8 May 2018 (No. 18171252). Both the withdrawal of the parent application and the filing of the divisional application were mentioned on the same date, namely on 11 May 2018, in the case file of the parent application. The European Patent Register (hereinafter: "the register") reported the filing of the divisional application without indicating the date on which it was filed." 
• "On 29 May 2018 the appellant's representative filed a request to "retract" the withdrawal of the application under Rule 139 EPC. It argued that the application was withdrawn due to a mistake. Its true intention had been to file a divisional application first and to withdraw the application afterwards; however, the order of these steps had been mixed up."
• The Board allows the request.
• "According to the case law of the boards of appeal it is possible to correct the withdrawal of an application under Rule 139 EPC. This is true even if the withdrawal has already been published in the register. However, this correction is only possible if it meets the following cumulative conditions: (a) the withdrawal did not reflect the true intention of the applicant (existence of a mistake within the meaning of Rule 139 EPC); (b) there was no undue delay in seeking its correction (J 04/03, point 9 of the Reasons; J 10/87, point 13 of the Reasons); (c) third parties who might have taken note of the withdrawal by inspection of the file would have had reason to suspect that the withdrawal was erroneous (see J 10/08, point 12 of the Reasons; J 2/15, point 13 of the Reasons; J 8/06, point 6 of the Reasons)."
• "Some decisions by the board have required a further condition to be met, more specifically that the error was due to an excusable oversight (e.g. J 04/03, point 9 of the Reasons; see also J 10/87, point 13 of the Reasons). This board cannot adhere to this case law for the following reasons. ... [G 1/12 does not mention such a requirement]. "
• "In assessing whether the withdrawal was due to a mistake, only the intention of the applicant and not that of the European representative is relevant. The decision to withdraw the application indeed lies with the former and not the latter. Therefore, only the represented party's state of mind matters, and not that of the representative. Exceptions may apply "
• " Next, the board is satisfied that the request was filed without delay. The communication that the second application could not be treated as a divisional application was issued on 22 May 2018. The request for correction was filed on 29 May 2018."
• "The specific circumstances of this case are that third parties were informed at the same time that one parent application was withdrawn and one divisional application was filed, without knowing the chronological order of the two events. Regardless of what they may have assumed in light of these circumstances, they would in any case have realised that the invention disclosed in the parent application could still be the subject-matter of a pending application, either because the parent application could be reinstated under Rule 139 EPC, or because the divisional application was effectively filed under Article 76 EPC."
  
• "According to the request filed at the oral proceedings the withdrawal will be corrected such that it was made in a period of time between 9 and 20 May 2018. In the board's view the result which this request aims to achieve corresponds to the true intention of the applicant for the following reasons."
• The Board decides that: "The withdrawal of European patent application No. 15750584.3 is corrected such that it was made on a date between 9 and 20 May 2018."

EPO J 0005/19 -

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

T 0184/19 - Art. 12(4) RPBA 2007 vs. 2020

Key points

• The patentee files AR 3-6 with the statement of grounds on 22.03.2019. The opponent requests that they are held inadmissible.
• "Auxiliary requests 3,4,5 and 6 correspond to the like numbered auxiliary requests filed shortly before the oral proceedings in opposition but which were not examined."
• "The Board can see no reason why these requests that were re-filed in appeal should not be admitted under the applicable rules of procedure, Article 12(4) 2007."
• " the Board in exercising its discretion refrained from not admitting these requests into the proceedings, Article 12(4) RPBA 2007."
• The Board's reasoning is a bit remarkable because Article 12(4) RPBA 2007 states: "Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, everything presented by the parties under (1) [including the Statement of ground] shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirements in (2).". 
• There is no dispute that the requirements of Art. 12(2) RPBA 2007 were  met. 
• This means that only the  the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings" can be at play.
• However, the requests were actually submitted before the OD, and they were not held inadmissible by the OD (the OD did not arrive at them, finding AR-2 to be allowable).
• Clearly this is different under new Art. 12(4) RPBA 2020.

EPO T 0184/19

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

T 0660/16 - Review of case-management measure

Key points

• "On appeal, the patent proprietor argued that the opposition division should not have heard the witness. " 
• "Opponent 1 argued that the opposition division's decision to hear the witness could not be contested." 
• "Contrary to the view of opponent 1, the board has to examine the patent proprietor's request to review the correctness of this part of the opposition division's decision. An order to take evidence is neither an appealable decision under Article 106(1) EPC nor an interlocutory decision allowing a separate appeal within the meaning of Article 106(2) EPC. Instead, it is a case-management measure that precedes a substantive decision and cannot be reviewed as long as the proceedings are still pending. The review may occur once a substantive decision (in this case the opposition division's interlocutory decision referred to at point I. above) is issued (Case Law of the Boards of Appeal of the EPO, 9th edition, 2019, Chapter V.A.2.2.2 b)(xiii))." 
• That paragraph in the CLBA cites just one decision: T 1954/14  (post). That case was an appeal against a summons by the OD to hear a witness. The appeal was rejected as inadmissible. In my view, that is not quite the same as a decision that the decision to summon a witness, can be challenged in appeal.
• Article 106(2) indeed provides that "a decision which does not terminate proceedings as regards one of the parties can (...) be appealed together with the final decision (...)" (omitting the part about leave to appeal), but I'm not sure if this covers a case management "measure" as such (note, the Board does not say "case management decision"). On the other hand, where a case management decision/order/measure results in a substantial procedural violation, this may be a ground for setting aside the substantive decision. 
• Assuming for the moment that the Board meant to review the first instance proceedings for an alleged substantial procedural violation, a further issue is that there must both have been a procedural error of the OD, and an adverse effect of that error for the patentee. Harmless errors do not amount to a substantial procedural violation. I'm not sure if hearing a witness as such can adversely affect a party, provided that the parties are given enough time to comment on and rebut the evidence given by the witness.
• The Board also reviewed the substance of the factual findings by the OD regarding the public prior use.
• As a separate issue, if the order to take evidence was an interlocutory decision not including a leave for separate appeal, the present case illustrates that the phrase  "only be appealed together with the final decision" in Art.106(2) in fact may mean "may be appealed with the next interlocutory decision that includes a leave to appeal" - in the present case, the proprietor should indeed not have waited for the final decision of the OD to maintain the patent in amended form after the payment of the fee and filing of the translated amended claims of Rule 82. 
• On inventive step over the public prior use: "the product of the public prior use would have been available to the skilled person in May 2006. There is nothing that would prevent the skilled person from using a real product, with all its features established above, as the closest prior art."
• "The board fails to see an inventive step in adjusting the moisture content to a range that is conventional in the field of manufacturing pellets and that is not associated with a technical effect."
• 
  

EPO T 0660/16 

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

T 3120/19 - Witness hearing unjustly denied

Key points

• "The appeal was filed by the appellant-opponent against the decision of the Opposition Division to reject the opposition against the patent in suit.'
• "The Opposition Division decided not to hear the witness Mr. Jepsen, offered in support of the prior use E-66."  The OD found the claims as granted to be novel and inventive."
• "The appellant-opponent submits that the Opposition Division infringed their fundamental right to be heard, Article 113(1) EPC, by its refusal to summon the witness Mr. Jepsen." 
• "It is well-established in the jurisprudence of the boards of appeal that failure to consider evidence submitted in due time will normally constitute a substantial procedural violation in that it deprives a party of their fundamental right to free choice of evidence and the right to be heard, as enshrined in Articles 117(1) and 113(1) EPC" 
• "The relevant facts and conclusions of the Opposition Division during the proceedings before it are as follows. With the notice of opposition, the appellant-opponent submitted evidence in support of prior use E-66 and an associated objection of lack of novelty for granted claim 1 []. Prior use E-66 was substantiated on the basis of a technical drawing E5, a statutory declaration by Mr. Jepsen (E6), and an offer to hear Mr. Jepsen as witness to corroborate the alleged facts of the prior use." 
• "According to the applicable version of the Guidelines (November 2018), G.IV.7.2 it is recommended that "[I]f the prior use or certain circumstances relating to it are contested, the division will need to take further evidence (e.g. hearing witnesses or performing an inspection) for those facts which are relevant to the case and which cannot yet be considered proven on the basis of the evidence already submitted". It was for this very reason that Mr Jepsen was offered as witness, namely to corroborate the alleged facts stated in [the written declaration of Mr. Jepsen; E6] and now contested by the proprietor. The Opposition Division should thus have followed the approach in the Guidelines." 
• At this point, it may be useful to clarify that to "offer" a witness is actually a formal request of a party to hear a witness (as I understand it), with the particular feature that the witness is "on the side" of the party making the request (note, you can very well request the EPO to summon a witness that is connected to the adversarial party or that is unrelated to any party, provided you can give contact details of the witness. It's just that the EPO can not compel a summoned witness to appear and testify [*]).
• * - addendum 29.03.2023: this should be read as: to appear and testify before the EPO. I do not exclude that the EPO can compel certain persons to testify before a national court through Art. 131 EPC. 
• "This hearing of a witness is decided by the EPO, Rule 117 EPC, and normally takes place at the oral proceedings long after the offer to hear the witness will have been made. By virtue of these facts information elicited by hearing a witness upon a decision of the EPO cannot therefore automatically be considered late filed and thus disregarded under Article 114(2) EPC, contrary to the respondent proprietor's view. Therefore the Opposition Division was wrong to conclude in section 12 of the impugned decision: "As it was not apparent what specific additional information would be provided by the witness, other than repeating his sworn statement in person, ... , then it was not felt by the OD to serve a useful purpose to hear the witness in person". As the appellant opponent correctly observed, such an approach would generally obviate hearing witnesses at all, and parties would then (in cases involving a witness) only rely on sworn statements by the witness under Article 117(1)(g) EPC filed in advance in the notice of opposition." 
• As a note, the custom of hearing of the witness during the oral proceedings was probably a result of the practical need to travel to Munich. With videoconference witness hearings, I think it is possible to hear witnesses earlier in the procedure. The OD can designate one member to hear the witness (Rule 119 EPC).
• "As explained in T 0474/04, reasons 8, [...] [in] case a witness is heard, there are additional approaches how the reliability of his testimony may be scrutinized that are not available from the evaluation of written evidence alone. These may inter alia concern the memory of the witness, the question whether his testimony is based on his own observations or on conclusions drawn by him, or on information from others, or the question whether the witness was able to observe what he claims to have observed. They may also concern the witness himself, factors which may indicate that he tells the truth or, on the contrary, that his testimony is based on an error in perception or recollection, on hearsay, or that he is not willing to tell the whole truth and nothing but the truth." 
• "It is for these reasons that if hearing of the witness has been offered or requested on matters that are contested and which are decisive to the outcome of a case such an offer or request to take evidence should normally be taken up." 
• "The principle of free evaluation of evidence is only applicable after the evidence has been taken and cannot be used to justify not taking evidence that has been offered, cf. T 0474/04" 
• The Board also notes that the alleged public prior use was sufficiently substantiated in the Notice of opposition: " It suffices for the purpose of Rule 76(2)(c) EPC that the facts and evidence are indicated to a degree that allows patentee and opposition division to see clearly what attack was being mounted against the patent, and what evidential support was being adduced for that attack (CLBA, IV.C.2.2.8 a) and in particular the cited T 0204/91). " 
• It is not clear to me, generally, whether there is a concept of partial inadmissibility of a Notice of opposition under Rule 76(2)(c) EPC (because in this case there were other lines of attack based on published prior art documents).
• " Where prior use relies on a witness, as is in this case, it is enough to name the witness and indicate the alleged facts for which the witness is called, CLBA, IV. 2.2.8 d)." 
• In connection with T 1911/17, I think the opponent may very well have an evidential burden to present some corroborating evidence already when the witness is offered, but that requirement was clearly met in the present case.  
• The Board also notes that the alleged prior use was critical to the outcome of the case: "The Board therefore concludes that if the evidence E5 and E6 is taken at face value, it appears to show all features of claim 1. Thus, the prior use, if proven, would be prejudicial to novelty of granted claim 1 and thus highly relevant" (the OD only needs to hear a witness if the alleged facts to be proven by the witness hearing can be decisive for the outcome of the case).

EPO T 3120/19 

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

T 1202/19 - Holding claims admitted by OD inadmissible

Key points

•  Claim 1 of the Main Request is directed to: "Use of McCoy cells persistently infected with Lawsonia intracellularis bacteria to grow and obtain these bacteria in purified form"
• "Lawsonia intracellularis is highly pathogenic." (wiki). 
• This post is however about procedural aspects of the case.
• The OD revoked the patent. The Board finds the claims of the main request to be not novel and AR-1 to AR-8 to be not allowable.
• Turning to AR-9 to AR-17: "The opposition division admitted auxiliary requests 9 to 17 into the opposition proceedings and considered that they did not overcome the objections discussed at the oral proceedings before the opposition division."
• "The respondent [opponent] contests this decision and maintains the objection against their admission already raised before the opposition division. Reference is made to the established case law and to the course of events at first instance, in particular the renumbering of the auxiliary requests at the beginning of the oral proceedings which had as a consequence the avoidance of a discussion - and thus, a decision - on the subject-matter of granted claim 1."
• "The respondent's [opponent's] request not to admit them into the appeal proceedings is understood mainly as a request to review the discretionary decision of the opposition division."
• The Board holds the requests inadmissible.
• " The sole reason for the opposition division for admitting auxiliary requests 9 to 17 into the proceedings appears thus to be the fact that "the patentee intends to maintain these requests for an eventual appeal against the decision of the opposition division" and so the opposition division considered it "legitimate to maintain the auxiliary requests as fall-back positions" [as stated in the decision under appeal]. The board, though, considers that it is not reasonable to admit claim requests into the opposition proceedings for the sole reason of providing fall-back positions in possible appeal proceedings; "
• "Claim 1 of auxiliary requests 9 to 17 is directed to a method to obtain McCoy cells persistently infected with Lawsonia intracellularis bacteria. " AR-9 to AR-17 also include a second independent claim being a use claim. The OD found the use claims not allowable for the MR and AR-1 and thereby could held AR-9 to AR-17 unallowable without examining the independent method claim. 
• The issue is probably that if AR-9, filed with the SoG / already before the OD is admitted, cancelling the use claim could be an attempted amendment in the course of the appeal proceedings.
• 
  

EPO 

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

T 2125/18 - In principle (in Art. 13(2) RPBA)

Key points

•  Article 13(2) RPBA provides that case amendments are in principle not taken into account in a certain stage of the appeal proceedings, unless an exception applies. The Board in the present decision provides an interpretation of the phrase "in principle".
• As a comment, I speculate that the phrase "in principle" was possibly added into new Art. 13(2) RPBA during the discussions about the draft provision in the decision making process as a kind of compromise.e In other words, I suspect that there was some debate about Article 13(2) and that "in principle" was included in order to have sufficient support for the new provision and/or to accommodate strong reservations (edited 21.04.2022).
• The present Board: "First, the terminology "in principle" can only be understood to refer to the general principle which is to be observed at this late stage of the appeal procedure. This is because Article 13(2) RPBA 2020 is that part of the RPBA which is the most stringent - i.e. it defines the "third level of convergence". Thus, the wording "in principle" cannot be understood to mean that it can be applied simply where the Board finds it fitting, because this would reduce its application to the far broader discretionary powers granted to the Board under Article 13(1) RPBA 2020."
• "Also, it is only logical when following the concept of the three levels of convergence (as explained in e.g. the explanatory remarks to Articles 12(4), 13(1) and 13(2) RPBA 2020) that such a stringent approach must be followed after the less stringent ones, and as the proceedings progress. Indeed, this principle comes into effect only at a late stage of the appeal proceedings (here, after the summons was notified), when a party has made its complete appeal case and any amendments to that appeal case which may have been appropriate under Article 13(1) RPBA 2020. Thus, following the wording of Article 13(2) RPBA 2020, the principle has to be applied, such that, for the Board to take the amendment to the appeal case into account, exceptional circumstances must have arisen."
• Compare T 0172/17.
• The Board gives a very particular meaning to "in principle", but I'm not entirely sure if a native speaker would use "in principle" when trying to convey the concept identified by the Board. Possibly a native speaker would use "as a matter of principle" i.e. according to a dictionary: "a situation that requires something be done a certain way because one believes it is the only right way" (link to Merriam Webster Dictionary)

EPO 

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