T 0449/15 - Art. 111(2) and res judicata

Key points

• A decision from 2016 which was not noticed by me back then. 
• It is the second appeal in the opposition proceedings. In the first decision, the case was remitted to the OD after finding that the main requests and AR 1 were not inventive basically because of insufficient proof of the asserted technical effect. The OD then revokes the patent. Patentee appeals, this time with better experimental evidence of the technical effect. At issue is AR-4 having only minor changes compared to the main request (the patentee admits this). The question is if res iudicata applies
• "Res iudicata is a generally recognised principle in the contracting states and acknowledged by the boards of appeal (see e.g. T 167/93, OJ EPO 1997, 229; J 3/95, OJ EPO 1997, 493; T 365/09, Reasons 2). According to the established case law of the boards of appeal, res iudicata means "a matter finally settled by a Court of competent jurisdiction, rendering that matter conclusive as to the rights of the parties and their privies ... Such a final judgement ... therefore constitutes an absolute bar to a subsequent legal action involving the same claim, demand or cause of action, and the same parties or their privies" (see T 934/91, OJ EPO 1994, 184, Reasons 3)." 
• The part about "same parties" seems less relevant for EPO opposition proceedings. 
• " Whether the present board is prevented from considering subject-matter claimed in these appeal proceedings in view of res iudicata depends on the question whether "the same claim, demand or cause of action" (see above) is at stake. Hence, it is necessary to compare the subject-matter of claim 1 of the main request decided upon in T 449/13 and of auxiliary requests 4 and 5 pending before the board for consideration in these second appeal proceedings." 
•  " it is concluded that the amendments undertaken do not alter the subject-matter claimed in substance compared to the subject-matter finally decided upon in T 449/13, or the facts on which said decision was based. Consequently, the finding that the claimed subject-matter lacks an inventive step is res iudicata also for the subject-matter of auxiliary requests 4 and 5. Therefore, the board is prevented from deciding on this issue a second time." 
• " the order for remittal for further prosecution in T 449/13 does not preclude a conclusion of res iudicata for remitted subject-matter. Pursuant to Article 111(2) EPC 1973 [] if a board remits the case for further prosecution to the department whose decision was appealed, that department shall be bound, in so far as the facts are the same, by the board's ratio decidendi."
• The patentee is hoping that the new experimental report makes that the facts are no longer the same. If Art. 111(2) is exclusive, there is a good chance for the patentee to still get the claims allowed in the second appeal. 
• The Board: The "ratio" of a decision is the ground or the reason for making it, in other words, the point in a case which determines the outcome of the judgement (cf. T 934/91, supra, Reasons 2)." 
• "  The same binding effect applies to the board in the case of a subsequent appeal against a further decision of the department of first instance following remittal (self-binding effect, cf. T 21/89, Reasons 3.1)."
• "  The principle of res iudicata and that of the binding effect of the ratio decidendi pursuant to Article 111(2) EPC 1973 are not mutually exclusive, but complement one another. " 
• "  the binding effect of the ratio decidendi extends to matter which has not become res iudicata, but it only applies "in so far as the facts are the same". On the other hand, matter which has become res iudicata is not open for reconsideration following a remittal for further prosecution. In view of the fact that such matter is finally settled, the binding effect is not limited to the ratio decidendi, but also precludes a change of the "facts" within the meaning of Article 111(2) EPC 1973, e.g. by introduction of new documents (see also T 1063/92, Reasons 2.5; T 153/93, Reasons 3). Accordingly, if a board of appeal has issued a decision rejecting certain claimed subject-matter as not being allowable and has remitted the case for further prosecution in accordance with an auxiliary request, examination of the allowability of the rejected claimed subject-matter cannot thereafter be re-opened (cf. T 79/89, OJ EPO 1992, 283, Headnote I)." 
•  As an example of the binding effect of ratio decidendi not covered by res iudicata: a claim interpretation given by the Board for Art.83 is binding for the OD in a subsequent consideration of novelty and inventive step.
• The patentee requests a referral to the Enlarged Board of Appeal: " The board notes in this context that, since a decision given by a board orally becomes effective, binding and final by virtue of being pronounced, boards are generally very careful about what they announce in the course of oral proceedings and whether they render an interlocutory decision on a particular point which would prevent them from reconsideration of this point at a later stage, should the need arise." 
• As a comment, the rule in italics applies equally to the first instance departments: "a decision given by a [panel of the EPO] orally [during oral proceedings] becomes effective, [and] binding ...  by virtue of being pronounced". By the same token: " [rendering] an interlocutory decision on a particular point [prevents] [the decision-making body] from reconsideration of this point at a later stage" in (the same) proceedings before the EPO.
• The difference is that a first instance decision is open to appeal. An appeal decision is only open to a petition for review.
• " In the present case, the chairman announced during the oral proceedings that "the board was of the opinion that claims 1 of auxiliary requests 4 and 5 were res iudicata and not open to consideration in view of T 449/13". Consequently, no decision on this issue had been taken prior to the appellant's submission of the request for a referral to the Enlarged Board, and the board was therefore not prevented from considering this request." 
   

EPO T 0449/15

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

T 2175/15 - Partiality objection

Key points

• • This is a very lengthy decision about a partiality objection in appeal. The published decision is anonymised, also omitting the application and patent number.
  • The text after the jump is the German text in HTML. All formatting from the PDF is lost on the EPO website in the HTML version. This loss makes the decision text in the HTML version almost incomprehensible because the PDF uses formatting extensively to indicate quotes. 
  • During oral proceedings in January 2021, the Board announces that it intends to admit Auxiliary Request 1, filed by the patentee during the oral proceedings and wherein all product claims are cancelled, to adjourn the hearing. The opponent is not happy with this envisaged course of action and asks the Board why it departs from the clear wording of Art.13(3) RPBA 2007 ( “Amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings.”). The hearing is then interrupted for a break. Subsequently, the Chair gives further details of the reasoning. The opponent announces a partiality objection. After a break, the opponent announces that it does not raise a partiality objection and wishes to discuss the admissibility of AR-1 further. The matter is discussed, and both parties request a different apportionment of costs. The Board then announces the (interlocutory) decision to admit AR-1 and to adjourn the oral proceedings The oral proceedings are then closed. With a letter of 12 April 2021, the opponent raises a first partiality objection. In the summons for the second oral proceedings, the Board gives the preliminary opinion that the partiality objection is inadmissible as being late-filed. The opponent then raises a second partiality objection.
  • The Board in the original composition holds the second partiality objection admissible and the Board in the new composition takes the present decision.
  • The Board in the new composition holds the second partiality objection to be admissible but not allowable. 
  • The Board reasons that a preliminary opinion can give rise to a well-founded partiality objection (r.4.3.1), namely (in translation) if it favours one party e.g. by giving indications that are not covered by Art. 114(1), or if it contains derogatory remarks or includes an application of the law that is grossly wrong that it allows the conclusion that it is arbitrary.
  • However, the summons for the second oral proceedings do not fall under one of those cases, and the partiality objection is not justified.
  • The Board in the original composition will now decide on the still pending first partiality objection. Hence, I  refrain from commenting on this aspect.
  • However, as a general point, even a successful partiality objection does not affect the already taken interlocutory decision to admit AR-1 in any way, as I understand it. "A decision given by a board orally becomes effective, binding and final by virtue of being pronounced" (T0449/15).

EPO T 2175/15

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

T 0489/14 (II) - Pedestrian simulation

Key points

• This is the follow up to G 1/19. Inventive step of the claimed "computer-implemented method of modelling pedestrian crowd movement in an environment" is at issue.
• " The main purpose of the simulation is its use in a process for designing a venue, as shown in Figure 22 []. Essentially, the designer creates or imports an architectural venue design, specifies the constituents of a pedestrian population that is typical for the venue being designed, and performs a number of simulations of pedestrian flows which the designer can specify at a high level (in terms of sources (entrances), sinks (exits) and supply rate). The simulation results are then examined and the design is revised if necessary." 
• The Board summarized G 1/19.
  The Board: " Hence [according to G 1/19], in the case of a computer-implemented invention, a technical effect relevant for the assessment of inventive step exists if the features of the claim directly achieve a (real) technical effect on physical reality (including both external physical reality and the "internal" physical reality of the computer system in which the invention is implemented).
• In addition, an "implied" technical effect relevant for the assessment of inventive step is present if the claimed invention or the data produced by it necessarily achieves a real technical effect when it is put to its intended (and only relevant) use. In contrast, merely providing calculated data which corresponds closely to technical effects of physical entities is not a technical effect relevant for the assessment of inventive step." 
• Turning to the claim at hand: " It follows that the data produced by the method of claim 1, which reflects the behaviour of a crowd moving through an environment, does not contribute to a technical effect for the purpose of assessing inventive step. Indeed, the potential use of such data is not limited to technical purposes, as it can be used in computer games or presented to a human for obtaining knowledge about the modelled environment, to give just two examples of non-technical uses that are within the scope of the claim."
• " The subject-matter of claim 1 of the main request therefore lacks inventive step (Article 56 EPC)."
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EPO 

The link to the decision is provided after the jump.

T 2361/18- Within one month of notification can also be before

Key points

•  Rule 103 EPC is a gift that keeps on giving for this weblog.
• "According to Rule 103(4)(c) EPC, the appeal fee is to be reimbursed at 25% if any request for oral proceedings is withdrawn "within one month of notification" of a communication issued by the board in preparation for the oral proceedings, and no oral proceedings take place. "
• "In the present case, the appellant withdrew its request for oral proceedings after the board had issued the summons to oral proceedings but before notification of a communication issued in preparation for the oral proceedings. "
• " The question therefore arises how "within one month of notification" is to be understood."
• "Although point 84 of CA/80/19 refers to the notification of the board's communication in Rule 103(4)(c) EPC as "[t]he point at which the appellant ... should be incentivised to withdraw the request for oral proceedings", the board sees insufficient reason to treat the condition "within one month of notification" in Rule 103(4)(c) EPC differently from the corresponding condition in Rule 103(3)(a) EPC. Indeed, a "too early" withdrawal of the request for oral proceedings only makes it more likely that the board will be able to use the freed-up capacity to schedule oral proceedings in another appeal case (cf. CA/80/19, point 82)."
• "Hence, for the purpose of Rule 103(4)(c) EPC, in the present case the request for oral proceedings was withdrawn "within one month of notification" of a communication by the board."
• And the same applies for the withdrawal of an appeal "within one month of notification" for the purpose of Rule 103(3)(a) EPC.

EPO 

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

T 0707/17 - Should have filed that request with its reply to the notice of opposition

Key points

•  "At the end of the oral proceedings, the proprietor withdrew its main request and auxiliary requests 1 to 4, and requested that the appealed decision be set aside and that the patent be maintained on the basis of one of auxiliary requests 5 to 8."
• "The novelty attacks based on E6 and on E11 were raised for the first time in the statement of grounds of appeal. Nothing of significance follows from the fact that E6 was filed with the notice of opposition, whereas E11 was only filed with the statement of grounds of appeal; because lack of novelty in view of E6 was first invoked in the statement of grounds of appeal."
• "Given that the auxiliary request found allowable by the Opposition Division resulted from a combination of granted claims, both attacks could and should have been presented in the notice of opposition, or, at the latest, when the proprietor submitted the relevant request. However, the Board also considers that the proprietor should have filed that request with its reply to the notice of opposition, rather than only shortly before the oral proceedings before the Opposition Division."  
• As a comment, this may not be evident when reading the Guidelines and Rule 116.
• "The Board further acknowledges that, in view of the timing of the request and of the preliminary opinion of the Opposition Division, it was only during the oral proceedings before the Opposition Division that developments led to the conclusion that the evidence provided by E1 and E2 was not sufficient to demonstrate it not to be allowable."
• " It was thus the procedural behaviour of both parties that led to the Board being confronted with facts and evidence brought forward for the first time with the statement of grounds of appeal.  In view of the above, and the fact that the maintenance of invalid patents is not generally in the public interest, the Board considers the prima facie relevance of the new facts and evidence to be the decisive criterion in this case".
• "the novelty attack based on E6 lacks prima facie relevance"
• "There are, to the contrary, serious reasons to suspect that E11 might be prejudicial to novelty of claim 1 of the patent as maintained."
• "Having taken the decision to consider novelty in the light of E11, the proprietor can expect an opportunity to overcome the new issue." Auxiliary request 5 was filed with the reply to the appeal and addresses the novelty objection. 
• "auxiliary request 5 and the inventive step attacks against it based on E11 are to also be considered."
• "Given that none of the attacks brought forward against auxiliary request 5 is successful, the patent can be maintained on basis of it."

EPO 

The link to the decision is provided after the jump.

T 2843/19 - On the rejoinder

Key points

• The appealing opponent argued lack of novelty over D3 in the statement of grounds. The opponent presented an inventive step attack based on D3 one month before the oral proceedings. The attack is not admitted.
• The Board, in the headnote: "Regarding the need for a timely [rejoinder of the appellant]: 
• 1. Under the Rules of Procedure of the Boards of Appeal (RPBA 2020), which have been in force since January 1, 2020, it is the responsibility of the parties to submit their submissions in the proceedings in good time so that the Board of Appeals can already take them into account when drafting the summons.
• 2. To the extent that the appellant cannot already submit a part of its submission in the statement of grounds of appeal, as Article 12(3) RPBA 2020 actually requires, because it is a response to attacks or auxiliary requests that are not already the subject of the contested decision but are submitted by the Respondent in the [appeal reply brief], a [rejoinder] is the appropriate means of choice for the Appellant to submit its response in good time. Precisely for this reason, Article 15(1) RPBA 2020 provides that the board shall endeavor to send the summons no sooner than two months after receipt of the reply to the appeal (according to Article 12(1) c) RPBA 2020).
• 3. The argument that it is unreasonable to have to present a cascade of lines of argument with regard to every conceivable assessment by the Board does not apply. In an inter partes appeal procedure, the parties have the duty to conduct the procedure carefully and expediently, for reasons of fairness towards the other party, but also in order to bring the procedure to a conclusion within a reasonable period of time. Article 13 (2) RPBA 2020 sanctions this obligation to promote proceedings.
• 4. The appellant's argument that it is reasonable for the board and the patent proprietor to deal with the discussion of a simple new matter during the oral proceedings ignores the influence on the further course of the proceedings. Discussing a line of argument for the first time at the oral hearing may lead to a situation in which the other party has to reconsider and, if necessary, adjust its line of defense for the first time at the oral hearing, leading to a significant delay in the procedure and to appropriate decision making at the hearing becoming difficult or impossible."

EPO T 2843/19

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

T 2612/19 - Medical method - omitting step does not avoid Art. 53(c)

Key points

• Is Article 53(c) EPC to be examined on the basis of the claims, or on the basis of the overall description?
• The Board: "if essential features of the invention are missing from the claim, these must be read into the claimed method when assessing whether it falls under the exceptions of patentability in accordance with Article 53(c) EPC."
• "It must therefore be clarified whether the claimed invention is fully and completely defined by the features of claim 1. For this purpose, the description, among other elements, must be consulted."
• Turning to the case at hand: "Claim 1 concerns a method of managing delivery of an orthodontic treatment plan [M1]. As argued by the appellant, the claim only mentions steps effectively performed before (features [M2] to [M4]) and after (features [M5] to [M7]) the actual treatment, i.e. the application of the appliances to the patient's teeth. However, as conceded by the appellant, the treatment step is a prerequisite for the claimed method to be applicable. This is not only evident from the wording of the claim and in particular from the step of comparing a digital representation of an actual arrangement of the patient's teeth following administration of a set of appliances to a planned arrangement (feature [M6]). For this step to be carried out, it is inevitable that the appliances have been applied to the patient's teeth beforehand. It is also evident from the flowchart in Figure 3A and the corresponding description (A-Publication, paragraphs [0021] to [0023]). Omitting the step 210 of administering appliances would render the step 212 of progress tracking meaningless since there would be no progress that could be tracked."
• "It follows that administering a set of appliances (the application of the appliances to the patient's teeth) is an essential feature of the invention. This method step must therefore be seen to be encompassed by the claimed method because otherwise the claimed invention would not be fully and completely defined by the features of the claim (see G 1/07, point 4.3.1 of the Reasons)."
• "The subject-matter of claim 1, therefore, is excluded from patentability under Article 53(c) EPC."
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EPO T 2612/19 -

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