Visser online update

Key points

• I'm pleased to announce that the September online update of Visser's Annotated EPC is now available  at Kluwer IP Law -  https://www.kluweriplaw.com/book-toc?title=Visser%27s%20Annotated%20European%20Patent%20Convention%202022%20Edition
• The legal cut-off date is 01.09.2022 

T 0456/19 - Biological control composition

Key points

•  Claim 4  is directed to: A biological control composition comprising:
  
  - at least one population of arthropod biological control agents [ claims 5: of the species the species Ambyseius swirskii - wiki],
  
  - a nutrient source comprising astigmatid mite eggs, characterized in that said nutrient source does not contain larvae, nymphs and adult astigmatid mites,
  
  - optionally, a support and/or dissemination substrate."
• The claims are held to lack an inventive step.
• The case is to some degree similar to Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948) (link), about a patent with claims directed to a mixture of naturally occurring (non-modified) bacteria.

EPO 

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

T 2964/18 - An illustrative example

Key points

•  In this post, I will walk through the decision to show how admissibility issues affect the outcome. The Board decides on 6 admissibility issues. 
• For the main request, the Board first decides on claim interpretation.
• The OD decided to maintain the patent in amended form. The opponent appeals. The Board then finds claim 1 to be not novel over D17 (claims as maintained by OD).
• AR-1 filed with the appeal reply brief of respondent/patentee is not admitted. This request was filed as AR-3 before the OD; the OD did not arrive at that request.
• "The board notes that the mere fact that auxiliary request 1 was formally filed during the opposition proceedings does not render it automatically part of the appeal case since its admittance had not been examined by the opposition division (T 0319/18, reasons, point 2.2)." 
• The Board decides that the request was not substantiated:  "The very general statement on page 10 of the reply to the appeal expressing that the auxiliary requests aimed to "further distance the claimed subject matter from the cited prior art in order to address allegations of lack of novelty and lack of inventive step" cannot be seen as an explanation of the technical significance of the amendment carried out in claim 1 of auxiliary request 1. Neither the board nor the appellant are put in a position to understand why the feature added to claim 1 would overcome the objections raised against claim 1 of the main request. Thus, auxiliary request 1 has not been substantiated." 
• " The fact that the appellant had not raised any objection against the (not yet filed) auxiliary requests has no bearing on this requirement. Thus, the statement on page 10 of the reply referred to above does not comply with the requirement for the respondent to present its complete case." 
• " Indeed, it is not immediately apparent which technical contribution the feature added to claim 1 of auxiliary request 1 would have brought over, inter alia, the disclosure of document D17. Requests which are not self-explanatory are considered to be submitted only on the date of their substantiation (see T 0217/10, reasons, point 5)." 
• The request was not substantiated and is not admitted.
• In AR-2, the Board finds use claim 11 to lack an inventive step. " there was no need for the board to take a decision on the admittance of this novelty objection of the appellant."  
• Requests 2A and 2B, filed after summons for oral proceedings in appeal, are not admitted.
• " The respondent argued that the amendments to the main request in auxiliary requests 2a and 2b consisted only in the deletion of claims." 
• " the deletion of both independent claims 1 and 12 of the main request did change the respondent's case to such an extent that new issues had to be discussed which the opponent could not be expected to be familiar with. It is not the task of an opponent to speculate about what amendments a patentee might make at a very late stage of the proceedings and to prepare pre-emptively for all of them (T 0248/13, reasons, point 4.5).' 
• " the board is of the view that the deletion of claims inevitably results in an amendment of the respondent's case. In fact, this deletion implies that it is requested that the patent be maintained in a form different than previously requested, with legal consequences for the patent's validity and scope. The board cannot see how this deletion could not be regarded as an amendment of the requests filed at the outset of the appeal proceedings. In the board's view, the respondent's case is amended if the claims are changed; it is not necessary that in consequence of these changes also the subject of the proceedings is changed. If the amendment of the claims does not lead to a different discussion on the merits, this will be a circumstance which the competent board may consider when, inter alia, exercising the discretion under Article 13(2) RPBA 2020.' 
• Turning to AR-3, the patentee objects to the admissibility of the attack based on D7. However, the attack was included on page 36 of the Statement of grounds and is hence admissible.
• AR-3 is found to lack an inventive step.
• AR-4 is admitted. No substantiation was required for the claim amendments involving deleting claims.
• The appellant had raised inventive step objections to the corresponding claims in the SoG, based on newly filed documents D25 and A027. However, these documents are not admitted.
• " for the reasons stated above, D25 and A027, and any objections based on them, have not been admitted into the proceedings. It follows that all objections based on these documents, inter alia, the above-mentioned inventive-step objections against claim 11 of auxiliary request 4, must remain unconsidered."
• The new inventive step objection, raised during the oral proceedings, is not admitted.
• " the board holds that in the current case, the number of auxiliary requests (17) filed with the reply to the appeal is not excessive, especially in view of the numerous inventive-step objections raised by the appellant in the statement of grounds of appeal. In fact, all D25, A027, D2, D7, D11, D12 and D19 had been indicated by the appellant as documents possibly representing the closest prior art for the claimed subject-matter. [] As a consequence, the board concludes that no exceptional circumstances exist which would justify raising the above-mentioned inventive-step objections only at the oral proceedings. " 
• AR-4 is found to be sufficiently disclosed. " None of the appellant's objections against the claims of auxiliary request 4 is admissible and convincing."
• The case is remitted with an order to maintain in amended form based on AR-4.

EPO 

The link to the decision is provided after the jump.

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T 0776/17 - Should have adjourned

Key points

•  The OD admitted a document filed by the opponent one month before the oral proceedings and then refuses a request for adjournment of the oral proceedings of the patentee.
• "As set out above, D18 was filed one month before the oral proceedings before the opposition division. Together with the filing of D18, the respondent [opponent] raised a novelty objection based on this document. Only during oral proceedings did the respondent also raise an inventive-step objection based on D18 as the closest prior art together with the assertion that no effect had been shown to be present "
• "Not providing the appellant [patentee] with sufficient time to react to this attack by granting its request to adjourn the oral proceedings represents a violation of the appellant's right to be heard within the meaning of Article 113(1) EPC. As set out above, the inventive-step attack based on D18 as the closest prior art comprised the assertion that no effect had been shown to be present. It is thus absolutely credible to the board that the appellant would have needed time to react, and thus the oral proceedings should have been adjourned. Since admittance of the inventive-step attack based on D18 led to the rejection of auxiliary request 2 [], the violation of the appellant's right to be heard constitutes a substantial procedural violation."
• "For the sake of completeness, the board notes that the conclusion made here that a substantial procedural violation occurred in relation to the opposition division's admittance of D18 is not in contradiction to the board's conclusion above [that] the opposition division applied the right principle[s] in a reasonable way [when it decided to admit D18]. The procedural violation does not arise due to the admittance of D18 but due to the fact that after this admittance, oral proceedings were not adjourned."
• "The opposition division's finding of lack of inventive step based on D18 as the closest prior art is tainted with a violation of the right to be heard under Article 113(1) EPC (see 25.1 above), and a causal link exists between the violation and the final decision since this objection was the sole reason for the opposition division that the second auxiliary request was not allowable, thus amounting to a substantial procedural violation. Since the appellant did not have time to file auxiliary request 3 before the opposition division, it was necessary to lodge an appeal. Under these circumstances, the board considers it equitable that the appeal fee be reimbursed in full in accordance with Rule 103(1)(a) EPC."
• Usually, a substantial procedural violation is also a ground for remittal, but a remittal is not discussed in the decision. 
• I just highlight that it is key for parties to actually request an adjournment of the oral proceedings during the oral proceedings before the OD once the OD decides to admit a submission of the opposing and a party feels insufficiently prepared to deal with it during the oral proceedings and wishes to preserve the issue for appeal. If you don't request an adjournment, you essentially forfeit the argument that you didn't have sufficient time in the first instance proceedings, possibly also for getting your response admitted in appeal under Art. 12(4) RPBA. So it seems safe to predict we will see this more often in the future. Of course, the risk for the opponent is that the OD will actually grant the adjournment and that the patent will be in force for a few more months even if ultimately invalid.
• The Board, when deciding to admit AR-3: "Contrary to the respondent's view, the appellant could not have been expected to react to the objection by filing the appropriate set of claims to overcome the objection during the oral proceedings before the opposition division. The new objection raised complex new issues to which the appellant could not be expected to respond on the spot during the oral proceedings (see also point 26 below). Thus, the appellant could only submit the third auxiliary request with the statement of grounds of appeal."

EPO 

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

T 0017/22 - At least one Communication

Key points

•  In this case, the Euro-PCT application, with the EPO as ISA, was refused after two notifications were issued: the Rule 161 Communication and "a communication under Rule 137(4) EPC headed "Invitation pursuant to Rule 137(4) and Article 94(3) EPC", accompanied by an annex raising an objection under Article 123(2) EPC".
• "The decision was based on the ground under Article 123(2) EPC and on lack of novelty, lack of inventive step and lack of clarity."
• The Board: "According to Article 94(3) EPC, if the examination reveals that the application or the invention to which it relates does not meet the requirements of the EPC, the examining division shall invite the applicant, as often as necessary, to file his observations and, subject to Article 123(1) EPC, to amend the application."
• "While the expression "as often as necessary" indicates that the examining division has discretion whether to issue more than one communication, at least one substantive communication pursuant to Article 94(3) EPC and Rule 71(1) EPC is required before a decision to refuse the application on such substantive grounds is issued [...]. Indeed, only if a preceding communication pursuant to Article 94(3) EPC sets out the essential legal and factual reasoning to support a finding that a requirement of the EPC has not been met, can a decision based on such a finding be issued without contravening Article 113(1) EPC (see T 305/14, point 2.3 of the reasons)."
• As a comment, I observe that neither Article 94(3) EPC nor Rule 71(1) EPC expressly requires that the Examining Division issues at least one communication. The applicant's right to be heard under Article 113(1) EPC however entails a right to be informed of the grounds for refusal and to be given an appropriate opportunity to address them. In the past, when the EPO's search report was only the search report proper, i.e. without any written opinion (and only stating X or Y for each document to give a hint of whether a novelty or inventive step objection was considered by the Search Division), the first Communication from the Examining Division was indeed the first time the applicant was informed of the objections. Hence, at that time the right to at least one communication from the Examining Division directly followed from Article 113(1) EPC.
• Note that the phrase "as often as necessary" requires some yardstick. 
• The present decision of the Board confirms that the rule that "at least one substantive communication pursuant to Article 94(3) EPC and Rule 71(1) EPC is required before a decision to refuse the application on [] substantive grounds" still applies.
• "A communication under Rules 161(1) and 162 EPC thus * cannot be considered a communication under Article 94(3) EPC, or a communication which would obviate the need for a communication pursuant to Article 94(3) EPC. This is furthermore confirmed by the Guidelines for Examination in the EPO which state that an application may not be refused directly after the reply to a communication under Rule 161(1) EPC (Guidelines C-V, 14)."
• The reason given by the Board is that " an amendment by the applicant's own volition needs to precede the stage of examination. Thus, a reply to the search opinion and any amendments made by the applicant of its own volition should be on file when the substantive examination starts"
• As a comment, it may also be argued that the Rule 161 communication as such does not state reasoned objections. 
• "The "Invitation pursuant to Rule 137(4) EPC and Article 94(3) EPC" can also not be considered a substantive communication under Article 94(3) EPC."
• " The communication under Rule 137(4) EPC, with a period for reply of one month, is, by contrast, of a formal nature. The applicant is merely asked to identify the amendments and to indicate the basis for them in the application as filed, independently of whether these amendments comply with Article 123(2) EPC"
• "The short period of one month specified in Rule 137(4) EPC for a reply is inappropriate for a reply to substantive issues."

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

T 1206/19 - (No) review of decision to admit

Key points

•  The OD decided to admit a prior art document. The patentee requests to Board to reverse this decision. The Board finds that the OD correctly admitted the document into the proceedings.
• "Thus, the board cannot see any reason to "unadmit" a document which had already been admitted by the first-instance department without the latter having committed any substantial procedural violation in that regard (which would normally lead to a direct remittal of the case). "
• The Board then adds that: "At any rate, as held in T 39/93 (cf. Reasons 3.1.1, second paragraph), no valid judgment on the merits of the first-instance's decision could be made if evidence that was admitted by the first-instance department would simply be "unadmitted" by a board (contrary to the conclusions drawn e.g. in T 960/15, Reasons 3 []).  
• The Board in more detail refers to: "contrary to the conclusions drawn e.g. in T 960/15, Reasons 3, applying the test proposed in an obiter dictum of G 7/93, Reasons 2.6, relating to the exercise of discretion under Rule 86(3) EPC 1973 (Rule 137(3) EPC"
• As a comment, the Board's remark regarding T 960/15 appears (somewhat) obiter because the Board reviewed the OD's decision to admit the document and found it to be fine.
• As a further comment, to cite the CLBA V.A.3.4.1.b.: "Although G 7/93 was concerned with a specific situation, namely an examining division's refusal to admit amendments after issuing a communication under R. 51(6) EPC 1973, the boards have applied the criteria established there to their review of other discretionary decisions of the departments of first instance (T 820/14, see also T 858/17). For instance, the same approach has been taken to reviewing opposition division decisions on the admission of late-filed submissions (T 1209/05, T 1652/08, T 902/09, T 1253/09, T 544/12, T 1882/13).”

EPO 

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