T 1634/17 - Sheets shown during presentation but no prior art

Key points

• The question is whether D11 is prior art. "document (11) is a copy of the slides used by [Dr. Murphy] during the presentation held on 3 November 2009 at Hinxton, UK. The presentation with the title "BAC-based Modifications of the Mouse Genome: The Big and the Backward" took place at the Wellcome Trust in an advanced course entitled "Wellcome Trust Advanced Course: Genome Manipulation of ES Cells". According to Dr Murphy, neither hard copies were handed out to the audience nor electronic copies of the slides were distributed ".
• "It is common ground between the parties that Dr Murphy's presentation took place on the date and place described above." "according to Dr Murphy, all slides were shown to the audience"
• "the presentation took less than one hour, i.e. the 58 slides reproduced in document (11) were shown in less than one hour "
• "the relevant question is not what was presented or shown to the audience but what was actually conveyed to the public, i.e. what the audience took away from Dr Murphy's presentation. In line with the examples in the case law, providing (at least) a contemporary written note from a member of the audience present at this presentation might be an important and decisive element in the evaluation of evidence (cf. T 1212/97, point 7 of the Reasons; T 2003/08, point 42 of the Reasons)."
• T 1212/97 headnote: "The information content made publicly available by a lecture cannot be put beyond reasonable doubt by any evidence of the lecturer alone, as the lecturer is in a quite different position to a member of the audience".
  
• " None of the declarations on file (documents (23) to (28), (30), and Dr Meng (Amy) Li's witness testimony) is indeed a contemporary written note taken at Dr Murphy's presentation. "
• "Although ... some members acknowledge in their declarations  [from 2016] to have taken such notes, none of them has actually been ever produced "
• " Following the laboratory meeting [of the group of Prof. Bradly on 4 November 2009, including some members of the audience of Dr Murphy's presentation], Professor Bradley compiled on 6 November 2009 a summary of "what we had learnt from Dr Murphy's presentation" that was circulated to the participants of this meeting on 9 November 2009 []). None of these documents is thus contemporary to Dr Murphy's presentation and all of them were produced after conversations, discussions and a meeting that took place [in the group of Prof. Bradly] well after Dr Murphy's presentation among members of the audience who, to use Professor Bradley's own words, "had a particular interest in attending the 2009 presentation by Dr Murphy from Regeneron, because ... had great relevance to our own work".
• "[There can be no] doubt that, in view of the interest/relevance of Dr Murphy's presentation, conversations, discussions and comments on this presentation took place among such a group of skilled persons immediately after this presentation"
• "The fact that all these discussions, conversations and comments took place after Dr Murphy's presentation and before the compilation of a summary of this presentation by Professor Bradley [...] as well as before the statements/declarations of the members of the audience of Dr Murphy's presentation on file (documents (23) to (28), and (30)), is to be taken into account. This has not been done by the opposition division. After all, the board can thus not agree with the opposition division's conclusion that the relevant "information content" was indeed made available and conveyed to the audience in Dr Murphy's presentation."
• " Since, as a consequence, document (11) does not form part of the state of the art, no information can be derived therefrom"

EPO 

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

T 1614/18 - Late filed but prima facie relevant before the OD

Key points

• First-instance opposition proceedings are a different game than opposition appeals, as illustrated by the present decision.
• "The appellant (patent proprietor) contested the decision of the opposition division to admit the late filed document D6."
• The Board: "the competent department [i.e. the OD] has in fact to take such a late filed and "prima facie" relevant evidence into consideration no matter what stage the procedure has reached and whatever the reasons for the belated submission."
• The Board adds that this is "stated in the EPO "Guidelines" VI, 2.1"". Presumably, GL E-VI, 2 is referred to: "In deciding whether to admit facts, evidence or grounds for opposition not filed in due time, their relevance to the decision, the state of the procedure and the reasons for belated submission are to be considered. If examination of late-filed grounds for opposition, late-filed facts or late-filed evidence reveals without any further investigation (i.e. prima facie) that they are relevant, i.e. that the basis of the envisaged decision would be changed, then the competent department has to take such grounds, facts or evidence into consideration no matter what stage the procedure has reached and whatever the reasons for belated submission. In that case, the principle of examination by the EPO of its own motion under Art. 114(1) takes precedence over the possibility of disregarding facts or evidence under Art. 114(2) (see T 156/84).".
• " the Board confirms the conclusion of the opposition division that document D6 is not prejudicial to novelty of claim 1 as maintained."

EPO 

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

T 1081/20 - Discretion independent of Rule 116

Key points

• The OD did not admit an auxiliary request.
• "The admittance of this request was at the opposition division's discretion pursuant to Article 123(1) EPC in conjunction with Rules 79(1) and/or 81(3) EPC (rather than Rule 80 EPC; see T 256/19, Reasons 4.7 [blogpost]). This discretion exists independently of the provisions of Rule 116 EPC (see T 966/17, Catchword 3). A board should overrule such a discretionary decision only if the wrong principles were applied or if the decision was taken in an unreasonable way."
  
• T 0966/17 was discussed here. Headnote 3 of that decision reads: "If the patent proprietor reacts with new requests to a new line of attack by the opponents and a newly filed document in this respect, the decision on admission can take into account whether the requests prima facie appear allowable or whether they should be rejected anyway due to other objections that were in the procedure for some time (see reasons, point 2.4).".
• " In respect of auxiliary request X [filed as "auxiliary request 1a" during the oral proceedings before the opposition division], the opposition division assessed inter alia "prima facie allowability", which is an established criterion as regards admittance. As to the right to be heard, the appellant was additionally given the opportunity to refute the objections raised by the respondent under Articles 123(2) and 84 EPC (cf. minutes, page 5, paragraphs 35 and to 37). The board sees therefore no reason to overrule the opposition's discretionary decision."
• Note,  T 0754/16 held that: "Under Rule 116(2) EPC, requests filed after the final date set for making written submissions, can only then not be admitted if the patent proprietor had been notified of the grounds prejudicing the maintenance of the patent. " (which is possibly not the right interpretation Rule 116(2), see  T 1776/18). 

EPO 

The link to the decision is provided after the jump.

T 2204/18 - Was given the opportunity to comment on their admittance

Key points

•  The opponent argued that this request was filed during first instance opposition proceedings one day after the expiry of the time limit laid down in Rule 116(1) EPC. Therefore this request was late filed and should be "treated as such" 
• "The board is of the opinion that [the reasons given below] show that the opposition division properly exercised its discretion "
• As the opposition division confirmed that this request was filed after the time limit laid down in Rule 116(1) EPC (see decision, point 3.1, first sentence), the board is of the opinion that the opposition division was aware that this request was filed late. According to the decision [...] , the opposition division exercised its discretion in admitting this request to the opposition proceedings because the substance of the amendments was prima facie relevant and a fair response to the opponent's arguments and the division's opinion in the summons.
• Apart from that, a request that was admitted in the first instance opposition proceedings is part of the appeal proceedings (see Case Law, V.A.3.4.4).
• Note, this may not exclude the possibility that taking a decision on the request without giving the other party a sufficient opportunity to reply, is a substantial procedural violation such that the appealed decision is to be set aside and the case is to be remitted.
  
  
• " The board is of the opinion that the opposition division properly exercised its discretion in deciding not to consider, i.e. not to admit, the auxiliary requests. Not admitting requests submitted by the proprietor does not constitute a breach of the proprietor's right to be heard, provided that the proprietor has been given the opportunity to comment on their admittance (cf. Case Law of the Boards of Appeal of the EPO, 10th ed. 2022, section V.A.5.6, in particular R 9/11). As explained above, this was the case. Whether this was done in a perfunctory manner cannot be confirmed by the facts available from the minutes or the decision."
• This holding could be seen as implying that the OD can hold requests inadmissible in an arbitrary and capricious way, provided they first listen to the patentee's arguments in favor of admissibility. I'm not sure if that is the correct approach, but the Board refers to a decision of the Enlarged Board. 
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•  EPO 

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

T 0526/21 - Agreeing with choice CPA is abandoning other attacks

Key points

•  " The Board observes that the [inventive step] attacks based on D24 and D34 were raised in writing during the opposition proceedings in reply to the preliminary opinion of the opposition division []. However, the minutes of the opposition oral proceedings (see point 19.) indicate that "The three opponents agreed that D9 was the closest prior art. The proprietor argued that example 2 of D2 would be a better closest prior art [...]". According to the minutes, the choice between D2 and D9 as closest prior art was then discussed but no other document was considered by any opponent. None of the appellants requested a correction of the minutes. In line with T 2730/16, the Board considers that the attacks starting from D24 and D34 were not actively maintained."
• "It follows that these attacks do not form part of the appeal proceedings according to Article 12(2) RPBA 2020. Their admittance into the appeal proceedings is thus at the discretion of the Board according to Article 12(4) RPBA 2020."
• "The implicit abandonment of the attacks based on D24 and D34 by appellant 1 prevented the decision from being based thereupon. A re-introduction of these attacks would be against the purpose of the appeal proceedings to constitute a judicial review of the appealed decision and against procedural economy."
• Note, the Board here seems to apply Art. 12(6).
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EPO 

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

T 1841/18 - A visit of a factory as prior art

Key points

• "Both parties agree that Mr. G. inspected a machine supplied by the patent proprietor during a visit to Caffitaly before the filing date of the patent in suit."
• This is asserted as a public prior use.
• "The opposition division decided, after having heard Mr. G. as a witness [see the minutes], that the above mentioned inspection did not amount to a disclosure of the inspected machine because the circumstances of the inspection implied the existence of an obligation to maintain secrecy."
• There was a confidiality agreement between Caffitaly and GIMA. GIMA was the parent company of IMA, and IMA is the employer of Mr. G.
• "Mr. G. during the inspection, acted in the best interests of GIMA and IMA, which was to keep the observed technical information confidential", according to the OD.
• "there is no evidence on file of the existence of a non-disclosure agreement directly involving IMA at the time of the inspection because the non-disclosure agreement contained in D1m was signed by GIMA and Caffitaly"
• "Mr. G.was therefore not directly bound by these contractual obligations, irrespective of the extent thereof"
• "Document D1r, ... only shows that IMA owned 65% of the shares of GIMA."
• "the transfer to IMA of the totality of the [GIMA's] business assets was only finalized after the inspection, and there is nothing in D1r supporting the patent proprietor's allegation that when IMA acquired a controlling majority of the shares of GIMA (65%, see D1r), also these specific secrecy obligations were taken over."
• " the witness [Mr. G.] explicitly confirmed that he was not aware of any confidentiality obligation during the inspection (page 8, second paragraph of the minutes of the taking of evidence), and that at that time GIMA was a competitor of IMA" 
• " the opponent convincingly demonstrated that the assumption, at the basis of the appealed decision, that Mr. G. was not a member of the public, is unjustified. 
• As a consequence of the above, the opponent also convincingly demonstrated that the inspected machine (see D1e) was made available to the public, and is therefore prior art."
• The patent is revoked.
• I note that the Board also mentions that  "Caffitaly signed a non-disclosure agreement with the patent proprietor" and that "the patent proprietor [submitted documents] to show that the sale of the allegedly disclosed machine was made under secrecy".
• The visit was on 25.08.2010. The patent's filing date was more than six months later, on 16.03.2011. Article 55 is, therefore, of no avail.
• The declaration of Mr. G. does not seem to explain why he visited the site and, especially, why he was granted access.
• As a comment, however, without checking the complete file, there appears to be no evidence on record from Caffitaly confirming that they granted Mr. G. access to their site without expecting any confidentiality and giving any explanations of why they did so. The OD notes in its decision that Mr. G stated that "he was not aware of the specific details regarding the organisation of the visit as it had been organised by Mr. T.". Mr. T. also was present during the visit but gave no witness testimony.  
• I find the Board's decision remarkable. However, courtesy obliges me to comment no further here.
• There is also an issue of the effect of a national court's judgement on the matter discussed in the decision.
• Note, there is also a case T 1814/18 that is closely related. 
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• EPO 

The link to the decision is provided after the jump.

R 0011/21 - When to object under Rule 106?

Key points

• In my post about T1891/20, I raised the question whether "it make sense to raise an objection under Rule 106 after the Board orally announces "its decision not to admit the auxiliary request into the proceedings"? Can a Rule 106 objection be raised pre-emptively before the Board commits the (perceived) procedural defect?"
• The Enlarged Board in this decision gives a partial answer, by finding that "an objection [under Rule 106 EPC] cannot be raised before its cause has actually come into existence".
• "The petitioner [patentee] submitted that the non-admittance of the auxiliary requests [filed with letter] of 13 January 2021 into the proceedings constituted a first fundamental procedural defect."
• "Regarding compliance with Rule 106 EPC, the petitioner referred to page 15, paragraphs 3 to 5, of the letter dated 13 January 2021 [where] the [patentee] announced, "for merely precautionary reason", that it would challenge "any contrary decision [i.e. to hold the auxiliary request inadmissible]" by filing a petition for review according to Article 112a EPC."
• The Enlarged Board: "Under Rule 106 EPC, the objection has to be raised in respect of "the procedural defect" and dismissed by the Board. This implies that an objection cannot be raised before its cause has actually come into existence. The purpose of Rule 106 EPC is to give the Board a chance to react immediately and appropriately by either removing the cause of the objection or by dismissing it (see also Case Law of the Boards of Appeal, 10th edition 2022, "CLBA", V.B.3.6.1 and R 3/20, point 2.2.1 of the reasons). In other words, an objection cannot be formulated prematurely (see R 8/08, point 1.2.2 of the reasons; R 17/10, point 2.3 of the reasons; R 21/11, point 10 of the reasons)."
• "The statements on which the petitioner is relying were contained in the letter dated 13 January 2021, with which the new claim requests were filed and, hence, at a point in time at which the Board had not yet taken any steps concerning these claim requests."
• Note, this leaves open that it is sufficient to object if a Board had taken some step concerning the admissibility of the claim requests.
• "As far as the appeal procedure subsequent to the filing of the letter dated 13 January 2021 is concerned, there is nothing on file - neither in the petitioner's submissions before the Enlarged Board nor in the minutes of the oral proceedings before the Board - which would suggest that the petitioner made submissions which could qualify as an objection under Rule 106 EPC."
• "the petitioner has not submitted - nor was it apparent to the Enlarged Board - that an objection could not have been raised during the appeal proceedings, for instance at the oral proceedings before the Board."
• " it must be concluded that the requirements under Rule 106 EPC have not been met in relation to the asserted procedural defect concerning the non-admittance of the auxiliary requests of 13 January 2021. As regards this complaint, the petition is therefore clearly inadmissible."
•  Take away message: object, object, object; and repeat the objection all the time (until case law clarifies the right time to object).
  
  
• The petitioner also challenged the decision to hold the claim request inadmissible by arguing that the decision on that point was insufficiently reasoned, which in turn can qualify as a violation of the right to be heard. This 

EPO 

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