T 1137/21 - European style drafting and Art.123(2)

Key points

• The patent relates to a preparation process. Broad and more preferred ranges are given in the application as filed for the various parameters (temperature, pressure, amounts, types of reagents). 
• "The appellant [proprietor] argued that claim 1 of the main request was based on claims 1, 4, 9, 11, 13 and 17 as originally filed. The inventive examples were pointers since all of them fell under the wording of the claim at issue. Therefore, claim 1 did not present the skilled person with new information."
• The Board: "Claim 1 as originally filed in combination with the dependent claims and the general part of the description covers a large number of possibilities relating to: - the nature of the zeolitic material; - numerous steps of the post-treatment process and sequences of those steps; - numerous operating parameters to be respected during the process steps; Furthermore, many features of claim 1 of the main request are claimed in varying degrees of preference in the dependent claims and/or in the general part of the description."
• "In a case such as this, a systematic approach to deciding whether the requirements of Article 123(2) EPC are met cannot be followed; this has to be decided on a case-by-case basis". "Regarding claim 1 of the main request, the appellant has not indicated a single passage of the original application that discloses - in combination - the features of claim 1 of the main request. Claim 1 is the result of a multiple selection of a very specific combination of features from different dependent claims as originally filed. These selections are made from among numerous possibilities and different degrees of preference:"
• "In addition and by contrast, none of the options of dependent claims 2, 3, 5 to 8, 10, 12, 14 to 16 and 18 as originally filed have been inserted into claim 1. In view of the sheer number of possibilities, the subject-matter of claim 1 at issue is not directly and unambiguously derivable from the dependent claims, even when the general part of the description is taken into account."
• "It is true that the inventive examples still fall under claim 1 of the main request. However, these examples are not sufficient as a pointer to the specific selection defined in claim 1 since they fall under the most preferred options of the various parameters and ranges.  Claim 1 thus corresponds to a multiple selection from a large number of lists and possibilities without a specific pointer."
• "rocess claim 1 of the main request therefore does not meet the requirements of Article 123(2) EPC.  Contrary to the appellant's opinion, there is no diverging case law in this regard either."
• "the conditions of T 1621/16 relate to selections from lists of converging alternatives. However, as regards the period in step (ii)(b) of claim 1 at issue, the appellant chose to combine the preferred lower end point 1 h and the broad upper end point 24 h of claim 9 as originally filed. By arbitrarily combining the end points, the appellant has taken claim 9 as originally filed not as a list of converging alternatives but as a kind of pool of elements from which individual elements are combined. Therefore the selections made in claim 1 cannot be considered selections from a list of converging alternatives. The board notes in this regard that the appellant has not disputed the respondent's view that the case in hand also includes selections from non-converging lists."

EPO 

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

T 1586/21 - Use the rejoinder

Key points

• The opponent appeals against the decision of the OD that the main request was allowable.
• The Board agrees with the opponent that claim 1 as granted is obvious over D11.
• The patentee as respondent filed Auxiliar Request 1 in appeal. 
• "During the oral proceedings the appellant argued that in their letter they submitted an inventive step objection which contained all arguments put forward during the opposition proceedings as regards auxiliary request 1, which corresponded to the auxiliary request 1 underlying the contested decision and upon which the Opposition Division did not decide."
• The letter was filed after the summons for oral proceedings.
• "The Board judges that the circumstances of the present case do not qualify as exceptional. The respondent with the reply to the statement of grounds of appeal resubmitted the auxiliary requests which correspond to those filed before the Opposition Division. Said reply was filed on 4 April 2022 and the summons for oral proceedings were sent on 22 February 2023. The appellant had ample time to file the objections submitted with letter 3 April 2023 before the summons to oral proceedings in order to complete its appeal case. The more so, since these objections allegedly represent a mere resubmission of objections filed during the opposition proceedings."
• "Since there are no reason justifying the amendment to the appellant's case consisting in filing the inventive step objection with letter of 3 April 2023, and since there are a fortiori no reasons justifying completing and/or substantiating inventive step objections during the oral proceedings before the Board, these objections are not taken into consideration pursuant to Article 13(2) RPBA 2020."
• Note, that if the arguments had been filed under Art. 13(1), they should logically have been admitted  under Art.12(4) (the "admissible raised and maintained exception").
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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 1484/19 - Request after decision

Key points

•  "With its letter dated 24 November 2022, the patent proprietor (respondent) stated that it no longer approved the text in which the patent had been granted and would not submit an amended text. It also withdrew all auxiliary requests filed during appeal proceedings."
• "In the morning of 29 November 2022, the board issued its decision revoking the patent in the absence of a text agreed by the respondent (Article 113(2) EPC). The decision was authenticated at 09.20 hrs CET by the Chairwoman and at 09.57 hrs by the Registrar and sent to the postal service for dispatch at 10.01 hrs."
• "By letter dated 29 November 2022, filed electronically and received at the EPO at 14.55 hrs CET, appellant 2 requested a partial reimbursement of the appeal fee under Rule 103(3)(a) EPC and apportionment of costs."
• "the board therefore considered the issue of whether, in light of decision G 12/91 (OJ EPO 1994, 285), appellant 2's request for apportionment of costs, which was filed on the day of completion of the internal decision-making process for the decision of 29 November 2022, was submitted in time for it to be considered by the board. The board concluded that the completion of the decision-making process within the meaning of decision G 12/91 had to be determined with reference to a date and not an hour or an exact time on a date. Consequently, appellant 2's request was filed after the decision-making process had been completed."
• "the board also questioned whether decision G 12/91 was concerned with a decision as to substance but not with a situation as in the current case in which appeal proceedings are terminated without a decision. Indeed, under the established case law, a withdrawal of appeal terminates the proceedings on the merits at once (without decision as to substance), but the board still has the power to decide on ancillary questions such as the reimbursement of the appeal fee"
• "it could be argued that the decision of 29 November 2022 brought the appeal proceedings to a close for the substantive merits of the appeals ... while leaving ancillary questions like costs open to a decision. Consequently, the board would have the power to decide on the request for reimbursement of the appeal fee and for apportionment of costs filed after the completion of the internal decision-making process."
• " It can be left open whether and, if so, to what extent legal certainty imposes limitations as to the admissibility of a request for apportionment of costs filed after termination of the appeal proceedings (in line with the approach taken in T 1556/14 of 15 October 2020) as the current request is not allowable for the following reasons." 
• The Board issues a preliminary opinion on 09.11.2022, in advance of the oral proceedings scheduled for 01.12.2022 (!) (summons 18.01.2022). The proprietor then disapproved the text of the patent on 29.11.2023. The Board sees no abuse of procedure in this action of the proprietor. 
• As a comment Rule 115 EPC only specifics a minimum period of 2 months notice for the summons, Art. 15(1) RPBA specifies a period of four months for the summons, and Art. 15(1) sixth sentence RPBA only specifies that the Board " shall endeavour to issue the [preliminary opinion] at least four months in advance of the date of the oral proceedings". Apparently, sometimes the preliminary opinion is issued less than one month in advance.

EPO 

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

T 2705/19 - Calling names (of polymers)

Key points

•  In what might be also relevant for G 1/23, a decision about sufficiency of disclosure and commercially available polymers.
• " Claim 1 relates to an aerosol hairspray product having a formulation which requires a mixture of a "hard" hairstyling polymer and a "soft" hairstyling polymer. The two types are defined by the chemical composition, glass transition temperature and molecular weight." 
• " Paragraph [0042] of the patent discloses Acudyne**(TM), Balance**(®)CR, Amphomer**(®)and DynamX**(®) H2O as suitable polymers. The first three have the chemical nature of "hard" polymers; DynamX**(®) H2O is a "soft" polymer." 
• " The appellant [opponent]  argued that the types of polymers required by claim 1 were not clearly disclosed for the claimed invention to be reworked." 
• " Of the polymers wich could be "hard" in view of their chemical composition, Balance**(®) CR did not have the required molecular weight. The appellant argued that there were reasonable doubts if any disclosed polymer had the required properties." 
• " The appellant  [opponent] did not argue, let alone provide evidence, that polymers having the properties required by claim 1 were either not available or could not be prepared. The appellant's argument hinged on whether polymers suitable for the claimed invention could be reliably identified." 
• As a comment, the precise meaning of "available"  and "could be prepared"  (as well as the double negative in the sentence) could be an interesting aspect of G 1/23. Is it sufficient for Art. 83 that an ingredient of the claimed composition can be bought under its tradename? What if there is only a single supplier that is able to manufacture the ingredient using a secret process? What if manufacturing the ingredient without knowledge of the secret process requires inventive skills?
• " even if the polymers cited in the description of the patent lacked the properties required by claim 1, the Board sees no reason why a skilled person could not have found suitable alternatives." 

EPO 

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

T 1906/19 - On the meaning of Art. 13(2) RPBA

Key points

• " The Board understands [the wording of Article 13(2) RPBA 2020] as laying down a basic rule but leaving some limited leeway for exceptions. The basic rule is that amendments are not considered unless there are exceptional circumstances justified by cogent reasons (by the submitting party). The leeway for deviating from this rule lies in the expression "in principle" ("en principe"; "grundsätzlich"), which the Board reads roughly as "as a rule", meaning that the provision's basic rule is not entirely without exception. This leeway, when applied, means that an amendment can be considered despite the absence of exceptional circumstances justified by cogent reasons." 
• Art. 13(2) RPBA in relevant part: " Any amendment to a party's appeal case made after [the summons to oral proceedings]  shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned."
• Cf. T2125/18 .
• The idiomatic phrase "as a rule" means "usually".
• " Article 13(1) and (2) RPBA 2020 defines the second and third levels of the convergent approach practised by the Boards of Appeal when deciding on admission. Together with the first level specified in Article 12(4) RPBA 2020, Article 13(1) and (2) sets increasingly stringent hurdles for the admission of new requests and other amendments. This stepwise approach for deciding on the admission of amendments would lose some of its coherence and convergence, if the Boards could exercise discretion on the first two levels but not the third. This Board interprets the passage "shall, in principle, not" as indicative of a remaining (though restricted) discretion." 
• Turning to the facts of the case: " In the present case, the [applicant/appellant] did not follow the common practise, [viz.] when submitting amended requests, of maintaining at least some previous requests  (seemingly) out of fear of being left with no admissible requests. This practice [i.e. not simply filing amended claims, but filing amended claims as additional auxiliary requests] sometimes means the Board and parties have to spend considerable time on requests that even the applicant or proprietor no longer thinks are viable. Instead, the appellant gave the Board a single set of claims to consider. It is true that it was twice further amended during oral proceedings, but the amendments were, in each case (including those filed before oral proceedings), straightforward, within the limits of the debate, and finally led to a set of claims that was, prima facie, clearly allowable." 
• " The succession of requests in the present case was not detrimental to procedural economy. There was no inconvenience for the Board, and no other party to the proceedings was affected." 
• "  The primary reason for the convergent approach is procedural economy. It would be unfortunate if it were so strictly applied that appellants, in ex parte proceedings, were seriously discouraged from filing a promising and facilitating new request and dropping non-viable requests." 
• " The circumstances in this case might, arguably, be exceptional; but whether they are or not, the Board, noting that the criteria under Article 13(1) RPBA 2020 come out favourably for the appellant, exercised the discretion provided by "in principle" in Article 13(2) RPBA 2020 and decided to admit the sole request." 
• As a comment, this approach seems sensible and pragmatic. I hope it will not remain an isolated decision. 
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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 1538/19 - Correction of debit order

Key points

• The appellant pays the appeal fee at the reduced rate by debit order. After an invitation of the Board to submit evidence of the SME status, the appellant requests a correction of the debit order.
• " The Board is convinced that by filing the appeal the appellant had the intention to pay the full appeal fee. In its supplemental declaration of 3 September 2020 the appellant's professional representative convincingly stated that it had never been his intention to pay the reduced fee - because his client never gave such an instruction - and that the error occurred simply because a member of the support staff ticked the wrong box on the form which he then overlooked. This is also in line with point 5 of the declaration of the representative's assistant, dated 6 March 2020. The Board has no reason to mistrust these statements. By contrast, nothing in the file indicates that the payment of the full fee could not have been intended. The Board therefore concludes that, in this case, the submitted evidence meets the requirements set out by the Enlarged Board." 
• The appeal is considered to have been filed. 

EPO 

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

T 1140/21 - Hair processing and industrial applicability

Key points

• Art. 57 is not discussed in this opposition appeal.
• ""1. A method for processing hair, which comprises mixing while stirring a hair processing composition comprising [compound X and Y] and applying the composition to hair to allow a silanol compound [having formula Z], to penetrate into the hair.""
• Now, as a question to readers, how is this method susceptible of industrial application, as required by Art. 52?
• The same question can be asked about T1486/20, wherein claim 1 was about: "A process of treating the hair comprising the following consecutive steps..."
• The answer is T 144/83:  "   It is the view of the Board that the invention also complies with the requirements of Article 57 EPC. According to the article the invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry. That this is the case of the present invention is not in doubt since it can be used by enterprises whose object is to beautify the human or animal body. Such enterprises in the cosmetic field - such as cosmetic salons and beauty parlours - are part of industry in the sense of Article 57 EPC, since the notion of concept "industry" implies that an activity is carried out continuously, independently and for financial gain. The Board has already decided that "the professional use of such inventions in a cosmetic salon is an industrial application in the sense of Article 57 EPC" (cf. unreported decision in case T 36/83, of 6 May 1985)."
• T 36/83: "The applicants have chosen the phrase "use as a cosmetic product of thenoyl peroxide". The Board considers that this form of claim is acceptable in the case in suit. In the Board's opinion the question of industrial application does not arise, since professional use of the invention in a beauty parlour is an industrial application within the meaning of Article 57 EPC."
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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.