T 1758/15 - Not a second medical use

Key points

• Claim 1 is directed to "a biocompatible, biodegradable filler material for injection and for use in radiation treatment [wherein the filler is injected between a first and a second tissue and] educes passage of radiation into the second tissue" . The composition is not further defined and e.g. collagen can be used. The Board finds that the claim is not novel, because it is not a proper second medical use claim. The Board notes that the effect is by the filler spacing the second tissue apart from the radiation source, e.g. by its 3D shape. Therefore "the accumulated mass of the filler material does not, however, qualify as a chemical entity or composition of chemical entities in the sense of G 5/83."
• For Auxiliary Request 1,  claim 1 "defines a method of injecting a biocompatible, biodegradable filler material into a space between the prostate and the rectum. " This is considered a method of treatment by surgery. 
It is noted that [claim 1 of a further request"  additionally comprise a disclaimer "excluding methods according to Article 53(c) EPC". In view of the above analysis, the disclaimer essentially deprives the claim of any content. In addition to not being allowable under Article 53(c) EPC, these claims are thus internally contradictory and hence not clear (Article 84 EPC).
• The Board also sees a substantial procedural violation because the OD announced that it would not accept further auxiliary requests during the oral proceedings, after the patentee requested to file an additional auxiliary request. The OD indicated that "the opposition division considered four attempts (Auxiliary requests 1-4) to overcome a single issue sufficient and will not admit an additional Auxiliary Request into the proceedings"
• " Therefore, - the [patentee]'s explicit request to be allowed to file a further request having been refused upfront - the opposition division was not in a position to consider and weigh up in this respect the relevant facts of the particular case. Without knowing the content of the request, it was impossible e.g. to assess whether the amendments were appropriate, i.e. a fair attempt to overcome the objections, and whether or not the request was prima facie allowable.
The opposition division thus concluded, in an unjustified manner, that four auxiliary requests (of which only three had been filed during the oral proceedings) were enough. It thus did not exercise its discretion pursuant to Rule 116(2) and Article 114(2) EPC in a reasonable way, which constitutes a substantial procedural violation."

EPO T 1758/15 -  link

V. Claim 1 of the main request reads as follows:

"A biocompatible, biodegradable filler material for injection and for use in radiation treatment whereby the filler is injected into a space between a first tissue of a body and a second tissue, and whereby the first tissue is treated by radiation whereby the filler within the space reduces passage of radiation into the second tissue."

Reasons for the Decision

1. Procedural violation

1.1 Denial of the opportunity to file an additional request

1.1.1 The appellant essentially complains that although the objection under Article 54(5) EPC had only been introduced by the respondent with submission dated 15 May 2015, the opposition division - after accepting two genuine and bona fide requests into the proceedings - arbitrarily refused to admit a further request, before even seeing it. The respondent, on the other hand, essentially argues that the opposition division never refused to entertain further requests because none had actually been filed, the extremely late filing of several auxiliary requests being in any case an abuse of procedure.

T 0128/14 - Respondent needs to respond

Key points

• If an opponent appeals, the patent proprietor needs to submit with its Statement of response any auxiliary requests that are responsive to opponent's arguments why the impugned decision is incorrect. The patent proprietor can not file such requests after the preliminary opinion of the Board, even if (as in the present decision), that is "the first time that an indication [comes] from an organ of the European Patent Office that there might be deficiencies with the patent". 
• The Board finds that argument of patentee for admissibility  not convincing, and comments that " it does not serve to justify the admissibility of these late filed requests. This is in particular because the Board did not take position on matters going beyond those set out in the submissions of the parties. The appellant [opponent] in the statement of grounds of appeal explained why it considered the conclusions of the opposition division to be incorrect. It was incumbent on the respondent [patentee] to formulate requests to address all the arguments put forward, in particular insofar as the appellant [opponent] considered the conclusions of the opposition division flawed.

6. Fourth to sixth auxiliary requests - admittance

These requests were filed after issue of the communication of the Board [annexed with the Summons]. The initially filed versions contained an error which was noted by the Board and resulted in a [second] communication, leading to corrected versions being submitted.

All of these requests present various combinations of subject matter resulting in part from restrictions of existing features (fourth and fifth auxiliary requests) or additionally specifying the nature of the contents of the packaged product (sixth auxiliary request) - see section VIII, above. This gives rise to questions concerning the basis for the amendments made (Article 123(2) EPC).

In the letter filing these requests explanations as to the rationale and the issues which these were intended to address were provided. These explanations however referred in a large part on the submissions made in the response to the statement of grounds of appeal and a subsequent letter, prior to issue of the summons by the Board. Crucially the respondent did not explain whether or in what manner the amendments resulting in the fourth to sixth auxiliary requests were directed to addressing the issues identified as significant by the Board in its communication [annexed with the Summons. This in turn leads to the conclusion that the amendments made could in fact have been filed earlier in the appeal proceedings.

The argument of the respondent that the communication of the Board was the first time that an indication came from an organ of the European Patent Office that there might be deficiencies with the patent is not convincing and does not serve to justify the admissibility of these late filed requests. This is in particular because the Board did not take position on matters going beyond those set out in the submissions of the parties. The appellant in the statement of grounds of appeal explained why it considered the conclusions of the opposition division to be incorrect. It was incumbent on the respondent to formulate requests to address all the arguments put forward, in particular insofar as the appellant considered the conclusions of the opposition division flawed.

In addition it is not immediately apparent for the Board how these requests would address all the pending issues, in particular with respect to inventive step.

Under these circumstances the Board finds it appropriate to exercise its discretion under Article 13(1) RPBA by not admitting the fourth to sixth auxiliary requests to the procedure.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

T 1889/13 - Same Board members as before

Key points

• In this opposition appeal, two members of the Board had also taken part in an earlier decision in an examination appeal about a divisional application of the present patent. The patentee raises an objection of suspected partiality.
• " The appellant argued that a board should not be put in a position wherein its members are forced to either confirm or not their previous own judgment. However, the right to a lawful judge also includes the right to a judicial body having a foreseeable composition in accordance with a predetermined business distribution scheme. There may be unavoidable conflicts between the wish for a completely detached board and the requirements of the business distribution scheme from which deviations are allowed only in specific circumstances. In cases where three or more proceedings are related to each other (e.g. a parent and two divisional applications), it would normally be impossible to compose three non-overlapping boards within the business distribution scheme." 
• The objection is dismissed. 

EPO T 1889/13 - link

Summary of Facts and Submissions

I. The appeal lies from the decision of the opposition division to revoke European patent No. 1 458 425.

II. In its statement setting out the grounds of appeal, the appellant (patent proprietor) requested that the members of the board who were involved in decision T 1676/11 (not published in OJ EPO) relating to divisional application No. 09159082.8 of the opposed patent be excluded from taking part in the present appeal proceedings for suspected partiality under Article 24(3) EPC.

The members who took part in T 1676/11 and who are affected by the objection are the chairman and the rapporteur of the board in its original composition.

Reasons for the Decision

1. Scope of the interlocutory decision

The present decision was taken by the alternate board composition established under Article 24(4) EPC in order to decide on an objection of suspected partiality raised under Article 24(3) EPC (see above points II, VI). In accordance with the procedure described in decision T 1028/96, the board in its original composition decided in its interlocutory decision of 20 May 2015 that the objection was admissible (see above point V). Said interlocutory decision is binding on the present (alternate) board. The scope of the present decision is therefore limited to the allowability of the objection of suspected partiality.

2. Allowability of the objection

2.1 Legal basis of the objection

2.1.1 The appellant has not argued that there was any reason for exclusion under Article 24(1) EPC, nor does the present board see any basis for the application of Article 24(1) EPC either. The appellant raised an objection for suspected partiality under Article 24(3) EPC only. Under Articles 24(3) and 24(4) EPC, the deciding board should apply a twofold test, namely:

- Firstly a "subjective" test "in concreto" requiring evidence of actual partiality of the member or members concerned;

- Secondly an "objective" test "in abstracto" to determine if the circumstances of a case would allow a reasonably objective and informed person to conclude that he or she might have good reason to suspect the partiality of the member concerned.

(see G 2/08, interlocutory decision of 15 June 2009, not published in OJ EPO, Reasons point 4)

T 0797/14 - Commercially available but insufficiently disclosed

Key points:

• In this opposition appeal, claim 1 is directed to a container with a coating comprising an ethylene-tetrafluoroethylene copolymer . The copolymer is a key element of the claimed invention. This causes a problem with sufficiency of disclosure.
• " It appears however that the preferred and unique coating composition disclosed by the contested patent, namely the product Flurotec**(TM), has a composition and method of production which is not of public knowledge and is kept secret by the manufacturer".  Said Flurotec**(TM) coating is a known commercial product and is mentioned in several cited documents, such as the commercial brochures or Internet commercials [] but none of said documents brings further details as regards the structure and composition of the coating composition Flurotec**(TM)." 
• " The Board comes therefore to the conclusion that the essential element of the claimed invention, namely the coating composition Flurotec**(TM), is not of public knowledge and that there is also not enough information available to the skilled person for him to reliably determine the composition or structure of the product. The counterpart of a monopoly by a patent is however the disclosure of the invention, in particular of its essential elements, and not the provision or use of a commercial product which structure and composition are not public." 
• As a comment, this appears to be a patent of genuine user and buyer of the commercial polymer, not of the manufacturer.

EPO T 0797/14 - link

2. Main request - Article 100(b) EPC

2.1 Claim 1 is directed to a radiopharmaceutical composition supplied with a container sealed with a closure coated with a coating comprising an ethylene-tetrafluoroethylene copolymer (ETFE). Dependent claim 4 is directed to a specific closure coating made from the modified ETFE coating Flurotec**(TM). Said coated closure is the key element of the claimed invention, the selection of the claimed closures having an ETFE coating having indeed been shown to be particularly suitable for radiopharmaceuticals, since their purity and integrity composition is maintained during manufacture, transport and clinical use (see par. [0008], [0009], [0040] of the specification).

2.2 More precisely, the coating of the closures is made from a coating composition comprising an ethylene-tetrafluoroethylene copolymer, preferably a modified ETFE commercialised by Daikyo Seiko as Flurotec**(TM), as disclosed in the application as originally filed on page 13 (see also the specification in par. [0042]-[0044], [0050]). Said commercial product Flurotec**(TM) is the only coating composition disclosed in the description of the contested patent and all examples of the contested patent disclose closures coated exclusively with said Flurotec**(TM) coating.

2.3 It appears however that the preferred and unique coating composition disclosed by the contested patent, namely the product Flurotec**(TM), has a composition and method of production which is not of public knowledge and is kept secret by the manufacturer, Daikyo Seiko Ltd or its licensee Westpharma (see description of the contested patent par. [0050]).

T 0169/14 - Apportionment of costs and OP

Key points

• In this opposition appeal case, the appellant (proprietor) informed the Board with a letter sent a few days before the oral proceedings, that it would not attend them. The Bord cancelled oral proceedings. The respondent requested that Board would order the appellant to pay its expenses for flight tickets.
• " In the board's view, there is an equitable obligation on every party summoned to oral proceedings to inform the EPO and the other party as soon as possible, once it has decided that it will not be attending or is withdrawing its request for them. Consequently, in cases where a party unduly delays its decision not to attend the oral proceedings, or the withdrawal of its request for them, or its communication of this to the board, an apportionment of costs in favour of the other party could be justified if the costs were directly caused by the fact that the notice was not filed in due time." 
• The Board does not order the apportionment of costs, mainly because the appellant had sent a copy of its letter to the respondent's attorney, and because it had included substantive arguments with its letter. 

EPO T 0169/14 -  link

Summary of Facts and Submissions

I. This case concerns an appeal filed by the patent proprietor (henceforth, the appellant) against the decision of the opposition division to revoke European patent []. [...]

IX. In a letter dated 10 November 2016, in response to the board's communication, the appellant provided further arguments, informed the EPO that he would not be attending the oral proceedings and withdrew his request for oral proceedings. The last line on page 3 of this letter reads as follows: "cc: Regimbau (Lyon office), Attn. [mr. X], Ref: OB0011 (by email)".

X. In a communication from the board dated 11 November 2016 and faxed to the parties the same day, the parties were informed that the oral proceedings scheduled for 16 November 2016 had been cancelled and that the proceedings would be continued in writing.

XI. In its letter dated 15 November 2016, the respondent submitted that it had incurred costs due to the late cancellation of the oral proceedings and requested that, pursuant to Article 16 RPBA, its representative's fees for preparing the oral proceedings before the board and his non-refundable travel expenses for the flight ticket be fully borne by the appellant. []

Reasons for the Decision

[] 2. Allowability of the appeal - claim 1 of the patent as granted - added subject-matter []

2.7 The board concludes that the ground for opposition pursuant to Article 100(c) EPC 1973 prejudices the maintenance of the patent as granted and, consequently, sees no reason to remit the case to the opposition division for further prosecution.

2.8 It follows that the appellant's main request is not allowable and, consequently, that the appeal is to be dismissed.

3. Apportionment of costs

3.1 After cancellation of the oral proceedings appointed for 16 November 2016, the respondent requested that, pursuant to Article 16 RPBA, its representative's fees for preparing them and his non-refundable travel expenses for the flight ticket, be fully borne by the appellant.

T 1995/15 - Unusual parameter

Key points

• In this examination appeal, claim 1 was directed to a lighting device wherein "at least 50% of light entering the diffuser exits in an exit pattern regardless of an entrance pattern", i.e. a device claim with a parameter.
• "When relying on an unusual parameter ("at least 50% of light entering the diffuser exits in an exit pattern regardless of an entrance pattern"), the onus is on the appellant to establish novelty over the lightening device of D5 for which, unless otherwise evidenced, there is no reason to doubt that it implicitly fulfils this parameter" 

EPO  T 1995/15 -  link

(a) Main request

Claim 1 reads as follows:
"A lighting device, comprising:
at least a first solid state lighting device; and
at least a first patterned diffuser comprising a plurality of optical features,
(1) said first solid state lighting device positioned relative to said first patterned diffuser,
and (2) the first patterned diffuser configured, such that if said first solid state lighting device is illuminated so that said first solid state lighting device emits light, (a) at least some of said light emitted by said first solid state lighting device enters said first patterned diffuser and exits said first patterned diffuser, in an exit pattern such that a projected pattern of the emitted light would be produced on a structure having a flat surface positioned in the path of the emitted light and substantially perpendicular to the path of at least a portion of the emitted light, and (b) regardless of an entrance pattern of the light that enters said first patterned diffuser, at least 50% of said light entering said first patterned diffuser exits said first patterned diffuser within said exit pattern."

Reasons for the Decision

1. Main Request

1.1 Novelty (Article 54 EPC)

1.1.1 D5 is a print out of the slides which were presented at the SPIE 2006 Annual Conference in San Diego(see page 1 of D5) on 17 August 2006 as evidenced by D6 (pages 1 and 196).

The public availability of D5 before the priority date of the present application was not disputed by the appellant.

T 2331/14 - No re-establishment for intentional action

Key points:

• The applicant missed the time limit for filing a Notice of appeal and requests re-establishment of rights. This is denied. 
• " So, if anything, it can be concluded that, when [the applicant] was contacted by [the patent attorney], no decision had been taken yet on whether to file an appeal; rather a decision-making process was still ongoing. [] Since [the patent attorney] did not receive any instructions to file an appeal before expiry of the relevant time limits, it can only be speculated what the outcome of the decision-making process at that time was. Under these circumstances, the burden would be on the appellant to prove that, when the relevant time limits expired, it had had the intention of filing an appeal[]. Since the appellant has not provided any such proof, the board has to assume that there was no such intention. Not filing an appeal within the relevant time limits is thus to be considered to have been a deliberate choice rather than a mistake on the part of the appellant. However, an intentional action cannot be cancelled by means of Article 122 EPC" 
• In this case, there is a remarkable number of changes of patent attorney and attorney firms, as well as changes in names and legal identities of the applicant, but these are not relevant for the re-establishment request. 

EPO T 2331/14 - link

Reasons for the Decision

1. Identity of the appellant/representation

1.1 At the date of the oral proceedings before the board, the appellant entered in the European Patent Register was still Huvepharma EAD although in the meantime Huvepharma EOOD had been mentioned in various letters (see points VIII and X above). The appellant's professional representative during those oral proceedings was Mr Radkov. The authorisation D14 that he filed during the oral proceedings was, however, signed on behalf of Huvepharma EOOD. Thus Mr Radkov was duly authorised only if the appellant was not the one entered in the European Patent Register, but Huvepharma EOOD.