T 0172/15 - Dulce de leche

Key points

• Today just an interesting invention. Claim 1 is for a fat-based composition comprising 11 specific flavor components, including 2-acetyl-3-hydroxyfuran.
• The technical effect of the claim is to provide a dulche de leche flavor.
• The Board: " It is indeed surprising that, in order to obtain the dulce de leche flavour in a fat-based composition, the skilled person needs to add a compound that is not present in the water-based dulce de leche composition itself, and needs to do so in combination with the other ten components recited in claim 1."

EPO T 0172/15 - link

III. The opposition division maintained the patent on the basis of the third auxiliary request, claim 1 of which read as follows:

"1. A fat-based confection comprising a fat continuous phase in which material components are dispersed, and the following flavor components: 2-hydroxy-3-methyl-2-cyclopenten-1-one, 2-acetyl furan, 2-acetyl-3-hydroxyfuran, methyl furanoate, 2,5-dimethyl-4-hydroxy-3-(2H) furanone, 3-hydroxy-2-methyl-pyran-4-one, 2-furfural, 2-(5H)furanone, 2-furfuryl alcohol, dihydro hydroxy maltol and 5-hydroxymethyl furfural."

4.3 Problem and solution

4.3.1 According to the respondent, the technical problem underlying the patent in suit in view of D38 is the provision of a fat-based confection having a dulce de leche flavour (see page 8 of the reply to the statement setting out the grounds of appeal, point 6.35).

4.3.2 This problem is solved by the fat-based confection of claim 1 which, in addition to the ten flavour compounds present in D38, contains 2-acetyl-3-hydroxyfuran.

4.3.3 As evidence that the problem has indeed been solved, the respondent relied on the information provided in the patent itself. [...]

4.3.4 It follows from these results that the eleven flavour compounds in this combination yield a dulce de leche flavour when present in a fat-based matrix.

T 1722/12 - Placing ads

Key points

• The Board applies the Comvik approach to an invention about placing ads online.
• " The invention concerns advertising. [] there may be times when the advertiser is lacking the resources to serve those customers adequately. For example, the advertiser's contact center may be understaffed, [] This may lead to long waiting times[]. The invention addresses this problem by dynamically placing advertisements taking account of the current availability of the advertiser's resources at the contact center [] For example, [if] the contact center is reachable via [] telephone, then, the contact information in the advertisement is updated to reflect this (it will [show] a telephone number). Conversely, if there is no agent available to answer calls, the advertisement may include static contact information, such as a Web address."

• "The Board judges that the selection and serving of advertisements based on the availability of the advertiser's resources at the contact center goes in the non-technical requirement specification. Starting from a standard networked computer system, the technical problem is how to implement the requirement specification." 

EPO T 1722/12 - link

2. Main request, inventive step

2.1 The examining division's reasoning and the arguments in the grounds of appeal focused on method claim 10. The Board will do the same. Nevertheless, the same reasons are applicable also to system claim 1.

2.2 The examining division considered that the method in claim 10 of the main request contained a mixture of technical and non-technical features. The established approach for dealing with such mixed-type inventions is the "COMVIK approach" (see T 641/00 - Two identities / COMVIK, OJ 2003, 352).

In the COMVIK approach, the non-technical features do not contribute to inventive step. Instead, they may be part of the problem in the form of a non-technical requirement specification given to the skilled person to implement.

T 2340/13 - Not deciding on a ground

Key points

• The board notes that in the present case there is a discrepancy between what is stated in the "Summary of facts and submissions" of the written decision, where it is stated in point VI that, inter alia, Article 123(3) EPC was discussed in detail and that the opposition division announced that the request on file satisfied the requirements of, inter alia, Article 123(3) EPC, and the minutes, which although very detailed, do not mention any discussion concerned with Article 123(3) EPC. Neither is there any discussion of this matter (i.e. extension of the scope of protection) in the "Grounds for the decision", except that the title above point 3 reads "Added subject-matter (Articles 100(c), 123(2), 123(3) EPC)". 
• Evidently, if the matter had been discussed, the opposition division should properly have given an indication thereof in the minutes and indicated in the decision whether and why Article 123(3) EPC was regarded as being complied with. The fact that it is not known what, if anything, was discussed on this matter at the oral proceedings is now all the more problematic as Article 123(3) EPC is one of the issues forming part of the appellant's case. The board can only speculate as to whether the absence of any reasoning with respect to Article 123(3) EPC was due to the very long time taken in issuing the minutes and the written decision [13 months]. 
• In any event, the omission of any reasons in respect of Article 123(3) EPC is not only a violation of Rule 111(2) EPC (decision inadequately reasoned) but also of Article 113(1) EPC, since the right to be heard also guarantees that arguments put forward and relevant to the decision to be taken are actually taken into consideration, which cannot be verified with regard to the opponent's arguments concerning Article 123(3) EPC []. This is a substantial procedural violation within the meaning of Rule 103(1)(a) EPC.
• About admissibility of the appeal: " The board points out that in accordance with case law, an appeal is not inadmissible merely because it is based on a fresh case, in particular when it concerns the same ground for opposition" 
• As a comment, the Board gives this remittal decision (without any substantive matters decided on) about 4.5 years after the Notice of appeal (filed on 26.11.2013, decision 29.5.2018)

EPO T 2340/13 -  link

Reasons for the Decision

1. Admissibility of the appeal

1.1 The respondent argues that the appeal is inadmissible due to a lack of an adequate substantiation. In this respect, the respondent argues firstly that there is no analysis in detail vis-à-vis the main reasons given in the contested decision and secondly that the appellant "puts on the table a completely fresh case", based on new documents.

1.2 However, the board points out that in accordance with case law, an appeal is not inadmissible merely because it is based on a fresh case, in particular when it concerns the same ground for opposition (here, novelty and inventive step; cf. Case Law of the Boards of Appeal, 7th edition (this being the edition cited by the respondent), page 964, section 2.6.5, or 8th edition, page 1103, section 2.6.5). That however does not preclude the appellant's "fresh case" based on new prior art from being held inadmissible having regard to Article 12(4) RPBA (as will be discussed below); however, that is not a matter concerned with the admissibility of the appeal as such but with the examination of the appeal. In any case, the board considers the appeal to be admissible since it is also based on other grounds (infringement of Articles 123(3) and 84 EPC) for which a substantiation is provided. In particular, it is stated in the decision that compliance with, inter alia, Article 123(3) EPC "was discussed in detail" (see point VI of the Summary of facts and submissions). At least the objection pursuant to Article 123(3) EPC is therefore apparently not based on a fresh case and this ground alone thus suffices to render the appeal as a whole admissible.

T 1415/16 - Takeover of opponents

Key points

• In this opposition appeal, Opponent 1 was taken over by Opponent 2 during the first instance proceedings. Both opponents had appealed the OD's decision. The Board considers it proven that Opponent 1 continued to exist as legal entity and that therefore the appeal was admissible.
• " The respondent [patentee] had argued that [opponent 1]'s appeal should be held inadmissible because [opponent 2] had gained control over [opponent 1] and, thus, could pursue two oppositions. The further question therefore arose whether appellant I had lost its status as opponent." 
• The Board "Is is true that a person is not allowed to pursue two or more oppositions. This was also confirmed in decision T 9/00 [] According to this decision, a legitimate interest can also not be inferred from the fact that the later opposition has been filed on behalf of a different department of the company without legal personality, having its own economic interest and being subsequently transferred to a third party. The circumstances of the present case are, however, quite different because the two oppositions had actually been filed by separate legal persons and these legal persons were still in existence when the appeal case was about to be decided by the board at the oral proceedings." 
• The Board also considered it not proven that  Opponent  had control over Opponent 1 during the oral proceedings before the Board.

EPO T 1415/16 - link

Summary of Facts and Submissions

I. Both opponents (opponents 01 and 02 are hereinafter referred to as "appellant I" and "appellant II", respectively) filed appeals against the decision of the opposition division to reject the oppositions filed against the European patent No. 1 926 496.

Reasons for the Decision

Admissibility of the appeals and appellant I's status as party and opponent

1. The appeal of opponent 02 (appellant II) is admissible since it complies with the requirements of Articles 107 and 108 and Rule 99 EPC. Admissibility of this appeal had also not been contested by the respondent.

2. The respondent [patentee] contested, however, the admissibility of the appeal of opponent 01 (appellant I). Even though the objection had been raised very late, namely at the beginning of the oral proceedings before the board, the board considered this issue since this is one which can and has to be examined ex officio at every stage of the appeal proceedings (see e.g. decision T 15/01, OJ EPO 2006, 153, point 1 of the reasons). The appellants' objection against the late introduction of this issue could therefore not succeed.

3. The requirements of Articles 107 and 108 and Rule 99 EPC for the filing an admissible appeal were met by appellant I [opponent 01] upon expiry of the relevant time limits. This had not been questioned by the respondent.

4. In order for the board to consider on the merits an appeal that had been duly filed by a party, it is, however, a procedural pre-condition that the party has capacity to be a party to the proceedings when the decision terminating the appeal proceedings is taken. It is a generally recognised principle of national law and also under the EPC that legal entities which do not exist cannot bring or take part in proceedings (see decision G 1/13 of the Enlarged Board of Appeal, OJ EPO 2015, A42, point 5.2 of the reasons).

5. In the present case, while it was argued that a transfer of all business assets was agreed upon between appellants I and II [i.e. from opponent 1 to opponent 2], the respondent [patentee] confirmed that the continued existence of appellant I [opponent 1] as a legal entity on the date of the oral proceedings was not denied. According to the respondent's [patentee's] own submissions, the evidence available to it proved the conclusion of a contractual agreement on a transfer of business assets but did not prove that the transfer, or a universal succession, had already taken place. The representative of appellant II [opponent 2] likewise confirmed the existence of appellant II as a legal person and stated in this context that appellant II also continued to have employees.

6. In view of these concordant statements of the parties, the board had no doubt that appellant I existed as a legal entity at the date of the oral proceedings, i.e. on the date on which the board intended to take a final decision on the appeals. There was thus no need for the board to make further investigations on its own on the issue of the existence of appellant I.

7. The respondent [patentee] had argued that appellant I's appeal should be held inadmissible because appellant II had gained control over appellant I and, thus, could pursue two oppositions. The further question therefore arose whether appellant I had lost its status as opponent.

8. Article 99 EPC provides that a notice of opposition can be filed by "any" person. No particular interest in instituting opposition proceedings has to be demonstrated by an opponent. With the filing of a notice of opposition the person acquires the status as opponent.

9. It is established case law that the status as an opponent cannot be freely transferred (see decision G 2/04 of the Enlarged Board of Appeal, OJ EPO 2005, 549, Order I.(a)). Apart from the case of universal succession, in which case the opponent status would be automatically acquired from the date of the effective succession (see T 6/05, point 1.7 of the reasons), the procedural status as opponent may only be transferred together with the opponent's business assets in the interests of which the opposition had been filed (see also decision G 2/04, supra, point 2.2.1).

10. This does, however, not imply that a legal person that has the status of an opponent would automatically loose this position or would, contrary to its intention, be obliged to give up this position if the business assets, in the interest of which the initial opposition had been filed, are transferred to a different legal entity. To the contrary, the original opponent may continue the opposition proceedings (see also decision T 6/05, point 1.6.4 of the reasons). Accordingly, a transfer of the status as opponent, together with the transfer of business assets, from one legal entity to another to be valid in the proceedings before the EPO requires an explicit request to the EPO to this effect. Such a request is not on file for the present case.

11. Is is true that a person is not allowed to pursue two or more oppositions. This was also confirmed in decision T 9/00 (OJ EPO 2002, 275), cited by the respondent, in which the second filing of an opposition by the same legal person, after a first admissible opposition, was considered inadmissible for lack of a general legitimate interest (see point 2(c) of the reasons). According to this decision, a legitimate interest can also not be inferred from the fact that the later opposition has been filed on behalf of a different department of the company without legal personality, having its own economic interest and being subsequently transferred to a third party.

12. The circumstances of the present case are, however, quite different because the two oppositions had actually been filed by separate legal persons and these legal persons were still in existence when the appeal case was about to be decided by the board at the oral proceedings.

13. Moreover, from the mere circumstance that a transfer of all business assets from appellant I to appellant II, or a universal succession, was contractually agreed upon, the board could not derive that appellant II had control over appellant I at the date of the oral proceedings. The documents referred to by the respondent allegedly proved that a transfer between the two companies had been agreed upon. The board had not to evaluate evidence as to whether or not appellant I was under control of appellant II or whether the transfer was already effective.

14. In view of the above considerations, the board decided that the appeal of appellant I is admissible, and that the appeal proceedings were continued with appellant I as a party to the proceedings.

T 0198/15 - Opponent's appeal inadmissible

Key points

• The appeal of opponent is rejected as inadmissible.
• The opponents Statement of grounds consists essentially of 1) Word for word repetitions of the notice of opposition, and of the opponent's written submissions before the OD, and 2) new novelty attacks based on documents D6 and D9, which did not form part of the proceedings before the opposition division.

• " It may well be that the appellant [opponent] does not agree with the decision. However, a mere re-run of the opposition before the Board which does not include the reasons for setting aside the impugned decision (Rule 99(2) EPC) - albeit with the additional issue of the admission of new documents - is not compatible with the main purpose of the opposition appeal proceedings, which is to give the losing party a possibility to challenge the decision of the opposition division on its merits (G 9/91, OJ 1993, 408, Reasons 18). Therefore, the appeal is inadmissible." 
• It seems unfair to me that a patentee can base the appeal solely on amended claims (and does not need to defend the claims as rejected by the OD at all), see T 1668/14, in order to have an admissible appeal, while the opponent must defend its attacks rejected by the OD. In T 1168/14, it was stated that "it is not an absolute requirement for admissibility that the appellant should attack the opposition division's decision as flawed." It seems that this applies only for patentees as appellants, or at least not for opponents in view of this decision T 198/15. 

EPO T 0198/15 -  link

Reasons for the Decision

2. Admissibility of the appeal

2.1 In the present case, the admissibility of the appeal depends on whether the statement of grounds of appeal complies with Article 108, third sentence, EPC in conjunction with Rule 99(2) EPC. According to these provisions, in the statement setting out the grounds of appeal the appellant shall indicate "the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based."

2.2 The statement setting out the grounds of appeal must enable the Board to understand immediately why the decision under appeal is alleged to be incorrect and on which facts the appellant bases their arguments, without having to make investigations of its own (see J 10/11, Reasons 2.1 with reference to several decisions).

T 2187/17 - Decision state of the file unreasoned

Key points

• Another decision according to the state of the file, another substantial procedural violation.
• " The appellant filed counter-arguments to all of these in its nine-page submission of 27 February 2017. It addressed in particular the reasons why the Examining Division considered the composition not to fall under the requirements of Article 54(5) EPC. [...] 6. The impugned decision does not contain any reasons as to why these arguments presented by the appellant in support of the allowability of claim 1 were not relevant and were unable to convince the Examining Division. Therefore, it is left to the appellant and to the present Board to speculate on the very reasons for the refusal." 
• " By failing to give the reasons for the decision and explain why the applicant's last arguments were not considered convincing, the Examining Division did not issue a reasoned decision within the meaning of Rule 111(2) EPC, thereby depriving the appellant of its right to obtain such a fully reasoned decision, which constitutes a substantial procedural violation."
• " It should be noted that a request for a decision based on the current state of the file is not to be understood as a waiver by the party of its right to a fully reasoned decision. The departments of the European Patent Office cannot omit to give reasons for their decisions when the EPC requires them to do so."

EPO T 2187/17 - link

Summary of Facts and Submissions

I. The appeal is directed against the decision of the Examining Division posted on 21 April 2017 to refuse the application. The decision was a so-called decision according to the state of the file.

The decision reads as follows:

"In the communication(s) dated 05.03.2012, 19.03.2015, 08.08.2016 the applicant was informed that the application does not meet the requirements of the European Patent Convention. The applicant was also informed of the reasons therein.
The applicant filed no comments or amendments in reply to the latest communication but requested a decision according to the state of the file by a letter received in due time on 27.03.2017.
The European patent application is therefore refused on the basis of Article 97(2) EPC."

VI. On 27 February 2017 the appellant filed a nine-page submission in preparation for the oral proceedings in which it analysed the legal texts, the guidelines, the alleged requirement for the presence of a therapeutic effect and the cited decisions and concluded that the claim directed to the composition was allowable pursuant to Article 54(5) EPC.

VII. On 27 March 2017 the appellant informed the Examining Division that it would not attend the oral proceedings, and it requested a decision according to the state of the file.

Reasons for the Decision

3. Under Article 106(1) EPC, the decisions of the examining divisions are open to appeal. According to Rule 111(2) EPC, decisions of the European Patent Office which are open to appeal must be reasoned.

[...]

It should be noted that a request for a decision based on the current state of the file is not to be understood as a waiver by the party of its right to a fully reasoned decision. The departments of the European Patent Office cannot omit to give reasons for their decisions when the EPC requires them to do so.

4. In the present case the impugned decision solely refers to two communications, and an annex to the summons to attend oral proceedings.

As can be seen from points III and IV above, the annex to the summons posted on 8 August 2016 for the first time addressed the version of the claim filed with the letter of 25 September 2015 to be discussed in the oral proceedings of 28 March 2017 and contained a number of new arguments/reasons why the claim was not allowable.

T 1534/16 - Prior use and withdrawn opposition

Key points

• In this opposition appeal, the opponent and the intervener had asserted a public prior use, and had subsequently withdrawn the opposition (and intervention).
• The patentee had defended the claims by casting doubts on whether the prior use was public, or whether an obligation to maintain secrecy had been in place.
• " The Board, regarding the appellant's doubts as justified and considering that further investigations would require the co-operation of the opponent and/or intervener, who have withdrawn their oppositions and their intervention [], concludes that the allegations of prior use are to be disregarded."

	T 1534/16 - link

Reasons for the Decision

1. Prior uses
The opponent and the intervener submitted a plurality of allegations of prior use before their respective oppositions were withdrawn.
The appellant replied by raising doubts concerning the public availability of the installations in accordance with the alleged prior uses, in particular by referring to the presence of an obligation to maintain secrecy.
The Board, regarding the appellant's doubts as justified and considering that further investigations would require the co-operation of the opponent and/or intervener, who have withdrawn their oppositions and their intervention (see Case Law of the Boards of Appeal, 8th edition 2016, IV.D.2.2.9 (c)), concludes that the allegations of prior use are to be disregarded.

2. Exclusion from file inspection
During the written proceedings before the Board, documents E48, E48a, E49, E51, E52, E53 and E54 filed by the appellant before it withdrew its opposition were provisionally excluded from file inspection (see communication dated 28 February 2018) at the request of the appellant (patentee). The Board, considering that the opponent and intervener had explicitly agreed by letters of 6 March 2018 to the appellant's request and being satisfied that the documents in question do not serve the purpose of informing the public about the patent in suit, concludes that the above-mentioned documents should remain excluded from file inspection pursuant to Rule 144(d) EPC.