T 2187/14 - Barely understandable machine translations

Key points

• In this case, a machine translation E10* was filed with the Statement of grounds. The Board found this to be " a barely understandable machine translation".
• E10** is a second and allegedly improved machine translation submitted in response to the Board's criticism of E10*. 
• "The Board does not see it as appropriate to allow a party to file numerous machine translations throughout the procedure until it comes up with one that conveys the nuance that supports its case. A certified translation should have been filed at the earliest opportunity." 
• "Therefore, these documents will be considered only to the extent that they might help in understanding the figures of E10." 
• As said in the comments at DeltaPatents, requiring a certified translation without invitation seems to go against Rule 5 EPC.  Rule 3 is also quite clear that a translation is only required upon invitation, and this applies also to opposition proceedings (GL A-VII 3.4) and therefore also to opposition appeal. In my view, the right to be heard of the other party requires that it can comment on a translation of the document in an EPO official language, but legal basis for that requires further study. In this case, the first translation E10* should perhaps have been admitted, but it is not for the Board or the other parties to infer what the Japanese document E10 says from a "barely understandable machine translation". 
• In addition, the legal basis for considering documents " only to the extent that they might help in understanding the figures of E10" is also not clear - is the document partially admitted?

EPO T 2187/14 - link

Reasons for the Decision

1. Consideration of late-filed documents (Articles 12(4), 13 RPBA)

1.1 Documents E4* and E10 to E14* were filed for the first time with the opponent's grounds of appeal. Therefore, it is necessary to assess whether they should have been submitted earlier (Article 12(4) RPBA).

1.3 E10* is a barely understandable machine translation of E10. E10** is a second and allegedly improved machine translation submitted in response to the Board's criticism of E10*. However, the Board does not see it as appropriate to allow a party to file numerous machine translations throughout the procedure until it comes up with one that conveys the nuance that supports its case. A certified translation should have been filed at the earliest opportunity. Therefore, these documents will be considered only to the extent that they might help in understanding the figures of E10.

T 0025/15 - Admissible appeal even if earlier no objections

Key points

• " The [proprietor] contests admissibility of the opponent's appeal, arguing that in first instance no objection was presented against the request on which the patent was maintained in amended form. Thus the opponent has not been adversely effected by the impugned decision. " 
• " in the present case the notice of opposition leaves no doubt that the whole of the patent, including the subject matter of the appellant-proprietor's second auxiliary request, was opposed in the statement under Rule 76(1) (c) EPC [], rather than the patent being opposed only to a certain extent (cf. G 9/91, reasons, point 8). By maintaining the patent in amended form the division did not accede to this request resulting in adverse effect for the appellant-opponent.
• " In this regard, in accordance with established jurisprudence of the Boards of Appeal, a party's silence regarding a request is not to be construed as giving consent to maintenance of the patent according to that request" 
• " The Board concludes that the appellant-opponent was adversely affected by the impugned decision within the meaning of Article 107 EPC and in view of the above considerations, their appeal is admissible." 
• This decision can be compared with T 735/13. 

EPO T 0025/15 - link


Reasons for the Decision

1. Admissibility

1.1 Admissibility of the appellant-proprietor's appeal has not been contested, nor indeed is there any formal deficiency apparent that might warrant the rejection of the appeal as inadmissible under Rule 101 EPC. Therefore the appellant-proprietor's appeal is admissible.

T 1401/16 - Wikipedia and right to be heard

Key point

• This is an examination appeal.
• " The board notes that the examining division bases its conclusions on these critical issues [i.e. inventive step], at least in part, on two Wikipedia entries cited in the decision. However, this evidence was never referred to during the examination proceedings and both entries are mentioned for the very first time in the appealed decision itself. In consequence, the applicant had no opportunity to present their comments in that respect. This constitutes a violation of the provisions of Article 113(1) EPC." 

EPO T 1401/16 -  link

Reasons for the Decision

1. Alleged violation of the right to be heard

1.1 The right of parties to a fair trial is a generally recognised procedural principle under Article 125 EPC, and to be observed in all proceedings before the European Patent Office. The predictability and verifiability of all state actions are indispensable elements of the rule of law and the respect of fundamental procedural rights. The right to be heard under Article 113 EPC is an embodiment of these fundamental principles. Under Article 113(1) EPC the ratio decidendi of decisions by the European Patent Office may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. This also applies to evidence related to establishing the skilled person's common general knowledge (see for example R 12/12, Reasons 2).

T 0383/14 - Claims interpretation and practice

Key points

• The Board gave this decision publication code [C] (explanation here, at the bottom) so with some delay I discuss the case in this post. See also this post at the DeltaPatents blog.
• The claim is for a device for processing harvested grapes, by removing foreign objects. The device has openings that, according to the claim, will only let the foreign objects through, and also has openings that let only the grapes pass through. 
• I understand that the invention basically considers the stream to be processed to consist of small debris, the grapes, and large foreign objects. The opponents seem to point out that the stream will also includes contaminations having the same size as the grapes.
• The Board argues that the claims define the invention with a certain level of abstraction, i.e. at a theoretical level, and that according the terms "only" in the claims (only the berries, only the foreign objects) refer to the operation of the device under ideal conditions, i.e. those of optimal or nominal functioning of the device.  The skilled person, to whom the claim is directed, readily understands that the practical operating conditions are not the ideal ones defined by the claim.

T 0383/14 -  link

3. Suffisance de l'exposé de l'invention - article 100b) CBE

Il n'est pas contesté que la table de tri comprenant un agencement de rouleaux tel que défini dans la revendication 1, et précisé en détails dans la description en relation avec les figures 1 à 21 puisse être réalisée et construite. Il ne fait également aucun doute que les interstices ou jeux de taille réduite ménagés entre les rouleaux ameneurs-nettoyeurs, ainsi que les ouvertures entre les rouleaux trieurs puissent être réalisés aux dimensions indiquées dans le brevet.

T 0320/15 - Closest prior art and GL2018

Key points

• This decision was already published on 24.11.2016, but I missed it back then, and now it is in the Guidelines 2018 (G-VII, 5.1). 
• The Guidelines make this out of it:
  "Applying the problem-solution approach from different starting points, e.g. from different prior-art documents, is only required if it has been convincingly shown that these documents are equally valid springboards. In particular in opposition proceedings the structure of the problem-solution approach is not that of a forum where the opponent can freely develop as many inventive step attacks as he wishes in the hope that one of said attacks has the chance of succeeding (T 320/15, Reasons 1.1.2)." 
• The Board (in translation):  "The board notes that according to the problem-solution approach, the appellant should select, in a first step, the most promising document to arrive at the claimed invention. [...] Moreover, the structure of the problem-solution approach does not consist in a forum where the appellant can at will develop various attacks starting from various documents of the state of the art in the hope that one of them would have a chance to succeed. Therefore the second objection must also be rejected." 
• As first comment, the sentence in the GL that " Applying the problem-solution approach from different starting points [] is only required if it has been convincingly shown that these documents are equally valid springboards. " does not follow from T 320/15. 
• As a second comment, I am not sure whether the problem-solution-approach as developed in the case law is a valid legal basis for curtailing the right to be heard of Article 113 EPC.
• As a third comment, the next sentence of the GL says that "In the event of refusal or revocation [or revocation is added in GL2018], it is sufficient to show, on the basis of one relevant piece of prior art that the claimed subject-matter lacks an inventive step:there is no need to discuss which document is "closest" to the invention". How this is to be reconciled with T 320/15 is an interesting exercise.
  

EPO T 0320/15 - link

Edited machine translation from French:

Reasons for the decision

1. The right to be heard under Article 113 (1) EPC

1.1 The appellant [opponent] considered that the Opposition Division failed to respect his right to be heard for a number of reasons. First, the [appellant] submits that during the oral proceedings he only had the opportunity to explain why D4 was the closest state of the art without having had the opportunity to develop his argument according to the problem-solution approach. Secondly, the applicant did not, in his view, have the opportunity during the oral proceedings to present further attacks against the inventive step of the claimed subject-matter by considering other documents, such as D8 or product SIGRAFLEX UNIVERSAL V30010C1l (first public prior use), as the closest state of the art. Thirdly, in the written decision the reasoning of the Opposition Division in relation to the closest prior art D4 was based on arguments which had not been previously cited in the proceedings. Fourthly, again according to the applicant, the Opposition Division did not admit the series of documents D13 and D14 concerning an alleged second prior use, without knowing the relevance of the first prior use SIGRAFLEX and therefore without knowing whether this second previous use was more relevant than the first.

T 0536/13 - Decision state of the file

Key point

• Another decision according to the state of the file, another substantial procedural violation.
• " From the statement in the reasons for the decision that "The applicant filed no comments or amendments in reply to the latest communication ...", it is evident that the decision does not take into account the comments and amended application documents that were filed with the applicant's letter dated 23 April 2012. Consequently the decision does not comply with the requirement of Article 113(2) EPC that the EPO shall examine, and decide upon, the European patent application only in the text submitted to it, or agreed, by the applicant. This amounts to a substantial procedural violation." 
• " Furthermore, in the absence of any reasoning in respect of the applicant's latest comments and amendments the Board and the appellant are left in doubt as to which of the previously-raised objections still apply. [...] Thus the decision is not reasoned within the meaning of Rule 111(2) EPC, which constitutes a further substantial procedural violation." 

EPO T 0536/13 - link

Reasons for the Decision

1. The appeal is admissible.

2. The contested decision is a so-called "decision according to the state of the file". The grounds for the decision read as follows:

T 2351/16 - Refusal after single Communication

Key points

• In this examination appeal, the ED had issued a single Communication (a merely formal one, referring to the search report, in 2010) and the applicant had filed a response without a request for oral proceedings. The EPO's next action was a refusal decision in 2016.  The Board considers this to be fine.
• " The fact that the examining division issued a decision of refusal after only one communication under Article 94(3) EPC as such does not constitute a violation of the appellant's right to be heard. " 
• " Professional representatives have to be aware that, in order to avoid a refusal after only one communication, a precautionary request for oral proceedings should be filed together with the response to the communication (at the latest)." 
• " The fact that the application was refused more than five years after the appellant's response to the communication under Article 94(3) EPC does not lead to another conclusion." (the Board finds the delay "regrettable").
• The fact that the Communication was just a formal communication is also no problem (under the then applicable rules). " The fact that the communication is merely "formal", in that it refers to the European search opinion, does not mean that it is not a valid communication under Article 94(3) EPC having all the legal effects of such a communication." 
• The Board finds a substantial procedural violation because the ED refers in the decision for the first time to a paragraph in the Guidelines. "the boards considers the assertion that the appellant could not be surprised by an additional argument in support of the division's objection to be highly questionable." "The refusal of an application based on a reasoning expressed for the first time in the decision constitutes a violation of the applicant's right to be heard and, therefore, a substantial procedural violation." 
• As a comment, this means that applicants have to request oral proceedings just to get a preliminary opinion as second Communication rather than an immediate refusal, even if there is no interest in actually attending oral proceedings. Nevertheless, the EPO will have to book rooms for many oral proceedings which are cancelled in due time because of this (existing) case law. The same could of course be said for guaranteeing a later Communication, but later in the procedure applicants may be less interested in such a further Communication.
• The substantive issue was added subject-matter, Art. 76 EPC. The ED had reasoned  that: " what needs to assessed is whether the man skilled in the art could directly and unambiguously derive from the parent application as filed that it also comprises the scope of protection now claimed in the present divisional. Art. 69 defines that this scope of protection is defined in the claims." The ED's objection is that the now-claimed precursor plate is only disclosed in the parent application as being used in the inventive process, not as invention as such. The ED had argued that: " In the parent application, the plate per se is never mentioned as being the invention in the original application, it is never stated to, in itself, solve a particular problem, and it is always mentioned in combination with a specific method for engraving it" 
• The Board explains that: " The board considers that the reference to the "scope of protection" and to Article 69 EPC is unfortunate and misleading because it may suggest that the scope of protection of the divisional application has to be comprised by the scope of protection of the earlier application, which is incorrect. The only requirement that has to be ascertained when compliance with Article 76(1) EPC is examined is whether the subject-matter of the divisional application extends beyond the content of the earlier application as filed or not. The scope of protection of the divisional application and its relationship with the scope of protection of the earlier application is irrelevant in this context." 

EPO T 2351/16 -  link

Reasons for the Decision

1. Applicable law

The divisional application under consideration was filed on 29 October 2004. According to Article 7 of the Act revising the EPC of 29 November 2000 (OJ EPO 2007, Special edition No. 4, 217) and the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the EPC of 29 November 2000 (OJ EPO 2007, Special edition No. 4, 219), Article 111 EPC 1973 applies in the present case. Reimbursement of the appeal fee is governed by Rule 67 EPC 1973 (see decision J 10/07, point 7 of the reasons, published in OJ EPO 2008, 567).

2. Substantial procedural violation

2.1 Refusal after a single communication

The fact that the examining division issued a decision of refusal after only one communication under Article 94(3) EPC as such does not constitute a violation of the appellant's right to be heard. According to the jurisprudence of the boards of appeal, an examining division may refuse an application after a single communication if it does not consider that there is a prospect of a positive result. The refusal of an application after the first communication is justified if decisive objections against patentability remain, particularly where the claimed subject-matter has not been substantially modified (see "Case Law of the Boards of appeal of the EPO", 8th edition, 2016, item IV.B.2.5.1).