T 2377/17 - Excessive length of procedure

Key points

• In this examination appeal, the Board considers the excessive length of the first instance procedure to be a substantial procedural violation and orders refund of the appeal fee (the Board also considers the claims allowable).
• The EP Entry was in 1999, PACE was requested in 2012, the first Communication was issued in 2014, a response was timely filed. A second PACE request was filed, in November 2015 Summons were issued, oral proceedings were held in June 2016. An Intention to grant was issued based on the 2nd Auxiliary Request, in response the applicant maintained the main request. The refusal was issued in May 2017. Oral proceedings before the Board took place in December 2018. 
• The Board: " In its decisions T 823/11 of 21 December 2015 and T 2707/16 of 11 December 2018, this Board held that unnecessary, excessive delays in the first-instance proceedings resulting in an unreasonable total duration of the grant proceedings may amount to a substantial procedural violation in view of both the applicant's and the public's legitimate interest in a speedy conclusion of the proceedings. In the present case, even though the Board has dealt with the appeal considerably out of turn, it is highly unlikely that the EPO will be able to publish the mention of the grant of a patent before the term of the patent expires. The delay of 14 years before the Examining Division issued its first substantive communication therefore has to be considered to be a substantial procedural violation." 
• " It is true that reimbursement of the appeal fee cannot be seen as a true compensation for the costs incurred as a result of delays in the proceedings. But, in the Board's view, reimbursement of the appeal fee may well be "equitable" even if it is not full compensation."
• As a comment, I wonder if EPO management cares about this kind of decisions at all. 
• Interesting fact: the Swedish Patent Office was the ISA, but there is no supplementary ESR because under the applicable old rules, the SESR is dispensed with in case of a European ISA.

EPO T 2377/17 - link

7. Request for reimbursement of the appeal fee

7.1 The appellant requested reimbursement of the appeal fee under Rule 103(1)(a) EPC in view of the delays in the first-instance proceedings. For this request to be allowable, it has to be established that the delays form a substantial procedural violation which renders reimbursement of the appeal fee equitable.

7.2 The Examining Division became responsible for the application's examination on 20 December 1999, the day on which the requests for entry into the regional phase and examination became effective (no supplementary European search report was to be drawn up in view of the decision under Article 157(3)(a) EPC 1973 of the Administrative Council of 21 December 1978, OJ EPO 1979, 4, Corr. 50). It then took more than 14 years until, on 7 February 2014, the Examining Division issued its first substantive communication under Article 94(3) EPC. After the appellant's reply by letter of 2 May 2014, it took a further 18 months for the Examining Division to issue its next action on 12 November 2015, which was a summons to oral proceedings. During these periods of delay, no procedural complications occurred that could have prevented the Examining Division from carrying out the substantive examination of the application.

T 0623/18 - Grounds of opposition

Key points

• The OD had found an opposition inadmissible for failure to comply with Rule 76(2)(c) which requires that the Notice of opposition shall contain " a statement of the extent to which the European patent is opposed and of the grounds on which the opposition is based, as well as an indication of the facts and evidence presented in support of these grounds". The insufficiency attack would amount to merely clarity, for the novelty attack the opponent had failed to refer to the individual features of claim 1.
• The Notice of opposition was submitted by an (in house patent) counsel of the opponent. The Notice states that the (numerous) features of the preamble of claim 1 are deemed to be known as they are in the preamble. The Notice indeed does not include a feature-by-feature analysis at all.
• " The board therefore concludes, [...], that the notice of opposition complies with the ordinary meaning of the terms of Rule 76(1) and (2)(c) EPC interpreted in their context and in the light of the object and purpose of the regulation." 
• "The board sees no basis for requiring more from the statement under Rule 76(1) and (2)(c) EPC and, in particular, none for making admissibility of the opposition dependent on the assessment of substantive questions, which must (rather) be dealt with during examination of the opposition under Article 101 EPC. " 
• The Board also indicates that it gives a different interpretation of Rule 76 than the Guidelines. "The Guidelines for examination, D-IV, 1.2.2.1 (v), state: "The contents of the statement of grounds must enable the patent proprietor and the opposition division to clearly understand the nature of the objection raised and the evidence and arguments adducted in its support. This entails explaining the relevant circumstances to such an extent that neither the patentee nor the opposition division needs to undertake further investigations to be able to form a definitive opinion on the grounds for opposition".
  They [=the Guidelines] imply with reference to T 222/85 that the grounds for opposition must be "clearly presented and argued" so as to make the opposition admissible. As explained above, the board considers that Rule 76(2)(c) EPC does not require as much from the notice of opposition; in particular, whether the "written reasoned statement" enables the "patent proprietor and the opposition division to clearly understand the nature of the objection raised and the evidence and arguments adducted in its support" and whether "further investigations" are necessary for the patentee or the opposition division "to be able to form a definitive opinion on the grounds for opposition" (emphasis by the board) is, in the board's judgment, a matter for the allowability rather than the admissibility of the opposition." 
• The Board also notes that " Moreover, the opposition division may, under Article 114(2) EPC, disregard facts or evidence which the opponent chooses to submit after the opposition period according to Article 99 EPC." 
• As a comment, this does not really address if the opponent can submit the feature-by-feature analysis after the opposition period (is that submitting a new 'fact' or a new argument?) and if the opponent can discuss the twelve features of the preamble of claim 1 only after expiry of the opposition period. For allowability, the only question is if the cited document D1 actually teaches all the features in the preamble or not, which is quite a different question from whether the opponent substantiates this. Under Art. 114(1) the OD must still examine this ("Amtsermittlungsprinzip"), yet without the Opponent making its case.

EPO T 0623/18 - link

Reasons for the Decision

The decision under appeal

1. The opposition was based on the grounds for opposition under Article 100(a) EPC, in combination with Articles 54 and 56, and Article 100(b) EPC.

1.1 With regard to Article 100(b), the opponent argued that claim 1 introduced a "remote data processing server" but failed to specify its relation to the preceding features of the claim relating to a "remote data processing system". For that reason it was argued that the skilled person could not carry out the invention (see the notice of opposition, page 9, point 1).

1.2 With regard to Article 100(a) EPC in combination with Article 54 EPC, the opponent gave reasons why, in its view, the combination of documents D6A, D6B and D6C, which all related to the control system "AC 870P", and also document D7, disclosed all features of claim 1 at least implicitly.

1.3 With regard to Article 100(a) EPC in combination with Article 56 EPC, the opponent started from the assumption that the preamble of claim 1 was known in the prior art, stated which problem the features of the characterising portion solved over such prior art and gave reasons why, in its view, each of documents D6A, D6B and D7 disclosed a solution to that problem with all the features of the characterising portion of claim 1. Additional remarks were made on further prior-art documents.

2. In view of this, the opposition division came to the following conclusion:

2.1 With regard to Article 100(b) EPC, the opponent's reasons related merely to the clarity of the claims, which was not a ground for opposition, rather than the question whether the patent disclosed the invention in a manner sufficiently clear and complete for it to be carried out by the skilled person. Hence, the ground for opposition under Article 100(b) EPC was insufficient­ly substantiated (see the decision, reasons 2-2.3).

2.2 With regard to Article 100(a) EPC in combination with Article 54 EPC, the opponent's arguments failed to refer to the individual features of claim 1 and so did not enable the patent proprietor or the opposition division to reconstruct the novelty objection without making their own investigations (see reasons 3-3.2). With regard to Article 100(a) EPC in combination with Article 56 EPC, the opponent further failed to indicate from which piece of prior art the features of the pre­amble of claim 1 were known (see reasons 3.3). Hence, the ground for opposition under Article 100(a) EPC was not sufficiently substantiated either. Reference in this regard was made to decision T 613/10 (see the decision under appeal, reasons 3.1).

2.3 The opposition division concluded that the requirements of Rule 76(2)(c) EPC were not met (see reasons 4).

J 0007/18 - Appeal on further processing

Key point

• In this examination appeal, no Statement of grounds was filed (against a decision of the ED to refuse further processing) and the Registry informed the appellant about this and requested observations to be filed within two months. The appellant withdrew the appeal after the expiry of the period. The Board decides that in such a case, there is no ground for a refund of 50% of the appeal fee. 
• The file is interesting. The Rule 112(1) Notice of loss of rights was issued automatically (presumably by a formalities officer) for failure to file a response to an Art.94(3) Communication. Further processing was requested in 2015, the fee paid and the omitted act was completed but after the expiry of the time limit. An invitation to file comments was issued. The applicant maintained the request for oral proceedings. Oral proceedings were held before the ED, the applicant did not appear. The decision under R112(2) was taken by the ED (not a formalities officer). A notice of appeal was filed early in 2018. 
• The Registry issued the Communication, as allowed under the decision of the Presidium (OJ 2018 sp1 VI.2). Hence, it is a communication under Rule 103(2)(b).

Summary of Facts and Submissions

I. The appeal is directed against the decision of the Examining Division posted on 30 November 2017.

II. The appellant filed a notice of appeal on 12 February 2018 and paid the appeal fee on the same date.

III. By communication of 13 June 2018, received by the appellant, the Registry of the Board informed the appellant that it appeared from the file that the written statement of grounds of appeal had not been filed, and that it was therefore to be expected that the appeal would be rejected as inadmissible pursuant to Article 108, third sentence, EPC in conjunction with Rule 101(1) EPC. The appellant was informed that any observations had to be filed within two months of notification of the communication.

IV. By letter dated 3 September 2018 the appellant withdrew its appeal and requested reimbursement of 50% of the appeal fee.

V. By communication dated 21 September 2018 the Board informed the appellant of its preliminary opinion that the request for reimbursement of part of the appeal fee could not be allowed and that it did not intend to summon the appellant to oral proceedings. It asked the appellant to confirm whether it maintained the request for reimbursement of part of the appeal fee in view of the communication and informed the appellant that any submissions or requests had to be made within two months of notification of the communication.

VI. No reply has been received.

Reasons for the Decision

1. Rule 103(2)(b) EPC determines the reimbursement of the appeal fee in cases where the Board has issued a communication inviting the appellant to file observations. Pursuant to this rule 50% of the appeal fee shall be reimbursed if the appeal is withdrawn before expiry of the period for filing observations.

T 1063/18 - Plants and Rule 28 (Pepper)

Key points

• The written decision in the Pepper case is now available. The Technical Board decided that recently added Rule 28(2) EPC is in conflict with Article 53(b) EPC as interpreted by the Enlarged Board of Appeal in decisions G 2/12 (Tomatoes II) and G 2/13 (Broccoli II). The Technical Board decided that "in accordance with Article 164(2) EPC, the provisions of the Convention prevail".
• "In the decision under appeal, the examining division reasoned that Rule 28(2) EPC constitutes a "clarification of the scope of Article 53(b) EPC". The board however cannot deduce from decisions G 2/12 and G 2/13 any other interpretation of Article 53(b) EPC than that plants are not excluded from patentability, even if they can only be obtained by an essentially biological process. Since [new] Rule 28(2) EPC excludes plants or animals exclusively obtained by means of an essentially biological process from patentability, its meaning is in conflict with the meaning of Article 53(b) EPC as interpreted by the EBA."
• "In the present case, Rule 28(2) EPC in fact reverses the meaning of Article 53(b) EPC, as interpreted by the EBA. In view of this direct contradiction, interpreting Rule 28(2) EPC in such a way that no contradiction exists is not possible."
• "The board agrees with the finding in decision T 39/93 (see Reasons, point 3.2) that "the meaning of an Article of the EPC (...), on its true interpretation as established by a ruling of the Enlarged Board of Appeal cannot, (...), be overturned by a newly drafted Rule of the Implementing Regulations, the effect of which is to conflict with this interpretation". The board concludes that it must apply decisions G 2/12 and G 2/13 unless it has reasons to refer the same question underlying these decisions for reconsideration by the EBA."
• The Board sees no reasons for a new referral to the EBA. The Boards observes that the Notice of the Commission of the EU of 8 November 2016 "has no legal authority." In particular, within the legal framework of the EU, binding interpretations of the Biotech Directive are to be given by the CJEU. Accordingly, also the argument that new Rule 28(2) EPC served to ensure consistency between the Biotech Directive and the EPC fails because the presumption that the Biotech Directive has to be interpreted as set out in the Notice is not valid.
• "If the adoption of Rule 28(2) EPC by the Administrative Council [...] were to be considered a subsequent agreement in the sense of the Vienna Convention and used for the interpretation of Article 53(b) EPC, this would reverse the meaning of Article 53(b) EPC as interpreted by the EBA (see point 24 above), i.e. it would represent an amendment of an Article of the Convention." However, the AC is not competent to amend Article 53(b) EPC. - 20.02.2019: here I originally omitted a key phrase from the decision: "However, the Administrative Council is not, in the light of Articles 33(1)(b)and 35(3) EPC, competent to amend the Convention, here Article 53(b) EPC, by amendment of the Implementing Regulations, here Rule 28(2) EPC."   
• As a comment, T 39/93 was (in relevant part) about what is now Rule 116 for which G 6/95 found that Rule 116 does not apply to the Boards. G6/95 was about whether the Boards are required to issue a preliminary opinion, T 39/93 is (in the relevant part, namely headnote I) about whether Rule 116 affects the rules for admitting documents in appeal. I note that T 39/93 is more frequently cited for its headnote II about the "subjective" technical problem, or for its headnote III about the skilled person does not have any inventive capability. Its headnote I is that Rule 116 " should not be construed as an invitation to file new evidence or other material departing from the legal and factual framework of issues and grounds pleaded and evidenced throughout the proceedings prior to the hearing of the appeal". The present decision refers to point 3.2 of T 39/93 where the Board "for the sake of completeness" reasoned that "the Board cannot accept the Appellant's legal proposition that an amendment to a procedural rule [of Rule 116] is capable of overriding those well-established legal principles, laid down in the points of law above referred to, that define the nature and function of appeals, and in particular the scope and effect of Article 114(1) EPC in relation to that function." (which is followed by the sentence quoted above).

EPO Headnote

Rule 28(2) EPC is in conflict with Article 53(b) EPC, as interpreted by the Enlarged Board of Appeal in decisions G 2/12 and G 2/13. In accordance with Article 164(2) EPC, the provisions of the Convention prevail.

EPO T 1063/18 - T1063/18 - link

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 99 EPC and is therefore admissible.

Main request

Exception to patentability under Article 53(b) EPC in conjunction with Rule 28(2) EPC

2. Exception to patentability under Article 53(b) EPC in conjunction with Rule 28(2) EPC of the subject-matter of claims 1 and 2 was the sole reason given in the decision under appeal for refusing the application.

3. Article 53(b) EPC excludes from patentability "plant or animal varieties or essentially biological processes for the production of plants or animals".

Decisions G 2/12 and G 2/13

4. Decisions G 2/12 (OJ EPO 2016, A27; Tomato II) and G 2/13 (OJ EPO 2016, A28; Broccoli II) of the Enlarged Board of Appeal (EBA) concern the patentability of plants directly obtained by and/or defined by an essentially biological process, the meaning of "essentially biological process for the production of plants" having already been defined in decisions G 2/07 (OJ EPO 2012, 130; Broccoli I) and G 1/08 (OJ EPO 2012, 206; Tomato I). The EBA considered that what remained to be determined was: whether or not the exclusion from patentability of essentially biological process for the production of plants "is limited to method or process claims or whether it also encompasses a patent claim for a product that is directly obtained and/or defined by an 'essentially biological process'." The EBA gave an interpretation of the meaning of this aspect of Article 53(b) EPC, considering its wording, the legislator's intention and taking into account the aspect of subsequent agreement and practice within the meaning of Article 31(3) Vienna Convention on the law of treaties, concluded at Vienna on 23 May 1969 (further referred to as: the Vienna Convention), as well as a systematic and historical interpretation (see Reasons, point VII.).

5. The EBA stated that applying the various methodical lines of interpretation to Article 53(b) EPC pointed towards not extending the scope of the process exclusion pursuant to Article 53(b) EPC "directly to a product claim or a product-by-process claim directed to plants or plant material such as a fruit, or to plant parts other than a plant variety" (see Reasons, points VII.6.(2) and (3)).

T 1542/14 - Rule 137(5) not in opposition

Key points

• In this opposition appeal, the Board confirms that Rule 137(5) does not apply to amendments in opposition (following T443/97).

EPO T 1542/14 - link

5. Regel 137(5) EPÜ

Der Einwand der Beschwerdeführerin, dass die Änderungen des Anspruchs 1 während des Einspruchsverfahrens die Vorschriften der Regel 137(5) EPÜ verletzten, trifft nicht zu, da, wie von der Beschwerdegegnerin argumentiert, Regel 137(5) EPÜ nur auf Änderungen, die während des Prüfungsverfahrens vorgenommen wurden, abstellt, siehe Rechtssprechung der Beschwerdekammern, 8. Auflage 2016, IV.B.5.1-5.2.

T 1329/15 - Convergent requests

Key points

• The Board decides on admissibility of AR's filed four weeks before the oral proceedings.
• " An approach frequently adopted by the Boards when exercising their discretion in admitting an amendment filed during oral proceedings can be summarised as follows: Unless good reasons exist for filing the amendment so far into the proceedings - for example if it is occasioned by developments in the proceedings - it will be admitted only if it does not extend the scope or framework of discussion as determined by the decision under appeal and the statement of the grounds of appeal, and is moreover clearly allowable" 
• " Regarding the framework of discussion, new auxiliary requests filed in appeal proceedings are, in accordance with settled jurisprudence (cf. CLBA, IV.E.4, 4.4.4), expected to be convergent with the previous requests on file, i.e. to develop and increasingly limit the subject-matter of the independent claim in the same direction and/or in the direction of a single inventive idea." 
• " Furthermore, in the Board's view, auxiliary requests 1 and 2 are neither convergent with the main request, nor with each other. Claim 1 of the main request concerns the idea of adding a cyclone separator to the hand held vacuum cleaner (see characterising portion). Rather than further developing this idea, claim 1 of the first auxiliary request adds the feature of a floor nozzle and its flexible hose connection. Likewise, instead of adding features of the cyclone separator or the floor nozzle, the second auxiliary request abandons the floor nozzle features and instead adds features concerning the position of air outlet openings in the housing of the hand held vacuum cleaner." 
• As a comment, it is unity of invention does not apply to opposition procedures, but these AR's are deemed non-convergent by adding limiting features which do not "develop the idea"  of the Main Request.
• Moreover, the appeal is admissible even though the Notice of appeal contained no request.

EPO T 1329/15 - link

Reasons for the Decision

1. Admissibility of the appeal

The respondent-proprietor argued in their reply to the appeal that the appeal was not admissible because the notice of appeal contained no request and it was questionable whether the notice of appeal contained the appellant's address. Furthermore, they argued that the statement of grounds of appeal did not clearly indicate the reasons for setting aside the impugned decision and was structured more like an opposition notice than a grounds of appeal.

In a communication to the parties of 15 June 2018 (see section 2) the Board set out its reasoned preliminary opinion as to why the appeal of the opponent II was admissible. The opinion is reproduced in italics below:

T 0123/14 - Form 2061, procedural violations

Key points

• This is an appeal against a refusal with Form 2061, a decision "according to the state of the file".
• |" The impugned decision explicitly states that the applicant had filed no comments in reply to the latest communication, which is manifestly incorrect. The Examining Division therefore ignored the arguments submitted after the communication referred to in the impugned decision and thus infringed the appellant's right to be heard, which amounts to a first substantial procedural violation." 
• This is a substantial procedural violation, the decision is also insufficiently reasoned because the applicant's argument with the last letter were ignored.
• " The Board wishes to point out that the above procedural violations could have been avoided if the Examining Division had simply issued a regular reasoned decision in response to the letter of reply taking into account the freshly presented comments." 

EPO  T 0123/14  - link

Reasons for the Decision

1. The appeal is admissible.

Procedural violation

2. According to Article 113(1) EPC 1973, the decisions of the European Patent Office may only be based on grounds and evidence on which the parties concerned have had an opportunity to present their comments.

3. The right to be heard under Article 113(1) EPC 1973 requires that those involved be given an opportunity not only to present comments but also to have those comments considered, that is, reviewed with respect to their relevance for the decision on the matter. The deciding department must demonstrably consider the comments. For an Examining Division not to violate an applicant's right to be heard, its decision has to actually address the arguments put forward by the applicant in its reply to a previous communication. It may be assumed that the right to be heard has been contravened if the reasons given for the Examining Division's decision merely repeat the reasons given for the communication issued before the said reply (see Case Law of the Boards of Appeal of the European Patent Office, Eighth Edition, July 2016, III.B.2.4.2).