T 0448/16 - Board must remain neutral

Key points 

• This decision in an opposition appeal was given publication code [C] by the Board, so I discuss it here.
• The Board considers the claims of the Main Request to involve an unallowable intermediate generalization.
• " Lifting feature f out of this context (of paragraph [0063] and figure 2B) and adding it in isolation to claim 1 therefore represents a generalisation of the specific structural and functional context in which the feature might be said to originally appear. At the same time it raises it to prominence, giving it a significance over other features that it does not have in the original parent disclosure." 
• The patentee raised an objection under Rule 106 EPC. " The core of the objection as the Board understands it is that it should have indicated to the appellant-proprietor what features were missing in the various versions of the auxiliary requests " (to address the issue of intermediate generalization due to the isolated extraction of feature F out of the description).
• The Board in reply recalls that " a board must remain neutral in inter partes proceedings, both in its communications to the parties and in oral proceedings." (R9/09). 
• The Board dismisses the Rule 106 objection on the ground that "Had the Board, after having discussed the issue exhaustively with the parties, then indicated to the appellant-proprietor, precisely which specific features were missing from claim 1 in any of its versions so that the appellant-proprietor could compose suitable counter-arguments or file a suitably adapted further request, this would have favoured the appellant-proprietor's case over that of the respondent-opponents. Such a course of action would have compromised the Board's duty to remain neutral, and thus the Board saw itself as prohibited from so doing." 

EPO T 0448/16 -  link

9. During the oral proceedings before the Board after non-admission of Auxiliary Request ID, the appellant-proprietor raised, in writing, the following objection under Rule 106 EPC:

"We herewith raise an objection under Rule 106 EPC.
In the first part of the oral proceedings, the Chairman asked the parties to present their cases on the question of added matter over the parent application. After a break for deliberation, the Board indicated that the claims of the main request and all auxiliary requests on file contain added subject-matter, in violation of Art. 76 EPC. The Chairman indicated that the claims of all requests on file, including all auxiliary requests in versions A, B and C are inadmissibly generalized. Proprietor's representatives asked if the Board's opinion had changed over the written preliminary opinion, and for an indication as to the feature/features which caused the violation found. At a later stage in the oral proceedings, the Chairman stated that the generalization relates to feature f). Thereafter, the Proprietor's representatives asked for indication as to why this feature f) was found to be inadmissibly generalized, i.e., which missing aspects of the original disclosure of the parent application caused the objection.
However, the Board was not willing to provide such indication.
Therefore, Proprietor was not in a position to properly react, provide arguments, or remedy possible deficiencies in any of the claim sets on file. In the Proprietor's view, this constitutes a fundamental violation of the right to be heard according to Article 113 EPC".

T 2370/16 - Parties can't be permitted to influence the minutes

Key points

• In this examination appeal, the applicant had requested a certain statement to be included in the minutes of the oral proceedings before the Board.
• The Board recalls that " It is within the discretion of the board what is considered "essential" or "relevant"; what constitutes "the essentials of the oral proceedings" or "the relevant statements made by the parties" has to be determined by reference to what the board has to decide (see T 966/99" . Moreover, "no single party can be permitted to [...] influence the content of the minutes" referring T1721/07. 
• The applicant had requested the Board to put in the minutes that "The primary examiner entrusted with the examination of the present application and the pending divisional application attended the Appeal Board hearing". However, the Board did not ask the attending member of the public at issue to identify himself and did not put the statement in the minutes.

EPO T 2370/16 -   link



7. Request for inclusion of a statement in the minutes

7.1 During the oral proceedings before the board, the applicant requested that a statement presented in written form at the oral proceedings on 14 June 2019 be included in the minutes. The applicant's statement reads: "The primary examiner entrusted with the examination of the present application and the pending divisional application attended the Appeal Board hearing" (see the annex to the minutes of the oral proceedings).

7.2 According to Rule 76(1) EPC 1973, minutes of oral proceedings must contain "the essentials of the oral proceedings" and "the relevant statements made by the parties". It is within the discretion of the board what is considered "essential" or "relevant"; what constitutes "the essentials of the oral proceedings" or "the relevant statements made by the parties" has to be determined by reference to what the board has to decide (see T 966/99, Reasons 7.2.2).

T 2677/16 - Identifying a drug discovery target is not technical

Key points

• The purpose of the method of claim 1 of all requests on file is "identifying a drug discovery target".
• "[T]he examining division found the claimed method not to achieve its technical purpose by its features"; hence the ED considered claim 1 to lack inventive step.
• "[T]he board disagrees with the very starting premise of [the Examining Division's analysis] that the claimed method serves a technical purpose"
• " [The reasoning of the Examining Division] unduly broadens the concept of a technical purpose to encompass any scientific endeavour in medicine. A drug target is not a therapy: it has no therapeutic effect, but is merely a promising direction for future research. The discovery of a drug target may well turn out to be a valuable scientific discovery, but neither discoveries nor science have technical character as such, as is explicitly enshrined in Article 52(2)(a) EPC. This should not be confused with the invention of a drug, which would represent a technical purpose (See also Benkard, Europäisches Patentübereinkommen, 3rd edition, 2019, Article 52, point 228 et seq.)."
• "The method of claim 1 [] models the disease-related metabolic pathways in the body for the purpose of identifying drug targets [] [S]uch modelling itself is an abstract intellectual activity. It cannot contribute to the technical character of the invention unless it serves a technical purpose (See T 49/99, point 7 of the reasons), which is not the case in the present application." 
• As a comment, the present decision appears not entirely irrelevant to pending G1/19, in particular, the second question of G1/19 asking essentially when a simulation method as such solves a technical problem. The Office President proposed in G1/19 that a sufficient condition is that "is that the simulation method reflects, at least in part, technical principles underlying the simulated system or process". The claim at issue in the present case are directed to "an ontology for storing and accessing genomics information in a database", I don't know if such a method is fundamentally different from a simulation.  

EPO T 2677/16 -  link

VI. Claim 1 of the main request reads as follows:
"A method for identifying a drug discovery target, the method comprising:
providing an ontology for storing and accessing genomics information in a database, wherein the genomics information comprises information relating to genes, proteins expressed from the genes, and biological effects of the expressed proteins, and wherein the ontology is organized so that each gene, protein, and biological effect is categorized by class, wherein a class includes genes, gene products, and biological effects sharing similar properties, and a biological relationship between each gene, protein, and biological effect is defined by slots and facets, wherein a slot identifies a relationship between classes and a facet identifies a restriction on a slot for a specific gene, gene product, or biological effect within a class;
querying the database to generate a profile including a collection of nodes connected by directed edges, wherein each node represents a gene or a gene product, wherein each directed edge represents the biological relationship between two nodes, and wherein the collection of nodes include concepts that are biologically related to a disease state;
identifying, within the profile, a disease-related pathway to the disease state, wherein the disease-related pathway includes the biological relationships and actor concepts, the actor concepts including genes and proteins; and
identifying each of the actor concepts involved in each biological relationship as a drug discovery target."

Reasons for the Decision

1. The contested decision includes an obiter dictum that claim 1 of the main request only contains abstract algorithmic steps and is thus directed to a mental act in the sense of Article 52(2)(c) EPC. However, the examining division assumed, in light of the description, that the method of claim 1 was computer-implemented, and thus did not base the decision to refuse the application in suit on Article 52(1) and (2)(c) EPC, but rather on Article 56 EPC (see the contested decision, point 12.2 of the reasons). The board disagrees with this obiter, as the step of "querying the database" implicitly involves a computer, i.e. technical means, which renders the method of claim 1 of the main request an invention within the meaning of Article 52(1) EPC (See T 258/03, OJ EPO 2004, 575, Headnote I).

G 0002/19 - Exceptions to the right to oral proceedings

Key points

• The full written decision in G2/19 was recently issued. The order was already announced during the oral proceedings:
  1. A third party within the meaning of Article 115 EPC who has filed an appeal against a decision to grant a European patent has no right to have its request for an order that examination proceedings in respect of the European patent are re-opened for the purpose of removing allegedly unclear claims (Article 84 EPC) heard at oral proceedings before a board of appeal of the European Patent Office. An appeal filed in such a way has no suspensive effect
  2. Oral proceedings before the boards of appeal at their site in Haar do not infringe Articles 113(1) and 116(1) EPC.
•  As to the place of oral proceedings, the EBA notes that the starting point is that the place and time of oral proceedings can have a connection with the right to be heard. Choosing a place or time that is entirely out of the ordinary can give the impression as a defective willingness (of the Board) to engage with the party's concerns. However, this is not seriously debated with regards to the relocation of the place of oral proceedings from Munich to Haar. 
• So the next time the Board summons you in Tokio and/or on Sundays, you can invoke Articles 113 and 116.
• The EBA notes that Article 116(1) EPC allows for exceptions; the circumstances of the underlying case justify such an exception. The EBA notes that Article 116(1) EPC applies to all kinds of procedures before the EPO. 
• "Diese Vielfalt im Anwendungsbereich spricht dagegen, Artikel 116 (1) Satz 1 EPÜ gleichsam Absolutheitscharakter beizulegen. Die Norm ist vom Konventionsgeber ersichtlich als Grundsatzregelung für die typischen Fallgestaltungen gedacht, mit denen die Verfahrensorgane des Europäischen Patentamts in ihrer täglichen Praxis konfrontiert sind. Ausnahmen vom Grundsatz sind aber nicht ausgeschlossen, wenn die Anwendung aufgrund der besonderen Umstände des Einzelfalls sinnwidrig wäre. So verhält es sich im Ausgangsverfahren."
• The EBA notes that the appellant is not a party to the grant proceedings (Article 115) and hence is not entitled to appeal (Article 107). 
• The EBA makes an interesting remark about Article 115, namely that the Examining Divisions are obliged to take note of the Third Party Observations. The EBA then states that  "Ungeachtet der Frage, inwieweit ein Verstoß dagegen justiziabel ist," the Examining Division had taken note of the TPO's at issue, according to the file. As a comment, I wonder if this means that answer 1 above is not absolute, i.e. that appeal is in fact possible in the event that the file does not show that the ED had taken note of the TPO's.
• The EBA discussed one decision of a national court, namely BGH X ZR 95/05. As a comment, I don't know if there are no decision of other national courts (FR, GB, NL) on the topic. It is always particular to see only a German national decision being discussed in German language EPO proceedings.
• Now for the reasons why there is an exception to Article 116(1) in this case:
"Artikel 116 (1) Satz 1 EPÜ ist vielmehr dahin einschränkend auszulegen, dass die bloße formale Position als faktischer Beteiligter am Beschwerdeverfahren nicht ausreicht, um die Durchführung einer mündlichen Verhandlung verlangen zu können, wenn der Petent, wie hier, nicht zur Beschwerdeeinlegung befugt ist, weil er im Rechtssinne nicht am vorangegangenen Verfahren beteiligt war oder wenn er – was hier zugleich vorliegt - einen der Beschwerde nicht zugänglichen Gegenstand verfolgt. "
• In the above, "Petent" means petitioner. I'm not sure why the EBA uses that term instead of "appellant" ("Beschwerdeführer"). The two grounds are hence 1) the appellant was not a party to the first instance proceedings and 2) the appellant 'pursues an object which is not accessible to the appeal'
• The effect is that the Board can reject the appeal as inadmissible "ohne Einhaltung weiterer prozessualer Formalitäten" (as in G1/97), i.e. without oral proceedings and (in view of G1/97) without giving the appellant an opportunity to comment under Article 113 EPC.
• The appeal also lacks suspensive effect. The EBA finds that Article 106(1) s.2 has a general character, just as Article 116. "Es besteht hingegen kein anerkennenswertes Interesse daran, die aufschiebende Wirkung auch einem Rechtsbehelf beizulegen, der, wie die Beschwerde eines Dritten wegen unklarer Ansprüche, keinen Rückhalt im Europäischen Patentübereinkommen hat und deshalb offensichtlich unzulässig ist. Dem ist durch eine entsprechende Ausnahme von der Grundsatzregelung in Artikel 106 (1) Satz 2 EPÜ Rechnung zu tragen. 
• As a comment, the referral was completely silent on the suspensive effect. I am not sure if there is precedent for the EBA answering more questions than those referred. 
• As to admissibility of the referral, the EBA finds that the second question (answer 1 above) is admissible. The fact that the appeal is inadmissible, does not make the referral inadmissible (contrary to the President's submissions). The first question of the TBA is inadmissible, because the second question already fully covers the Board's need for clarification. In contrast, the first question of the TBA involved a generalisation to all cases wherein the appeal appears inadmissible "at first sight". The EBA notes that this is an undefined legal term, which is not derived from the EPC and which is not defined in the referral decision.  
• Yet, the EBA considers the appeal to be an "offensichtlich unzulässigen Rechtsbehelfs". As a comment, apparently, this legal concept is sufficiently clear, in view of the EBA whereas the legal concept of "at first sight" inadmissible appeal (used by the TBA in its first question) was not, according to the EBA. "Offensichtlich unzulässig ist ein Rechtsbehelf etwa dann, wenn er von einer zur Rechtsmitteleinlegung nicht befugten Person stammt (hier: Dritter im Sinne von Artikel 115 EPÜ), oder wenn damit ein Beschwerdeziel verfolgt werden soll, das vom Europäischen Patentübereinkommen nicht als Gegenstand einer Beschwerde nach Artikel 106 (1) EPÜ anerkannt, sondern ausgeschlossen ist (hier: Beseitigung von vermeintlichen Undeutlichkeiten der Patentansprüche im Sinne von Artikel 84 EPÜ)."  (emphasis added).
• As a comment, the word "etwa" ("for example") may indicate that the exception also applies to other kinds of inadmissible appeals. It seems to me that the EBA only gives two examples of  " "offensichtlich unzulässigen Rechtsbehelfs" and I have found no definition of the term in G2/19. Moreover, the EBA does not seem to indicate what is the difference between a normally inadmissible appeal and an "offensichtlich unzulässigen Rechtsbehelfs". Comments (especially of German native speakers) are welcome; I have to say that I don't find G2/19 a very easy read.
• The EBA states that  "Ergänzend ist klarzustellen, dass die Einlegung eines aufgrund solcher Umstände offensichtlich unzulässigen Rechtsbehelfs konsequenterweise keine aufschiebende Wirkung entfaltet." So, "offensichtlich unzulässigen" appeals lack suspensive effect. This is a useful addition to the literature (e.g. Visser, Art.106(1):2 and the MGK discussed therein). However, in my view, the EBA's reasoning would have benefited from a definition of "offensichtlich unzulässigen" appeals rather than the indication of two examples. The underlying issue could be whether a patentee can appeal (timely) against the grant of his own patent (in order to file a divisional application during the appeal proceedings).
• Edited 04.10.2019 19:30

EPO G 2/19 G2/19 G0002/19 G 0002/19 - link

Headnote

(link)

1. A third party within the meaning of Article 115 EPC who has filed an appeal against a decision to grant a European patent has no right to have its request for an order that examination proceedings in respect of the European patent are re-opened for the purpose of removing allegedly unclear claims (Article 84 EPC) heard at oral proceedings before a board of appeal of the European Patent Office. An appeal filed in such a way has no suspensive effect.
2. Oral proceedings before the boards of appeal at their site in Haar do not infringe Articles 113(1) and 116(1) EPC.

Sachverhalt und Anträge

I. Vor der Technischen Beschwerdekammer 3.5.03 ist das Verfahren T 831/17 anhängig, das sich auf die Erteilung des europäischen Patents Nr. 2 378 735 (im Folgenden: Streitpatent) am 12. Januar 2017 bezieht. Auf die Erteilung ist am 8. Februar 2017 im Europäischen Patentblatt hingewiesen worden. Das Streitpatent geht auf eine Teilanmeldung aus der früheren europäischen Patentanmeldung Nr. 06113477.1 (im Folgenden: Stammanmeldung) zurück und betrifft ein Verfahren zum Betreiben eines Mobilfunknetzes mit mehreren nebengeordneten Ansprüchen. Patentanspruch 1 lautet:

T 0858/18 - Fax pages after midnight

Key points

• The Board decides that an opposition is inadmissible because the last few pages were received after midnight of the last day of the opposition period. The Board explains that the possibility to renounce the last pages and keep the previous date (Article 5(2) DPFF (decision on fax filings)) does not apply to subsequent documents.  " The clear wording and structure of the DPFF does not leave any room for an analogous application of Article 5(2) DPFF to other documents as regards their date of receipt. " 
• In the case at issue, three pages were received after midnight: the last page of the " Statement of Facts and Arguments" and EPO Form 1038.
• The Board considers the Statement of Facts and Arguments to be " a single document" . " The transmission of this document [...] extended beyond midnight, the information recorded on the last page reaching the EPO only after midnight." The Board then has to decide on which date this document was received. 
• The Board concludes that " if the facsimile transmission of a document extends beyond midnight, the date on which such a document is received within the meaning of Article 5(3) DPFF is the later of the two consecutive dates." 
• " The Board concedes that a delay of only a few minutes is minimal and the consequence can be harsh, as the present case clearly illustrates. But such a consequence is inherent whenever time limits have to be respected. " 
• The counter-intuitive result is that the opponent would likely have been better of if he had not submitted the last three pages at all, because a missing signature page can be repaired (see e.g. T0382/16).

EPO T 0858/18 -  link



EPO Headnote
If a facsimile transmission of a document within the meaning of Rule 50(3) EPC begins on an earlier date and extends beyond midnight to a later date, the entire document is accorded the later date as single date of receipt. There is no legal basis for according the earlier date as date of receipt to the part of the document arriving at the EPO before midnight (see in particular point 6 and for the term "document" point 4 and for the "date of receipt" point 5 of the reasons).
Deviating from decisions T 2061/12 and T 2317/13 (see points 7.3 and 7.4 of the reasons).

Summary of Facts and Submissions

I. This appeal by the patent proprietor (in the following: appellant) lies from the decision of the Opposition Division revoking European patent No. 2 392 194 pursuant to Article 101(3)(b) EPC.

II. Mention of the grant of the opposed patent was published in the Bulletin on 18 March 2015.

III. The opponent (in the following: respondent) filed a notice of opposition against this patent by facsimile including 19 pages. The facsimile transmission started on 18 December 2015 at 23:53:42 and ended on 19 December 2015 on 00:01:14. The facsimile contained, in this order:

(a) Form 2300 "Notice of opposition to a European patent" (pages 1 to 4, which reached the EPO on 18 December 2015),

(b) Form 1010 "Payment of fees and expenses" (page 5, which reached the EPO on 18 December 2015), and a

(c) "Statement of Facts and Arguments concerning EP 2 392 194 B1" (pages 6 to 17, of which pages 6 to 16 reached the EPO on 18 December 2015 whereas page 17 reached the EPO on 19 December 2015), and

(d) Form 1038 (pages 18 to 19, which reached the EPO on 19 December 2015).

IV. The Opposition Division held the opposition to be admissible following the reasoning of decision T 2061/12, according to which the earlier date of receipt could be attributed to the part of a document filed by facsimile arriving before midnight. All elements required for an admissible opposition were therefore deemed to have been received before the lapse of the opposition period.

Reasons for the Decision

1. The appeal is admissible.

2. Lapse of the opposition period

T 2609/18 - No RE for Notice appeal, refund fee

Key points

• In this examination appeal, the appellant filed only a debit order for the appeal fee (Form 1038E). The appellant requests re-establishment for the filing of the Notice of appeal (the appellant does not argue that the timely filed Form 1038E was a Notice of appeal).
• " In the present case, the appellant - contrary to its submission with the letter dated 4 January 2019 - learned already during the telephone call with the formalities officer on 24 October 2018 that a notice of appeal had not been sent to the EPO. It follows that [...] the two-month time limit started on 25 October 2018 and expired after the Christmas holidays on 2 January 2019. [] Since the appellant filed the request for re-establishment together with the notice of appeal only on 4 January 2019, the request was filed [late]".  Consequently, the request for re-establishment is inadmissible.
• The request is also not admissible for lack of substantiation. "The appellant merely submitted that the failure to file notice of appeal was "due to a clerical error made in good faith". It presented no facts whatsoever on the question whether the conduct of the appellant's representative complied with the requirement to exercise all due care under the circumstances. Hence, the request does not satisfy the requirement for a duly substantiated request under Rule 136(2), first sentence, EPC and is inadmissible for this reason as well." 
• " Following the opinion G 1/18 of the Enlarged Board of Appeal, Headnote 1 c), an appeal is deemed not to have been filed where: - the appeal fee was paid within the two-month time limit prescribed in Article 108, first sentence, EPC for filing notice of appeal; and - notice of appeal was filed after expiry of that two-month time limit. Consequently, the appeal fee is to be reimbursed. This is to be ordered ex officio (see G 1/18, Headnote 2)." 

EPO T 2609/18 - link

Reasons for the Decision

1. According to Article 108, first sentence, EPC, notice of appeal must be filed at the EPO within two months of notification of the decision. The appeal fee must be paid within the same time limit, Article 108, second sentence, EPC.

2. The appellant received the decision of the examining division on 2 July 2018. Consequently, under Rules 126(2), 131(2) and (4) EPC the above two-month time limit started on 3 July 2018 and expired on 2 September 2018. Within this period, the appellant paid only the appeal fee but did not file notice of appeal.

3. It is established case law that, if no written notice of appeal has been filed within the time limit but only the appeal fee has been paid in time, the mere payment does not constitute a valid means of lodging an appeal (see Case Law of the Boards of Appeal of the European Patent Office, 8th edition 2016, section IV.E.2.5.4, and further references cited there).

4. Thus, the question of whether the appeal has been validly lodged hinges on whether the request for re-establishment of rights in respect of the time limit for filing the notice of appeal is admissible and allowable.

T 0382/16 - Last page missing

Key points

• In this opposition appeal, "the patent proprietor (respondent) submitted with their rejoinder (letter of 23 August 2016) comparative tests dated 15 [May] 2014 which will be referred to as D11." 
• The appellant objects that the letter of 23.08.2016 had not been signed.
•  "The respondent replied with a letter of 12 March 2019 indicating that the last page of the rejoinder of 23 August 2016 (page 5) bearing the signature of the representative had not been transmitted. Accordingly, the whole rejoinder including the missing page 5 with a signature of the representative was submitted with said letter of 12 March 2019." 
• The Board: " in analogy to the provisions of Rule 50(3) EPC, it was considered that the submissions made by the respondent with letter of 23 August 2016, i.e. pages 1 to 4 and experimental report D11, shall retain their original date of receipt. "
• Note that Rule 50(3) EPC supposes that the EPO " shall invite the party concerned to do so within a time limit to be specified." This decision clarifies that the signature can also be provided prior to such an invitation.

EPO T 0382/16 -  link


Summary of Facts and Submissions

VI. The patent proprietor (respondent) submitted with their rejoinder (letter of 23 August 2016) comparative tests dated 15 [May] 2014 which will be referred to as D11.

VII. The appellant submitted with a letter of 5 March 2019 that the rejoinder of the respondent had not been signed by a person authorized to represent the respondent. It was argued that a remedy to this deficiency would presuppose the existence of a communication under Rule 50(3) EPC which had not been issued.

VIII. The respondent replied with a letter of 12 March 2019 indicating that the last page of the rejoinder of 23 August 2016 (page 5) bearing the signature of the representative had not been transmitted. Accordingly, the whole rejoinder including the missing page 5 with a signature of the representative was submitted with said letter of 12 March 2019.

IX. In the communication of the Board of 8 April 2019 sent in preparation for the oral proceedings, the Board indicated that having regard to respondent's letter of 12 March 2019 and in analogy to the provisions of Rule 50(3) EPC, it was considered that the submissions made by the respondent with letter of 23 August 2016, i.e. pages 1 to 4 and experimental report D11, shall retain their original date of receipt.

[...]

Reasons for the Decision

1. The indication by the Board in its communication of 8 April 2019 that the submissions made by the respondent with letter of 23 August 2016, i.e. pages 1 to 4 and experimental report D11, shall retain their original date of receipt (see above point IX of the Summary of Facts and Submissions) was not disputed by the appellant. The submissions made by the respondent with letter of 23 August 2016 are therefore deemed to have been made within four months of notification of the grounds of appeal and are to be taken into account in the appeal proceedings (Rule 12(1)(b) and (4) RPBA).