T 3142/19 - A forest of optional features

 Key points

• The Examining Division refused the application because claim 1 would lack basis in the application as filed due to a combination of features. In particular, according to the ED: “Although the features were disclosed, there was no specific pointer to the particular combination claimed. All the features were described as optional, and there was no indication by way of the technical problem solved to lead the skilled person to the conclusion that some of the features were actually not optional or that they were meant to be combined.”.
• The Board: “ if the description indicates that some combination is desirable, or necessary to solve a technical problem, then a clear pointer to - and thus disclosure of - the combination is provided. If not, however, it does not automatically mean that the combination is not derivable by the skilled person.”
• “An excessive number of optional features may also have an impact on the assessment of compliance with Article 123(2) EPC, in that, in a forest of optional features, a singled-out individual combination may not be clearly and unambiguously derivable by the skilled person. Whether this is indeed the case depends, however, on the specifics of the case, e.g. on the level of complexity caused by the optional features.”
• “According to Article 123(2) EPC, the content of the application as filed delimits at the outset the broadest protection that the applicant may obtain.”
• As a comment, the broadest scope of protection is typically considered under Article 123(3) and broadening claim amendments are possible before grant. 
• The Board finds the claims to comply with Article 123(2) and remits the case.

EPO T 3142/19 -  link

Main Request - Article 123(2)

3. The Examining Division rejected the main request on the basis of the argument that the claimed combination of features was not originally disclosed (point 2 in the grounds for the decision). Although the features were disclosed, there was no specific pointer to the particular combination claimed.

3.1 All the features were described as optional, and there was no indication by way of the technical problem solved to lead the skilled person to the conclusion that some of the features were actually not optional or that they were meant to be combined.

J 0007/19 - Correction withdrawal rejected

Key points

• The Board does not allow a correction of a withdrawal of an application.
• The appellant submitted that the withdrawal“had been based "on the erroneous belief" that the claims of the withdrawn European patent application were the same as the claims of a corresponding Japanese patent application.”
• The Board: “The notion of a mistake eligible for correction under Rule 139 EPC does not cover the scenario where a declaration of withdrawal reflects the true intention of the applicant, but is based on wrong assumptions.”
• The Board: “There are also good policy reasons for having this limitation. If the notion of a mistake were extended to also cover a scenario where the declaration correctly reflects a party's intentions, but was based on wrong assumptions, any mistaken assessment of the disclosure of the application, the patentability of the invention, the entitlement to priority, the legal provisions or the related case law would make any withdrawal potentially eligible for correction. This would be detrimental to legal certainty ”
• The Board also refers to general principles as illustrated by Italian, Swiss and German civil law. 
• Personally I appreciate that the Legal Board discusses the law of more EPC Contracting States than only Germany. 

Headnote

• “The notion of a mistake eligible for correction under Rule 139 EPC does not cover the scenario where a declaration of withdrawal reflects the true intention of the applicant, but is based on wrong assumptions.”

EPO J 0007/19 -  link

Reasons for the Decision

1. According to Rule 139 EPC linguistic errors, errors of transcription and mistakes in any document filed with the European Patent Office may be corrected on request. This provision has been subject to extensive interpretation by the boards of appeal. According to the case law (J 8/80, OJ EPO 1980, 293, Reasons No. 3; J 4/82, OJ EPO 1982, 385, Reasons No. 3; J 19/03 of 11 March 2005, Reasons No. 3-12; J 4/97 of 9 July 1997, Reasons No. 3), Rule 139 EPC also applies to "corrections of procedural acts if they are submitted by a document", for example to a request for correction of the withdrawal of a designation or of a claimed priority (cf. J 19/03, loc. cit., Reasons No. 3 and 4). In this case the correction would retrospectively modify or eliminate the procedural act concerned.

T 0694/15 - The terminology "closest prior art" is somewhat misleading

Key points

• This is an examination appeal about inventive step.
• “The Examining Division started from document D8. The Board also considered documents D9 and D5 as possible starting points. The [applicant] disagreed that D5 was the closest prior art”
• The Board: “the terminology "closest prior art" is somewhat misleading. It is perhaps preferable to use the terminology "starting point (in the prior art)". It can be economical to start from prior art that is in some sense close to the invention, in the hope that the consideration of this single starting point will be enough to establish whether the claimed subject matter would have been obvious.”
• “However, if this fails, before arriving at the conclusion that the subject matter would not have been obvious, it is necessary to consider other possible starting points, to see whether there are any other paths leading to the invention, that the skilled person would have taken when searching for solutions to technical problems pertinent to that starting point. If such a path exists, then the invention would have been obvious.”
• “It has to be noted, however, that a problem which is not apparent from the context of the starting point, but which is derived only with knowledge of the invention, is very likely to be the result of hindsight.”
• The Boards finds the claims to be inventive.

EPO  T 0694/15 - link




9. The Examining Division started from document D8. The Board also considered documents D9 and D5 as possible starting points.

10. The appellant disagreed that D5 was the closest prior art, because it only provided, as a visual indication, the switching on or off of an LED, and did not provide for a measurement of a level in the sense of the claim, whereas D9 did.

11. This argument fails in view of the Board's claim construction (point 8, above). But the argument is actually of no relevance to the question of whether D5 can be selected as closest prior art.

12. Having one less feature in common with the claim may mean that it appears less likely that the skilled person would arrive in an obvious manner at something falling within the scope of the claim, but it does not mean that the skilled person could not have arrived at such subject manner without hindsight, possibly while looking for a solution to a different objective technical problem.

T 1050/19 - Requesting oral proceedings late

Key points

• The Board confirms established case law (but does not cite that case law) finding that oral proceedings can be requested throughout the procedure, such that a request for oral proceedings is not late.
• The Board clarifies that a request for oral proceedings is not an amendment of a party's case in the sense of Art.13(1) RPBA 2020. 

EPO T 1050/19 - link

Entscheidungsgründe

1. Zulassung des Antrags auf mündliche Verhandlung der Beschwerdegegnerin und Zulassung der Entgegenhaltungen D8, D9

Hinsichtlich dieser Fragen haben die Beteiligten während der mündlichen Verhandlung ihre Zustimmung zu einer Begründung in gekürzter Form gegeben (Artikel 15(7) VOBK 2020; siehe Protokoll der mündlichen Verhandlung).

Es genügt daher an dieser Stelle zu erwähnen, dass der spät gestellte Antrag auf mündliche Verhandlung zugelassen wurde, da es sich dabei nicht um eine Änderung des Beschwerdevorbringens nach Artikel 13(1) VOBK 2020 handelt, sondern um eine Ausübung des Anspruchs auf rechtliches Gehör, und dass die Kammer keinen Grund sieht, die Ermessensentscheidung der Einspruchsabteilung hinsichtlich der Zulassung von D8 und D9 aufzuheben, da diese das richtige Kriterium der prima facie Relevanz angewendet hat.

T 0891/16 - Grounds for opposition are not personal

Key points

• In this case, there are two opponents. Only opponent II raised Article 100(c) as ground of opposition in the first instance proceedings (namely in its Notice of opposition). Only Opponent I takes up this ground in appeal. Is this allowed or is this a 'fresh ground for opposition in appeal'  which is impermissible under G 10/91?
• The Board: "it is established case law that multiple admissible oppositions do not initiate a corresponding number of parallel opposition proceedings but only a single one and that each opponent can rely on an opposition ground duly submitted by other opponents [...] both in the opposition proceedings and in any subsequent appeal proceedings" (IV.C.2.1.6)

EPO T 0891/16 -   link

2.3.2 The proprietor requested to disregard the observations filed by opponent I on Article 100(c) EPC since opponent I introduced this ground of opposition for the first time with its statement of the grounds of appeal.

2.3.3 The Board observes that it is established case law that multiple admissible oppositions do not initiate a corresponding number of parallel opposition proceedings but only a single one and that each opponent can rely on an opposition ground duly submitted by other opponents and communicated to all parties in accordance with Rule 79(2) EPC respectively Rule 57(2) EPC 1973, both in the opposition proceedings and in any subsequent appeal proceedings, see Case Law of the Boards of Appeal, 9th Edition, 2019, IV.C.2.1.6. In the present case, the notice of opposition filed by opponent III was based, among others, on the ground of opposition under Article 100(c) EPC 1973, and in particular contained reasons why in its view Feature 5 contravened Article 123(2) EPC (see point 4 of the notice of opposition filed by opponent III).

Hence, the observations of opponent I with respect to the ground under Article 100(c) EPC 1973 are not to be disregarded, even if opponent I did not address this ground of opposition in the opposition proceedings.

T 0568/17 - Decision according to the state of the file is no formality

Key points

• This is an examination appeal concerning an application for an invention pertaining to database technology. Although this pertains to software, the claims were not rejected due to non-technical features but due to  'classical' lack of novelty. The applicant had requested a decision according to the state of the file and refusal with Form 2061 was issued.
• The Board: "an applicant's request for a decision according to the state of the file by no means permits, let alone obliges, an examining division to immediately conclude the examination proceedings as a mere formality with a decision issued on a standard form; rather, the examining division has to verify whether it is in fact in a position to adopt the opinion and reasons expressed in its last substantive communication as its definite stance on the case."
• The Board considers the claims to be novel. The Board: " it is unfortunate that the Examining Division, which consisted of three technically qualified examiners, failed to detect the severe errors of judgment when the decision to refuse the application was prepared."
• The Board remits the case because an additional search may be necessary. "Whether the search was complete is not a question that the Board is equipped to answer. Since the question presents itself, there are special reasons within the meaning of Article 11 RPBA 2020 to remit the case for further prosecution."

T 0568/17 -  link






3. Main request - novelty and inventive step


3.1 Document D1 relates to the construction of an inverted index for high-dimensional data (see paragraph [0025] and claim 1). It does not disclose transactions, let alone a detailed mechanism for performing transactions as specified in claim 1 of the main request.

3.2 The Examining Division, in point 3.1 of the communication containing the reasons for the decision, apparently considered that "efficient transaction processing" was implicitly disclosed by the reference to current Online Analytical Processing (OLAP) systems in paragraphs [0009] and [0010] of the background section of document D1.

However, a reference to OLAP systems is far from a disclosure of a particular way of performing transactions.

T 0949/13 - Taxol

Key points

• This Euro-PCT application has an international filing date 26.01.1994 (!). The patent was published in October 2010. The decision of the opposition division to maintain the patent was taken in 2013. The decision of the Board was taken on 19.12.2019 and was issued in writing on 29.07.2020.
• Some features of claim 1 of the main request were taken from the description after grant and the Board decides that these are unclear. 
• " the opposition division's and the [patentee's] interpretation is not the only way of construing the aforementioned feature. In the board's view, another equally valid and technically feasible understanding of feature iii) is "
• " It follows from the above that feature iii) is not only broad, as argued by the opposition division, but also ambiguous as it can be understood in various ways, i.e. as referring to the point of delivery of the therapeutic agent or to the form in which the therapeutic agent is delivered. This leaves the public in doubt as to what subject-matter is covered and not covered by claim 1 of the main request."
• The patent is revoked. 

EPO T 0949/13 - link





3. Clarity (Article 84 EPC)

3.1 The sole claim of the main request is directed to the use of taxol for the preparation of a medicament for inhibiting one or more pathological activities of normal mammalian vascular smooth muscle cells for a sufficient period of time to maintain an expanded vessel luminal area. Taxol is identified as a cytoskeletal inhibitor and characterised as a cytostatic therapeutic agent. It is administered directly or indirectly to a traumatised vessel.

According to the appellant, the claim's basis is found in claims 1 and 3 and on page 25, line 32 to page 27, line 24 of the application as filed. The board notes that the sole claim of the main request is not the result of a combination of claims as granted and that some features, such as the inhibition of one or more pathological activities or the direct and indirect administration, were not present in the claims as granted. In such a case, according to established case law of the boards of appeal, the opposition division and the board have the power under Article 101(3) EPC to examine whether the amendments introduce any contravention of requirements of the EPC, including Article 84 EPC (G 3/14). This was not disputed.

3.2 Under Article 84 EPC in combination with Rule 43(1) EPC, the claims must be clear and define the matter for which protection is sought in terms of the technical features of the invention. These requirements are there to ensure that the public is not left in any doubt as to what subject-matter is covered and not covered by a claim. Accordingly, a claim cannot be considered clear within the meaning of Article 84 EPC if it does not unambiguously allow this distinction to be made. A claim comprising an unclear or ambiguous technical feature therefore entails doubts as to the subject-matter covered by that claim. This applies all the more if the unclear feature is essential with respect to the invention in the sense that it is intended to delimit the subject-matter claimed from the prior art, thereby giving rise to uncertainty as to whether or not the subject-matter claimed is anticipated (see decision T 560/09, not published, point 2 of the reasons).

3.3 In the case in hand, feature iii) requires the therapeutic agent to be directly or indirectly administered to a traumatised vessel. According to the opposition division and the respondent, the person skilled in the art would construe this feature as clearly referring to the administration of taxol per se to either the point in the vessel where the trauma occurred (direct administration), for example via a stent or an infusion catheter, or a different point from that where the trauma occurred (indirect administration), for example via injection. In the opposition division's and the respondent's view, taxol conjugates, as disclosed in document D2, were therefore clearly excluded from the scope of claim 1 of the main request.

3.4 However, the opposition division's and the respondent's interpretation is not the only way of construing the aforementioned feature. In the board's view, another equally valid and technically feasible understanding of feature iii) is the administration of the therapeutic agent either per se (direct administration) or in a form from which it can be released (indirect administration), such as a conjugate, in which case conjugates would not be excluded from the scope of the claim. It should be noted that the term "indirect administration" was not defined in the application as filed, which drew a distinction between targeted and direct delivery. It is therefore not unreasonable to assume that the expression "indirect administration" was meant to reflect the targeted delivery of the therapeutic agent, as argued by the appellant.

The board therefore does not accept the respondent's arguments that the wording of claim 1 required taxol per se to be administered and that it then followed that feature iii) clearly referred to the point of delivery (see point XVI above). Claim 1 is not directed to a particular final dosage form which is administered to the vessel and which contains the therapeutic agent in a particular, i.e. free, form.

3.5 It follows from the above that feature iii) is not only broad, as argued by the opposition division, but also ambiguous as it can be understood in various ways, i.e. as referring to the point of delivery of the therapeutic agent or to the form in which the therapeutic agent is delivered. This leaves the public in doubt as to what subject-matter is covered and not covered by claim 1 of the main request.

Hence, the board concludes that claim 1 of the main request is not clear within the meaning of Article 84 EPC. The main request is therefore not allowable.