T 1167/21 - Rule 137(5) and unity a posteriori

Key points

• The Board, in translation: "This application is an international application pursuant to Article 153(2) EPC ("Euro-PCT application"). The European Patent Office, as the competent International Searching Authority (ISA), found that the subject-matter of claims 1 to 8 did not meet the unity requirement under Rule 13(1) PCT and identified four groups of inventions. Subsequently, after being invited to pay three additional search fees, which the appellants failed to comply with, only the first group of inventions, i.e., the subject-matter of claims 1 to 3, was searched to prepare the international search report."
• "The Examining Division took the view that the inclusion of feature (b) from the unsearched originally filed claim 5 in claim 1 according to the main request resulted in subject-matter which was not allowable under Rule 137(5), first sentence, EPC."
• The Board examines the substantive issue of unity of invention.
• " The amendments to claim 1 therefore do not result in a change from the first group of inventions to another, unsearched group of inventions addressing a different problem. Rather, the subject matter of the first group of inventions (claim 1 as filed, including feature a) is merely further restricted by the features of the originally filed claim 5 (feature b).
• However, Rule 137(5) EPC is at the outset not the right provision for issues relating to the non-payment of additional search fees, where those were requested. As the Guidelines state in H-II,6.2 : "Rule 137(5) cannot be invoked. It does not apply when the applicant has not paid the search fee in respect of a non-unitary invention relating to the originally filed claims." The legal basis for EP-direct applications is G 2/92. For Euro-PCT applications, where the EPO was ISA, first the procedure of  Rule 164(2) is to be followed.
• Nevertheless, the Board's reasoning on the substantive issue is useful: "document D1, which was used for the a posteriori assessment of unity by the examining division, anticipates not only the features of claim 1, but also those of claims 2 (see D1, figures) and 3 (D1, linear motor 37). Thus, none of claims 1 to 3 has a special technical feature defined as mandatory that could constitute an invention or group of inventions."
• " Feature (a) (tilting axis arranged in the upper half of the container) was originally an optional feature of claim 1. This feature is not anticipated by document D1. It is therefore a special technical feature within the meaning of Rule 44(1) EPC, which determines a contribution to the prior art."
• "It is irrelevant for consideration as an invention that feature (a) is defined in the original version as an optional feature of independent claim 1, because according to Rule 44(2) EPC the decision as to whether the inventions of a group are related to one another in such a way that they implement a single general inventive concept must be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.
• As a comment, possibly a claim specifying "A widget with feature A and optionally feature B"  must be read as "A widget with feature A or with feature A and B".
• According to the international search report, the optional feature a) of claim 1 is part of the first group of inventions comprising claims 1 to 3 "
• "The claims resubmitted with the statement of grounds of appeal in the version dated 31 July 2019 do indeed include an additional group of features (feature b).
• However, this does not constitute a change to an unsearched invention. Such a change would only occur if claim 1 comprised only feature b) without the special technical feature a) of the first group of inventions (which would correspond to the subject matter of the mandatory features of the unsearched original claim 5). In contrast, the inclusion of the features from claim 5 in combination with feature a) is not a change to the unsearched group of inventions 3.
• This is because feature b) of the original claim 5, like all the features originally dependent on claim 1, was also disclosed in combination with the optional feature a)."

EPO

The link to the decision can be found after the jump.

T 2170/21 - Debit order for oppo fee instead of appeal fee

Key points

•  In translation: "III. The patent proprietor filed its notice of appeal pursuant to Article 108, first sentence, EPC on 2 December 2021 through its representative electronically using the EPO Online Filing Software ('OLF') []. The filing was made using the form "Submission in opposition proceedings." In this form and also in the notice of appeal submitted as an annex, the appellant patent proprietor was named as opponent (page 1 of the form: "representing the opponent(s) dormakaba Deutschland GmbH"; page 1 of the notice of appeal: "In the name and on behalf of the opponent, i.e., dormakaba Deutschland GmbH"). Instead of the payment of the appeal fee announced in the notice of appeal (page 2: "The official appeal fee is paid."), this form authorizes the EPO to debit an opposition fee from the representative's deposit account (page 2: "010 Opposition fee ... Amount to be paid 815.00"). The opposition fee was debited from the deposit account on December 3, 2021, with the debit date of December 2, 2021."
•  On December 22, 2021, and thus undisputedly after the expiry of the time limit for payment of the appeal fee, the representative requested corrections to the debit order of December 2, 2021, under Rule 139, first sentence, EPC. The corrections concerned the debiting of an appeal fee and the amount to be debited, EUR 2,705. The (full) appeal fee was debited from the representative's current account on December 23, 2021, with the debit date of December 22, 2021."
•  On the admissibility of the various arguments and request about the admisisibility of the appeal: "The possibility of correcting the fee payment under Rule 139 EPC is, in principle, not a question of fact requiring proof, but a question of law. As mentioned above, the relevant facts to be considered for assessing this legal issue were, for the most part, already on file. As is also clear from the submissions of the parties, the case law of the Boards of Appeal has not developed uniformly over the years (see below). Furthermore, a large number of appeal decisions based on facts comparable to the present case are not available. Under these circumstances, it is unreasonable to expect the parties not to subsequently supplement their arguments, particularly regarding legal interpretation. Arguments regarding legal interpretation should, in principle, not be surprising or unreasonable for the Chamber. This likely follows from the legal principle "the court knows the law" (iura novit curia)."
•  The Board sees no reason to question the general possibility of correcting an erroneous fee payment under Rule 139 EPC, following decision T 0071/21, point 6.3 of the Reasons, cited by the Respondent, and the other decisions cited therein."
• "The board agrees with the respondent that re-establishment of rights under Article 122 EPC may also be an appropriate means of retroactively correcting the serious legal consequences of insufficient fee payment. The consequences of insufficient fee payment are that the appeal fee is deemed not to have been paid and thus the appeal is deemed not to have been filed, which in turn amounts to a failure to comply with a time limit. Had the appellant been unsuccessful in its request for correction under Rule 139 EPC, this option would – at least in theory – still have been open to it. However, this possibility does not preclude the application of Rule 139 EPC. The EPC does not contain a mutual exclusionary rule between Rule 139 and Article 122 EPC comparable to Article 121(4) or Rule 136(3) EPC."
• "the Board does not see any threat to legal certainty or a change of will on the part of the patent proprietor. The Board has no indications, let alone evidence, that the requested correction—namely, the payment of the appeal fee from the representative's current account—was not originally intended. This cannot be deduced from the patent proprietor's notice of appeal. The mere fact that the wording used is open does not justify a serious suspicion that the use of the incorrect form was not accidental, but deliberate. "
• " For these reasons, the board decided to grant the request for correction under Rule 139 EPC. The appeal is therefore deemed to have been validly filed. "
• The appeal is examined on the merits and is dismissed.

EPO 

The link to the decision can be found after the jump.

T 0186/22 - Specifying an incorrect deposit account number

Key points

•  In translation:  "The patent proprietor filed an appeal on January 31, 2022. In its notice of appeal, it stated that the appeal fee would be paid by direct debit from the deposit account via Online Filing 2.0. A direct debit order was issued on Form 1038 APPEAL dated the same day. This form listed the representative association as the account holder and indicated the deposit account number as 28000017."
•  By letter dated 11 February 2022, the patent proprietor clarified that it had made an error regarding the deposit account number and that the correct deposit account number was 28001760. It filed a request for correction of the debit order pursuant to Rule 139 EPC."" 
• The appeal fee was debited by the EPO from deposit account 28000017.
• "The fact that the appeal fee was debited from a third-party account rather than from the patent proprietor's account cannot alter the fact that the requirement of Article 108, second sentence, EPC is met. This provision does not require that the appeal fee be paid by the appellant. Rather, it is irrelevant to the question of whether the appeal is deemed to have been filed who paid the appeal fee. It is sufficient that an appeal fee (in the correct amount) was paid before the expiry of the appeal period."
• The reverse is not true: if the EPO finance department does not carry out the debit order, that does not mean that the payment is invalid.
• "Notwithstanding the foregoing, the patent proprietor's request under Rule 139, first sentence, EPC was also to be granted.  "
• "Even assuming that legal certainty must be taken into account, although the Enlarged Board of Appeal did not mention it as a prerequisite for correction, the opponent's arguments are unconvincing. The mere fact that these are inter partes proceedings does not mean that the criterion of "legal certainty" is to the detriment of the petitioner (see T 445/08 of 26 March 2015, Reasons 10, 11, 13.6; T 317/19, Reasons 2.4.3(a) and 2.4.4(a)). Thus, in inter partes proceedings T 445/08, the board concluded that legal certainty did not preclude the request for correction (T 445/08 of 26 March 2015, Reasons 13.6).

  In the present case, too, legal certainty or the interests of the opponents do not preclude granting the request for correction. It was obvious to the opponent (and to the public) from the outset that the patent proprietor intended to file an appeal. The fact that this filing might have been erroneous was not apparent from the appeal or the debit order. Rather, the patent proprietor itself indicated this in its letter of February 11, 2022, and filed a request for correction in the same letter. This request for correction was also filed promptly, namely 10 days after the filing of the notice of appeal and the debit order."

• The opponent also appealed, and the patent was revoked.

EPO 

The link to the decision can be found after the jump.

T 2554/22 - D1 is not a realistic starting point

Key points

• "The Board considers the Opposition Division's approach to select D7 as closest prior art document and to analyse inventive step starting from this document to be correct."
• "D7 deals with the same problem as the patent, namely adherence of colour to hair by means of forming a film around them, using aminosilicone polymers. This is extensively described throughout D7, as set out above. This problem is not addressed in the general part of D1, neither with respect to pigments nor with respect to any other type of coloured material. As outlined above, D1 is mainly concerned with the avoidance of storage stability problems of hair conditioner compositions containing direct dyes and proposes a specific surfactant combination for this purpose."
• " It is correct that D1 mentions prevention of colour fading using aminosilicone polymers on page 16. However, this disclosure is part of a three page description of silicone polymers as optional ingredients for the provision of "smoothness and softness on dry hair" (page 13 second paragraph). One out of nine example compositions uses a film-forming aminosilicone, "aminosilicone-2", but film-forming properties neither of "aminosilicone-2" nor of the resulting composition are mentioned in D1. One has to refer to the product data sheet D2 in order to obtain this information."
• A skilled person would have to deeply dig into D1, supplemented by D2, to realize that part of this document may be directed to the same purpose than the patent and was using similar means, i. e. film-forming compositions containing aminosilicones for adherence of pigments or coloured materials to the hair.
• "The Board does not deny that in case of several "close" prior art documents a skilled person may have used any of them as a starting point and it may be necessary to assess inventive step from multiple angles. However, in the present case a skilled person addressing the problem of the patent would not have started from D1, but from D7. In this sense, in the present situation D1 is not a "realistic starting point"."
  
  
• "The appellant did not contest the Opposition Division's conclusion that the provision of the compositions defined in the patent claims were based on an inventive step when starting from D7. Thus, this issue is not object of the appeal proceedings."
• "The appellant argued that, independent from the selection of the closest prior art discussed above, the claimed compositions would still be obviously derivable when starting from D1. The Board disagrees, for the reasons outlined below. "
• "To be obviously derivable from D1 a skilled person would have to start from D1 in the first place. That this is not realistic in the present circumstances has been reasoned above."
• "if one nevertheless takes example 4 of D1 as a starting point, claim 1 of the patent does not differ from this example composition only in that the molecular weight of the aminosilicone is not known, as submitted by the appellant. Claim 1 of the patent also requires the presence of components (c) and (d), i. e. an ether of a polyhydric alcohol and a thickening system comprising a deposition enhancer and a thickening polymer as defined in the claim. 
• "The objective technical problem starting from D1 was the provision of alternative compositions useful for enhancing colour adhesion to the hair. "
• "even if a skilled person would have used D1 a starting point it would not have arrived at the compositions defined in the claim. This confirms that D1 is not "closer" to the claimed invention than D7, as argued by the appellant. It also confirms that the Opposition Division's choice of D7 as the document representing the closest state of the art was not flawed, as argued by the appellant [opponent]."
• The patent is maintained as granted. 

EPO 

The link to the decision can be found after the jump.

T 1629/23 - If the alternative starting points represent alternative and different routes to the invention

Key points

• "The board agrees with the appellant [opponent] that document D9, and in particular its example 6, is such a suitable starting point for the discussion of inventive step. The respondent's [proprietor's] arguments that the opposition division had correctly considered the disclosure in document D8 to represent the closest prior art and that the disclosure in document D9 was not suitable as the closest prior art are not convincing for the following reasons. "
• "  Although assessing inventive step from only one "closest" prior-art disclosure may constitute a suitable approach for addressing the situation in which multiple similar disclosures are presented as starting points for the assessment of inventive step, it is not an appropriate approach if the alternative starting points likewise represent (alternative and different) routes to the invention, as document D8 and D9 do in the case in hand. In such a situation, each starting point needs consideration because, under Article 56 EPC, in order for an inventive step to be acknowledged, the claimed invention must not be obvious to a skilled person having regard to the (complete) state of the art, i.e. any prior-art disclosure excluding documents under Article 54(3) EPC (see e.g. decisions T 694/15, points 13 to 15 of the Reasons, T 816/16, point 3.7.1 of the Reasons and T 261/19, point 2.5 of the Reasons)." 
• "example 6 of document D9 differs from the claimed subject-matter solely on account of the requirement in claim 1 that the classification step (e) and the estimation step (f) "are performed on one or more processors running under program instructions for the determining, classifying and estimating"."
• "the appellant [opponent] is correct that, considering the number of data points and the workflow disclosed in document D9, the skilled person, on the relevant date, would have taken computer implementation as an obvious route for improvement. 

EPO 

The link to the decision can be found after the jump.

T 2140/22 - (II) The obligation of parties in the procedure before the OD

Key points

• The decision under appeal is the opposition division's decision ruling that none of the grounds for opposition under Articles 100(a), (b) and (c) EPC prejudiced the maintenance of the patent as granted and rejecting the opposition.
• V. In the decision under appeal, inventive step was assessed starting from the disclosure of D1 and, in a second approach, D2. With either approach, the claimed subject-matter was held to involve an inventive step.
• The opponent appeals.
• The Board considers the claims of the main request to be obvious over D1 with D2.
• "Auxiliary request 1 was filed for the first time with the respondent's reply to the statement setting out the grounds of appeal, and thus it constitutes an amendment to the respondent's case according to Article 12(4) RPBA, the admittance of which is subject to the board's discretion. "
• " In the present case, it is not self-explanatory how the amendment by incorporation of the features of claim 6 into claim 1, i.e. the restriction to a single-dose form containing 5 to 350 myg T4, could overcome the inventive step objection against the main request. The dosage range for a single dose is in any case not a distinguishing feature over the disclosure of D1".
• Fair enough - even though the amendment can then still make the claim inventive, some substantiation by the proprietor could be expected.
• " In its written preliminary opinion, the opposition division stated that it regarded D2 as the "closest" prior art, but also briefly outlined its inventive step approach starting from D1 (see point 9.3.1 of the annex of the summons to oral proceedings). Even if it were to be considered that the decision under appeal deviated from the preliminary opinion by providing a more detailed assessment of inventive step starting from D1, the respondent was not exonerated by the mere filing of amended claims from the obligation of expressly specifying the relevance of the amendments for overcoming the inventive step objection raised by the opponent."
• " In any case, since D1 was used by the appellant as a starting point for the assessment of inventive step from the very start of the opposition proceedings (see the notice of opposition, section 3.1), the respondent should have presented any auxiliary request aiming to improve its position with regard to this line of argument in the proceedings before the opposition division."
• "In inter partes proceedings such as opposition proceedings, a party has to anticipate and prepare for the eventuality that the opposition division might agree with the arguments of the opposing party. Also, a preliminary opinion provided by an opposition division is not binding as regards the final decision."
• To me, a question still is: why? The OD found the claims as granted to be inventive and would not have considered the amended claim at all in their decision.
• "Since the requirements of Article 12(3) and (4) RPBA are not met, the board decided not to admit auxiliary request 1 (Articles 12(3) and 12(5) RPBA)."
• The relevant part of Art. 12(4) is the fourth sentence: "In the case of an amendment to a patent application or patent,  the party shall [...]provide reasons why the amendment overcomes the objections raised.
• The Board does not cite Art. 12(6)(s.2) RPBA
• 
  

EPO 

The link to the decision can be found after the jump.

T 2140/22 - (I) The CPA as a shortcut

Key points

• Claim 1 is directed to: " A pharmaceutical preparation of T4 thyroid hormone, in ready-to-use packaging, [the packging] consisting of a container pre-filled with an alcohol-free water-glycerol solution of hormone T4, said container being a one-component LDPE plastic container, placed in a sealed sachet consisting of laminated films made of polyethylene, aluminium and polyethylene terephthalate."
• Inventive step is at issue.
• " Article 56 EPC provides that an invention (i.e. the claimed subject-matter under consideration) involves an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. The state of the art here is any prior disclosure that is eligible under Article 56 EPC, i.e the entire state of the art as defined in Article 54(2) EPC, without any ranking or distinction. Any such prior disclosure may be used as the starting point for the assessment of inventive step, and also as supplementary prior art in alternative scenarios with different starting points."
• " The selection of a starting point serves the purpose of assessing inventive step and is performed by the body deciding on inventive step, which makes its selection from the cited prior-art disclosures that are eligible under Article 56 EPC. Depending on the circumstances of the individual case, either only one starting point or several alternative starting points will have to be considered."
• "In the case at hand, the only line of argument presented by the appellant [opponent] in the appeal proceedings with regard to a lack of inventive step is based on an approach using the disclosure of D1 as the starting point. In this situation, no selection between different potential starting points is required. The only starting point to be considered by the board for the purpose of examining the merit of the appellant's inventive step objection is D1."
•  "The practice of selecting, in cases where this is appropriate, one among several potential starting points on the basis of its greater similarity to the claimed subject-matter and its intended purpose (the so-called closest prior art) serves efficiency by permitting a combined assessment."
• "The test is to establish if the claimed subject-matter would have been non-obvious even when starting from such a particularly "promising" starting point. Thus, in a situation where inventive step is ultimately to be acknowledged, carrying out a detailed assessment of inventive step according to the problem-and-solution approach with the closest prior art as the starting point may avoid having to perform an equally detailed assessment also for numerous alternative starting points that are comparatively more remote. "
•  The consideration in such a case is that since an inventive step can be acknowledged in a scenario starting from the closest prior art, it can also be acknowledged, for at least the same reasons, starting from the more remote alternative starting points, without the need for a detailed analysis in each of these cases.
• "Obviously, this shortcut only works in cases where it can be confirmed that the same reasons for acknowledging an inventive step are indeed also applicable to the scenarios based on the alternative starting points. The reasoning addressing the alternative scenarios must at least set out why this criterion is met.
• "Nonetheless, comparative remoteness does not prohibit the consideration of any prior disclosure as a starting point in a detailed step-by-step assessment according to the problem-and-solution approach. If a chosen starting point is "too remote" from the claimed subject-matter in terms of structural features and purpose, the problem-and-solution approach will simply not result in a finding of obviousness."
• As a comment the phrase "will simply not result" may hide some complexity.
• "In view of its purpose as described above, the concept of the "closest prior art" is not relevant in a situation where an inventive step cannot ultimately be acknowledged (see point 1.9.1 above, last sentence). If the assessment of inventive step from a given starting point results in a finding of obviousness, this starting point is evidently close enough to the claimed invention to lead to a conclusion that decides the question of inventive step."
• "Since, in the case at hand, the assessment with D1 as the starting point resulted in a finding of obviousness (as set out below), it is not relevant whether another piece of prior art might be even closer to the claimed subject-matter.

EPO 

The link to the decision can be found after the jump.