T 1088/11 - Reducing enlarged division

EPO Headnote

In principle, an opposition division may set aside a decision to enlarge its composition pursuant to Article 19(2) EPC (Reasons, point 11.2).
Where an opposition division has been enlarged, but the case is nevertheless decided in a composition of three members, there should be clear evidence on the public file that a decision to set aside enlargement was taken by the opposition division in its four member composition prior to the final decision (Reasons, point 17.3).

Key points

• The lack of a clear decision of the four members of the extended division to reduce the division to again three members constitutes a substantial procedural violation and the decision under appeal is set aside.

EPO T 1088/11 - link

Reasons for the Decision

1. The appeal is admissible.

2. The procedural issues

A decision taken in a wrong composition of the opposition division is not legally valid (T 390/86, Reasons, points 7 and 8), and according to Article 11 RPBA, a board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise. It therefore falls to the board to determine whether the composition of the opposition division indicated in the contested decision was correct at the time the decision was taken.

T 0224/12 - Adversely affected

Key points

" It is the position of the opponent that, due to the absence of arguments in support of the main request at any stage, the patent proprietor was not adversely affected by the decision. The position of the appellant/opponent is not supported by the law. The patent proprietor's main request was refused by the meaning that the patent proprietor was adversely affected by the decision." 

EPO T 0224/12 - link

Reasons for the Decision

1. Admissibility of the appeal

1.1 The main request of the patent proprietor before the opposition division for rejection of the opposition was not allowed.

1.2 According to the minutes of the oral proceedings before the opposition division (section 5) when novelty of the main request was discussed the patentee did not provide any arguments. The decision records in section 4.2 that the patentee did not contradict the novelty objections of the opponent against the main request.

1.3 It is the position of the opponent that, due to the absence of arguments in support of the main request at any stage, the patent proprietor was not adversely affected by the decision.

1.4 The position of the appellant/opponent is not supported by the law.

The patent proprietor's main request was refused by the meaning that the patent proprietor was adversely affected by the decision.

Thus the requirements of Art. 107 EPC are satisfied.

T 2453/12 - Two opponents

Key points

• A case with two opponents. The OD held the opposition of O2 to be inadmissible. O1 gave a authorization to the representative of O2. The patent was maintained. O1 filed an appeal, by it's own employee (O1 is a company in an EPC state). This appeal is validly filed. The appointment of a professional representative does not prevent the party from acting through an authorized employee. 
• " Da sich eine Partei niemals durch die Erteilung von Vollmachten das Recht entziehen kann, sich selbst zu vertreten, kann schon deshalb kein Zweifel an der Berechtigung der firmeninternen Vertreter zur Einlegung der Beschwerde bestehen. "

EPO T 2453/12 - link

Sachverhalt und Anträge

I. Das europäische Patent Nr. 1 319 390 wurde mit sechs Patentansprüchen erteilt. []

II. Gegen die Erteilung des Patents wurden gestützt auf die unter Artikel 100 a) und c) EPÜ genannten Einspruchsgründe zwei Einsprüche eingelegt, [].

III. Der Einspruch der Einsprechenden 2 wurde unter dem Namen "ISP Investments LLC" mit der Adressangabe "818 Washington Street, Wilmington, DE 198901, U.S.A." eingelegt.

IV. Nachdem die Patentinhaberin darauf hingewiesen hatte, dass die Firma ISP Investments LLC nicht mehr existiere und die Frage der Rechtsnachfolge unklar sei, beantragte die Einsprechende 2 mit Schriftsatz vom 14. September 2012 eine Berichtigung unter Regel 139 EPÜ ihres Namens und ihrer Adresse im Einspruchsschriftsatz und legte in diesem Zusammenhang die folgenden Beweismittel vor:

T 0996/13 - Reverting in appeal

Key points

• The claims as filed with the Statement of grounds are not admitted in this examination appeal, because they correspond to claims which had been submitted and replaced by other claims before the Examining Division.

EPO T 0996/13  -  link

Reasons for the Decision

1. According to the case law of the Boards of Appeal, the function of an appeal is to give a judicial decision upon the correctness of a separate earlier decision taken by a department of first instance. It is not the purpose of appeal proceedings to give the appellant the opportunity to recast its claims as it sees fit and to have such claim requests admitted as of right into the appeal proceedings. Appeal proceedings are not a second chance to re-run the proceedings before the first instance. This principle is mirrored in Articles 12(4) and 13 RPBA (cf. "Case Law of the Boards of Appeal of the EPO", 7th edition 2013, IV.E.1 and IV.E.4, pages 934 and 984, respectively). In particular, Article 12(4) RPBA empowers the board not to admit requests that could have been presented in the first-instance proceedings.

T 1325/15 - Invoking an omission

Key pionts

• The Notice of appeal was filed after the expiration of the time limit. Apparently, the text of Articles 106-108 EPC was not attached (contrary to Rule 111(2) EPC) and the applicant tries to invoke this, despite established case law that this is not possible (T 42/84). The Board does not depart from this case law.
• In connection with the request for re-establishment, the professional representative had submitted that no time limit had been docketed because a clerk had not recognized the decision as a decision because of the lack of the attached texts of Articles 106-108 EPC. 
• The Board: " The Board considers that an assistant should receive instructions enabling him to recognise a communication from the EPO as a decision triggering time limits for filing an appeal even in the absence of EPO Form 2019. Indeed, it follows from Rule 111(2), second sentence, EPC that the presence of that form cannot be relied upon. Furthermore, an assistant should be instructed to consult his supervisor if any doubt arises about the meaning of a particular communication." 
• The request is refused and the appeal was hence filed late. The question of whether the appeal fee then is to be refunded had been referred to the Enlarged Board in G1/14 and G 2/14, neither referral resulting in a decision. The present Board follows established case law that the appeal is deemed to not have been filed and orders the refund of the appeal fee.

Summary of Facts and Submissions

I. The applicant (appellant) filed a notice of appeal against the decision of the Examining Division refusing European patent application No. 07864887.0.

II. The decision was taken in oral proceedings held on 21 October 2014 and issued in writing on 9 February 2015. An acknowledgement of receipt was faxed to the EPO on 19 March 2015, confirming receipt on 13 February 2015 of both the decision (on EPO Form 2007) and the reasons for the decision (on EPO Form 2916).

III. The notice of appeal was received on 19 June 2015 together with the statement of grounds of appeal and a letter labelled "Letter 1" comprising a main request and an auxiliary request, both requests dealing with the apparent late filing of the appeal.

With its main request, the appellant requested that the Examining Division reissue the decision. With its auxiliary request, it requested re-establishment of rights pursuant to Article 122 EPC in respect of the time limit for filing the notice of appeal.

[]

Reasons for the Decision

1. The appellant's letter dated 1 February 2016, filed after the closure of the debate, is disregarded because the Board sees no reason to reopen the debate (Article 15(5) RPBA).

2. Pursuant to Article 110 EPC, it is first to be examined whether an admissible appeal was validly filed.

T 0151/13 - Mere explanation

EPO Headnote
" Purpose of a particular reagent in a known chemical process is not a functional technical feature in the sense of G 2/88 and does not render said process novel"

Key points

" The Appellant argued, that claim 1 was, however, a "use" claim in the sense of decision G 2/88, such that the subject-matter thereof was novel over document (2) in view of the previously undisclosed technical effect of the use of superatmospheric partial pressure of hydrogen chloride [] in order to reduce the level of 1,2,3 trichloropropane, chlorinated ethers and oligomers in the product.

In the present case, the Board holds that the otherwise identical process disclosed in document (2) []must result in the same levels of 1,2,3 trichloropropane, chlorinated ethers and oligomers being produced as in the process defined in claim 1 of auxiliary request 2, i.e. there is no reduction in the level of these compounds vis-à-vis Example 1 of document (2)." 

T 0151/13 - link

Summary of Facts and Submissions

I. The Appellant (Proprietor of the Patent) lodged an appeal against the decision of the Opposition Division revoking European patent No. 1 771 403. []

Claim 1 of auxiliary request 2 reads as follows:

T 1130/11 - "Interner bericht" is public

Key points

• The present case concerns an examination appeal. The priority date is in 2004. D3 is " D3 Heiss, H-U.: "Processor Management in Two-Dimensional Grid-Architectures", Interner Bericht Nr. 20/92, University of Karlsruhe, 1992, pages 1-52; XP002416087."
• " Before the oral proceedings, the board performed a limited investigation in the Internet about D3 and presented its results to the appellant during the oral proceedings. The board found one United States patent (US 8,190,714 B2, page 3, right column) and three scientific papers citing D3. Furthermore, D3 is listed in the online catalogue of the Deutsche National­bibliothek and is available in its reading rooms in Frankfurt and Leipzig with a number (Signatur) from 1993 (see http://d-nb.info/931177162), i.e. well before the priority date of the application (2004). Thus, the board maintains its opinion that in the field of universities "Interner Bericht" does not mean confiden­tial, but something like "technical report", and that D3 was publicly available prior art at the priority date.

T 1130/11 - link

Reasons for the Decision

1. Overview of the invention

The application relates to scheduling a job request in a high-performance computing (HPC) system which consists of a cluster of computing nodes (e.g. blade servers or PCs; see original description page 7, para­graph 2). []