T 1934/16 - EPO proofs delivery

Key points

• In this case, the patentee did not file the translations of the claims in time during opposition, and did not pay the printing fee. The patentee argued that he had not received the invitation setting a time limit to pay the fee, and file the translated claims, with surcharge (Rule 82(3) EPC). Hence, under Rule 126(2) EPC,  it is incumbent on the EPO to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee.
• " Following the enquiry in the present case, the letter from 1 March 2016 was found to have been delivered on 4 March 2016 at 09:18 to the law firm of the appellant's representative. The letter with the registered number (barcode) RD18229975NL contains a reference to the patent's application number 071143283 and can therefore be identified." 
• The patentee did not respond to this, and the request for re-establishment was withdrawn. Hence, the OD was correct in revoking the patent.
• In this case, the Board notes that the opposition decision transferred the appeal to the Board " without rectifying its decision". The patentee had requested interlocutory revision. However, as a comment, it is not so clear if interlocutory revision would have been available at all, because the opponent was treated as respondent by the Board. Indeed, in Form 2701, box 1 was crossed: appeal with more than one party, so no interlocutory revision. 

EPO T 1934/16 - link

Reasons for the Decision

1. The appeal is not allowable.

The appealed decision issued by the opposition division was correct. The provisions for the revocation of the patent due to failure to validly comply with the requirements under Rule 82(2) and (3) EPC were satisfied. The opposition division did not commit a procedural violation.

1.1 When an interlocutory decision relating to the maintenance of a patent in amended form has become final, the EPO sends an invitation to pay the printing fee and to file translations of the claims within a period of three months pursuant to Rule 82(2) EPC.

This invitation was dispatched in the present case on 13 October 2015. The appellant did not contest the receipt of this communication. Nevertheless no response from the appellant was received before expiry of the time limit. This has also not been contested.

1.2 Rule 82(3) EPC stipulates that, if the acts required under Rule 82(2) EPC are not performed in due time, they may still be performed within two months of a communication concerning the failure to observe the time limit, provided that a surcharge is paid within this period. Otherwise, the patent shall be revoked.

T 0060/13 - Oral proceedings not requested

Key points:

• The Board finds that proprietor did not request oral proceedings, and revokes the patent since no auxiliary requests were on file. The Board finds the statement that "if an oral hearing is to take place we wish to attend" does not constitute such a request. In the same way, the statement regarding the language used in "possible oral proceedings" and the request to use Swedish in oral proceedings, after having first stated that "we find it unnecessary to attend an oral proceeding" are considered to concern the modalities of oral proceedings, should these be appointed, and are therefore not seen to constitute a clear and unconditional request for oral proceedings.

EPO T 0060/13 -  link

4. For the above reasons the Board holds that contrary to the finding of the decision under appeal at least one ground for opposition prejudices the maintenance of the European patent.

4.1 The respondent has not filed alternative requests nor requested a hearing before the Board issues an adverse decision. In this regard, the Board does not consider the respondent's statement in their response dated 2 August 2013 that "if an oral hearing is to take place we wish to attend" to constitute such a request. That statement merely states an intention to attend if oral proceedings prove necessary, i.e. if the Board is unlikely to accede to the main request of the appellant, who had for that eventuality requested oral proceedings. The indication in their later response (dated 30 March 2017) to the Board's communication of 3 February 2017 regarding the language used in "possible oral proceedings" and the request to use Swedish in oral proceedings, after having first stated that "we find it unnecessary to attend an oral proceeding" concerns the modalities of oral proceedings, should these be appointed, but is not seen to constitute a clear and unconditional request for oral proceedings.

4.2 The Board is further satisfied that by its communication the respondent was made aware of the central points underlying this decision and has also had sufficient opportunity to take a position thereon. It is thus satisfied that the requirements of Article 113(2) EPC have been met.

4.3 The Board thus revokes the patent pursuant to Article 101(2) EPC.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

T 1139/13 - Animal diet as second medical use

Key points

• In this case, claim 1 was directed to a use of a food composition n the manufacture of a companion-animal diet composition for increasing blood antioxidant levels in a feline.
• The Board accepts this as second medical use claim.
• " If claim 1 had been directed to a method of using a diet to increase blood antioxidant levels in a feline, its subject-matter would have been excluded from patentability under Article 53(c) EPC, since it covers therapeutic treatments, such as improvements in conditions like diabetes as well as cardiovascular and gastrointestinal diseases, []. [If] in such a situation the claim is re-drafted in the Swiss-type format, it is to be considered a medical-use claim", citing T 1020/03.

EPO T 1139/13 -  link

XI. The only independent claim of the new main request reads as follows:

"1. Use of a food composition comprising a sulfur-containing antioxidant which is a mixture of cysteine and methionine in a total amount of from 1.0 wt% to 2.2 wt%, wherein the methionine is at a concentration of from 0.8 wt.% to 1.5 wt.% and the cysteine is in an amount of from 0.2 wt% to 0.7 wt% in the manufacture of a companion-animal diet composition for increasing blood antioxidant levels in a feline."

Reasons for the Decision

3.1.3 Claim 1 is drafted in the Swiss-type claim format, i.e. use of an active ingredient for the manufacture of a medicament for a therapeutic treatment. The food composition of claim 1 with the specific methionine/cysteine concentrations corresponds to the active ingredient, the diet represents the medicament and the increase in the blood antioxidant level in a feline corresponds to a therapeutic treatment.

T 1104/14 - Deciding on withdrawn requests

Key points

• Before the OD, the patentee had replaced the previous requests with a new request. The OD did not admit these request, in fact did not consider them, and decided on the patentability of the earlier requests.
• This is, quite simply, a substantial procedural violation of Article 113(3) EPC, according to the Board. 
• The remark of the OD, that the newly filed request were not admitted, without any debate, also provide a violation of the right to be heard. 

EPO T 1104/14 - link

Entscheidungsgründe

1. Die Beschwerde ist zulässig.

2. Die Beschwerde ist begründet.

2.1 Dispositionsbefugnis

2.1.1 Artikel 113 (2) EPÜ schreibt vor, dass sich das Europäische Patentamt bei Entscheidungen über europäische Patentanmeldungen und Patente an die vom Anmelder oder Patentinhaber vorgelegte oder gebilligte Fassung zu halten hat. Es ist nämlich ein Grundprinzip des Europäischen Patentrechts, dass allein der Anmelder bzw. Patentinhaber die Verantwortung für die Formulierung der Patentansprüche und die damit verbundene Antragstellung hat. Ausgehend von der in Artikel 113 (2) EPÜ zum Ausdruck kommenden Dispositionsbefugnis des Patentinhabers, hat der Patentinhaber das Recht, selbst zu entscheiden, welche Anträge er in der mündlichen Verhandlung stellt. Hierzu benötigt er keine Erlaubnis der Einspruchsabteilung. Erst nachdem der Patentinhaber seine Anträge gestellt hat, werden diese Gegenstand des Verfahrens und bilden damit die Grundlage der zu treffenden Entscheidung.

T 2036/12 - The CEO wishes to speak

Key points

• The OD had not allowed the CEO of the patent proprietor, who was present during the oral proceedings in addition to the professional representative, to speak. The Board notes that a CEO of a company (with an office in Germany) "is entitled to be a signatory" (in translation) and therefore can at any time speak. Therefore, not allowing the CEO to speak was a substantial procedural violation, even though the OD had allowed the professional representative to speak. 

EPO T 2036/12 -  link

1. Die Beschwerde ist zulässig.

2. Rechtliches Gehör (Artikel 113(1) EPÜ).

2.1 Mit der Beschwerdebegründung hatte die Beschwerdeführerin gerügt, dass die Einspruchsabteilung ihr das rechtliche Gehör gemäß Artikel 113(1) EPÜ versagt habe, da Herrn Schneemelcher, der Geschäftsführer der Patentinhaberin sei, in der mündlichen Verhandlung vor der Einspruchsabteilung nicht erlaubt worden war, zur Frage der erfinderischen Tätigkeit vorzutragen. Die Einspruchsabteilung habe in unzutreffender Weise in diesem Zusammenhang auf die Entscheidung G 4/95 der Großen Beschwerdekammer verwiesen.

T 2598/12 - Unsubstantiated request not admitted

EPO Headnote
There is no time bar to the requirement following from Article 12(2) and (4) RPBA that a request filed during appeal proceedings must be properly substantiated (cf. point 1.8 of the reasons). Consequently, this requirement applies, mutatis mutandis, to new requests filed in response to a communication of the board.

Key points

• In this examination appeal, the applicant had filed a new claim 1 with the written submission. The new main request was "not accompanied with arguments explaining how the amendments overcome the objections leading to the decision to refuse the application, i.e. why the subject-matter of claim 1 involves an inventive step with regard to documents D3 and D4." 
• The Board does  not admit the main request (also) for this reason. Also requests filed with the written submissions in advance of oral proceedings before the Board, should be substantiated, just as requests filed with the  Statement of grounds (or response) under Article 12(4) RPBA.
• The applicant had also argued that the request should be admitted, because of the drop in quality of the first instance decision. " In respect of the alleged drop in quality of the first instance decisions, the board notes that the appellant has not alleged that this applies in the present case, and indeed, in the present case, the board finds no reason to criticise the quality of the examination, noting that the board in its preliminary opinion essentially agreed with the conclusions of the examining division. " 

EPO T 2598/12 - link

Reasons for the Decision

1. Main request - admissibility

1.1 Claim 1 of the main request, which was presented at the oral proceedings for the first time, is substantially amended as compared to claim 1 of either the main or first auxiliary request submitted with the statement of grounds of appeal. It is essentially based on claim 1 of the second auxiliary request as filed with the letter dated 10 July 2017 in response to the board's communication and includes features which had not been included in any claims submitted during in the examination procedure.

1.2 Amendments to a party's case after filing the statement of grounds of appeal are governed by Article 13 RPBA.

In accordance with Article 13(1) RPBA, any amendment to a party's case after it has filed its grounds of appeal may be admitted and considered at the board's discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. One of the criteria used by the boards when exercising their discretion is whether or not the new claims are prima facie allowable.

1.3 In addition to Article 13 RPBA, the board draws attention to the provisions of Articles 12(2) and (4) RPBA.

In accordance with Article 12(2) RPBA, the statement of grounds of appeal shall contain a party's complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts evidence and arguments relied on.

J 0016/16 - Re-establishment twice

Key points

• In this case, the applicant (represented by a two attorney firm) did not pay the third renewal fee and requested re-establishment. The request was refused (as being late filed, due to fax transmission problems). The applicant filed a Notice of appeal, but not timely a  Statement of grounds. Re-establishment also for that was likely possible, but was not requested.
• " The Board readily concedes that the representative's medical condition as apparent from the medical certificate filed during oral proceedings could have been a valid reason for allowing a request for re-establishment of rights into the period for filing the grounds of appeal. Yet no such request was made, and no corresponding fee was paid." 

EPO J 0016/16 - link

Summary of Facts and Submissions

I. By decision of the examining division posted 18 February 2016, the appellant's request for re-establishment of rights into the period for payment of the renewal fee for the 3**(rd) year for the application no. 12860972.4 was refused.

II. Against this decision, an appeal was filed on 23 April 2016, and the appeal fee was paid on the same day. In the notice of appeal, oral proceedings were requested. The notice of appeal also mentioned that