J 0010/15 - No appeal against EPO as rO

Key points

• The Board confirms established case law that appeals are not possible for decisions taken by EPO as the receiving Office for PCT applications.

EPO J 0010/15 - link

Entscheidungsgründe

Zuständigkeit der Beschwerdekammer

1. Nach Artikel 21 (1) EPÜ sind die Beschwerdekammern für die Prüfung von Beschwerden gegen Entscheidungen der Eingangsstelle, der Prüfungsabteilungen, der Einspruchsabteilungen und der Rechstabteilung zuständig.

Durch diese Bestimmung wird die Zuständigkeit der Beschwerdekammern erschöpfend auf die Prüfung von Beschwerden gegen die Entscheidungen der oben genannten Organe für die Durchführung der im Europäischen Patentübereinkommen vorgesehenen Verfahren beschränkt.

Grundsätzlich kann sich ein Gericht, bzw. ein Richter, nicht nach Bedarf neue Zuständigkeiten schaffen, nur der Gesetzgeber kann in einem solchen Zusammenhang tätig werden (vgl. G1/97, Nr. 3 b) der Entscheidungsgründe, ABl 2000, 322).

2. Aus dem dargestellten Sachverhalt sowie aus der vorhandenen Akte geht hervor, dass die angefochtene Entscheidung während der internationalen Phase der Patentanmeldung gefällt wurde, d.h. die Entscheidung wurde vom EPA, nicht als solches, sondern als internationale Behörde nach dem Vertrag über die internationale Zusammenarbeit auf dem Gebiet des Patentwesens (PCT) getroffen.

Mit Ausnahme des darin geregelten Widerspruchsverfahrens sieht der PCT, als internationales Übereinkommen, keine weiteren Rechtsmittelverfahren vor.

Auch nach ständiger Rechtsprechung sind die Beschwerdekammern grundsätzlich nicht zuständig, um die vom EPA als internationale Behörde getroffenen Entscheidungen zu überprüfen (J 14/98, Nr. 2.1 der Entscheidungsgründe; J 20/89, Nr. 2 der Entscheidungsgründe, ABl. 1991, 375; J 15/91, Nr. 2 der Entscheidungsgründe).

T 0846/16 - Admissibility arguments before appeal

Key points

• In this opposition appeal, the Board considers the opponents's appeal admissible. The patentee had argued that Rule 99(2) was not complied with, because opponent's line of argumentation in the Statement of grounds was new. The Board considers that "this new line of argumentation is the reaction of the opponent to the changes in argumentation of the patent proprietor and a corresponding change in opinion of the opposition division which occurred only very late in the proceedings, i.e. during the oral proceedings before the opposition division."
• "The board thus concludes that the opponent was confronted with a new situation regarding the opposition ground under Article 100(c) EPC during the oral proceedings before the opposition division. Under such circumstances, the board considers it as an appropriate procedural reaction of the opponent to change their corresponding argumentation under Article 123(2) EPC during the appeal proceedings. Consequently, the board concludes that the appeal complies with Rule 99(2) EPC and Rule 101(1) EPC."
• The Board then decides that essentially because of the same reasons, the new arguments are admissible under Article 12(4) RPBA.
• As a comment, Article 12(4) RPBA gives a power to hold inadmissible  "facts, evidence or requests " filed with the Statement of grounds, but does not refer to holding arguments inadmissible. 
• As a further comment, there is some precedent for considering the admissibility of arguments prior to considering the admissibility of the appeal (e.g. T 0501/09, appeal inadmissible because based on newly filed documents, which were inadmissible, in contrast recent T 0509/13). However, where Article 12(4) RPBA does not give a ground for holding arguments inadmissible, the same can not be factor for admissibility of appeal.

EPO T 0846/16 -  link

Reasons for the Decision

1. Admissibility of the appeal (Rule 101(1) EPC)

1.1 The appeal [of opponent] is admissible under Rule 101(1) EPC and complies with Article 12(2) RPBA.

Rule 101(1) EPC refers to Rule 99(2) EPC which requires that the statement setting out the grounds of appeal shall indicate the reasons for setting aside the impugned decision. Similar requirements can be found in Article 12(2) RPBA according to which the statement setting out the grounds of appeal shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed.

1.2 The respondent argued that these requirements are not complied with since there were allegedly no reasons for setting aside the decision and further the statement setting out the grounds of appeal concerned a new case.

The board does not share this view. Indeed, the statement setting out the grounds of appeal comprises a new line of argumentation of the opponent. However, this new line of argumentation is the reaction of the opponent to the changes in argumentation of the patent proprietor and a corresponding change in opinion of the opposition division which occurred only very late in the proceedings, i.e. during the oral proceedings before the opposition division.

Further, the statement setting out the grounds of appeal clearly states that the claims underlying the decision of the opposition division go beyond the application as filed, see for example page 3, second paragraph of the statement. From this content it can be deduced that the opponent wished the impugned decision to be set aside based on his new argumentation.

1.3 According to the impugned decision, the amended feature H) reading "the communication interface (27) is isolated from the first power source (40)", which formed part of the independent claims as granted, does not contravene Article 123(2) EPC. However, the opposition division had in the annex to the summons to oral proceedings indicated that the subject-matter of claim 1 of the patent, that already contained the disputed feature H), contravened Article 123(2) EPC. Thus, there was an unexpected change in the opinion of the opposition division during the oral proceedings.

1.4 The patent proprietor had also changed their argumentation only during the oral proceedings before the opposition division.

In their reply to the opposition dated 12 August 2014, the patent proprietor argued that the amended feature H) was allowable since the description of the A1 publication stated in paragraph [0008], that the isolation of the inverter system from the first power source is optional. Further, the text of the patent had, before grant, been corrected under Rule 139 EPC to state in paragraph [0031] that "the GND of the motor control circuit Ca has the same electrical potential (high voltage system GND) as the GND of a high voltage circuit Cb to which a high voltage is supplied from the high voltage power source". On the basis of this correction under Rule 139 EPC the patent proprietor argued that the motor control Ca was not isolated from the first power source since both shared the same ground (GND).

In response to the summons to oral proceedings dated 18 September 2015 the patent proprietor had argued that the amendments underlying the objection of the opponent under Article 123(2) EPC were the consequence of an error in the translation and that the opponent's arguments were therefore not relevant.

Thus, up until the oral proceedings before the opposition division, the patent proprietor had consistently stated that the amendment of both the description and claims of the patent as granted was the consequence of a translation error.

During the oral proceedings before the opposition division, however, the patent proprietor argued that there had been a mistake in originally filed claim 1 by claiming that the inverter system is isolated. The correct statement was "that the inverter uses an isolated inverter", which was evident from the description. The amendment was "thus not due to an error of translation". The fact that this statement was made with respect to an objection under Article 83 EPC has no bearing on its content, which is that during the oral proceedings before the opposition division the patent proprietor no longer stated that the amendments to the claimed subject-matter served to correct a translation error.

The patent proprietor's new arguments obviously caused the opposition division to reverse its opinion on this objection.

1.5 The board thus concludes that the opponent was confronted with a new situation regarding the opposition ground under Article 100(c) EPC during the oral proceedings before the opposition division.

Under such circumstances, the board considers it as an appropriate procedural reaction of the opponent to change their corresponding argumentation under Article 123(2) EPC during the appeal proceedings.

Consequently, the board concludes that the appeal complies with Rule 99(2) EPC and Rule 101(1) EPC.

The appeal is therefore admissible.

2. Admissibility of the appellant's new arguments (Article 12(4) RPBA)

Regarding the admissibility of the appellant's arguments under Article 123(2) EPC as such, the same reasoning as with respect to the admissibility of the appeal applies.

As discussed above, the argumentation of the patent proprietor regarding Article 100(c) EPC had changed only during the oral proceedings before the opposition division. Therefore, the board considers it as appropriate that the opponent brought forward new arguments in reaction to the change in argumentation of the patent proprietor and the change in the opinion of the opposition division in the opponent's statement of grounds of appeal.

The appellant's arguments regarding Article 123(2) EPC are therefore also admissible.

T 0646/13 - Clarity or insufficiency

Key points

• The opponent had requested a referral to the Enlarged Board about the question "If one or several features of a claim are so ill-defined that a skilled person does not know when he is working within the forbidden area of the claims, is this an issue to be addressed under clarity - Article 84, or under sufficiency of disclosure - Article 83" 
• The Board does not refer the question. "[More] importantly, decision T 464/05 forms part of a line of jurisprudence established between 2004 and 2007, which has not been generally followed since then [as explained in decision T 1811/13]. As today there is a clearly predominant opinion among the boards that the definition of the "forbidden area" of a claim should not be considered as a matter related to Articles 83 and 100(b) EPC (1973), the alleged contradiction between decisions T 464/05 and T 1811/13 does not exist. Rather than being in conflict, these decisions illustrate a development of the case law on a particular question over an extended period of time. " 

EPO T 0646/13 -  link

4. Request for referral of questions to the Enlarged Board of Appeal

4.1 The respondent requests that two questions relating to allegedly diverging jurisprudence by the boards of appeal on the issues of clarity of the claims and sufficiency of disclosure be referred to the Enlarged Board of Appeal (cf. point IX. above).

"In view of the contradicting positions taken in decision [sic] T 1811/13 and T 464/05 (and the decisions referred to) the following questions are referred to the EBoA

1. If one or several features of a claim are so ill-defined that a skilled person does not know when he is working within the forbidden area of the claims, is this an issue to be addressed under clarity - Article 84, or under sufficiency of disclosure - Article 83, i.e. whether the claimed invention was not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art?

2. If the answer 1 [sic] cannot be decided as such, what are the criteria for deciding whether such an issue is to be addressed under Article 84 or Article 83?"

4.2 Article 112(1)(a) EPC 1973 requires the board of appeal during proceedings on a case, and in order to ensure uniform application of the law or if an important point of law arises, to refer any question to the Enlarged Board of Appeal, either of its own motion or following a request from a party to the appeal, if it considers that a decision is required for the above purposes.

4.3 In the present case, the request for a referral hinges on an alleged contradiction between decisions T 464/05 and T 1811/13.

T 0029/16 - Appeal about adapting the description

Key points

• This is the second appeal in this opposition appeal case. In the first decision, the Board had remitted the case back to the OD with the order to maintain the patent in amended form with a description to be adapted. The Board finds a substantial procedural violation in how the OD handled this. In particular, the amended description as filed by patentee had been sent to the opponent with a Communication which did not set a time limit and did  not contain an invitation to comment. When the patent was maintained with the revised description (without oral proceedings, and without the opponent having given a reaction), the opponent appealed. 
• The Board finds that the opponent's right to be heard was violated, and in particular that Rule 82(1) was violated - this is the rule about the opposition procedure which is hardly used in practice because most of the times decision in opposition procedures are taken at oral proceedings. 
• Rule 82(1): "Before the Opposition Division decides to maintain the European patent as amended, it shall inform the parties of the text in which it intends to maintain the patent, and shall invite them to file their observations within two months if they disapprove of that text.".

EPO T 0029/16 -  link

Summary of Facts and Submissions

I. The appeal filed by the opponent lies from the interlocutory decision of the Opposition Division, posted on 4 December 2015, concerning maintenance of the European patent no 1 363 985 in amended form.

II. The impugned decision follows a first decision, T 130/11 dated 20 December 2013, by which the Board decided to remit the case to the Opposition Division with the order to maintain the patent on the basis of the claims according to the Main Request submitted with letter dated 6 December 2013, and of description and figures to be adapted thereto where appropriate.

III. In a communication dated 18 November 2014 the Opposition Division invited the "Applicant" [sic] to adapt the description and the drawings to the claims held allowable by the Board.

IV. On 18 March 2015 the Patent Proprietors submitted amended pages of the description and of the drawings.

T 0183/17 - Rule 116(2) EPC and absence at oral proceedings

Key points

• In this examination appeal, the applicant had filed a new Main Request one day before oral proceedings before the ED. The ED did not admit the request as not clearly allowable. The Board reviews this decision (as part of their discretionary decision under Article 12(4) RPBA to (not) admit the request in appeal). 
• The appellant also argued that when considering whether or not the amendments to the claims were "clearly allowable", it was not necessary for the amendments to resolve all minor issues. "These arguments [are] not persuasive because even if the examining division had been able to recognise the defects as being "minor", which is questionable, the fact that the applicant had chosen not to attend the oral proceedings meant that it would have involved a substantial procedural delay had the examining division postponed the oral proceedings to give the applicant an opportunity to remedy them. "
• As a comment, it does not seem very elegant to make the later absence at the oral proceedings a factor for admissibility of requests. In my opinion, admissibility of request must be decided on the basis of the state of the file at the date they are filed. Either the request is not admitted as not "clearly allowable", or the request is admitted and not allowed because of the minor issues. 
• Moreover, the Guidelines H-II 2.7.1. state that "clear allowability" means that "it must be immediately apparent to the examining division that the amendments successfully address the issues raised without giving rise to new ones". 

EPO T 0183/17 -  link

Reasons for the Decision

1. According to Article 114(2) EPC the EPO may disregard facts or evidence not filed in due time and according to Rule 116(2) EPC taken together with the third and fourth sentences of Rule 116(1) EPC to which it refers, new application documents (i.e. in the present case new sets of claims) which are presented after the final date fixed for making written submissions in preparation for oral proceedings need not be considered, unless they are admitted on the grounds that the subject of the proceedings has changed.

2. In the present case, the new main and three auxiliary requests were filed before the examining division on 27 June 2016 [one day before the oral proceedings of 28 June 2016 that the applicant did not attend], which was after the final date that had been fixed for making written submissions in preparation for oral proceedings. In considering whether the amendments were admissible under Rule 116(1) [and (2)] and Article 114(2) EPC, the examining division referred to Guidelines H-II, 2.7.1 and applied the principle that they should first consider whether the late-filed requests were allowable on a prima facie basis (see reasons for the decision, section I). The examining division applied this principle to each of the new requests and found that in each case the amendment was "clearly not allowable under Article 123(2) EPC" (see the conclusions reached at the end of each of the sub-sections A to D of section I of the reasons for the decision). In view of these findings the examining division exercised their discretion regarding these late-filed submissions and did not admit the main and three auxiliary requests filed on 27 June 2016.

3. On appeal the appellant has re-submitted the main and three auxiliary requests which were not admitted by the examining division.

4. According to Article 12(4) RPBA, the Board has the power to hold inadmissible requests which were not admitted in the first instance proceedings.

5. The case law regarding late submissions in general, independent of the preparation of oral proceedings governed by Rule 116 EPC, is summarised in the Case Law of the Boards of Appeal, Eighth Edition, section IV.E.4.3.3(a) under the headings "Filing of amended claims in appeal proceedings", "Ex parte appeal procedure", "Admission of requests already refused by the examining division".

There it is stated that it is the established jurisprudence of the boards of appeal that the power of the examining division to consent to amendments under Rule 137(3) EPC is a discretionary power. According to G 7/93 (OJ 1994, 775) the way in which the examining division should exercise its discretion to allow an amendment of an application must depend upon the circumstances of each individual case, and must also depend upon the stage of the pre-grant procedure which the application has reached. A board of appeal should only overrule the way in which a department of first instance has exercised its discretion if it comes to the conclusion either that the department of first instance, in its decision, has not exercised its discretion in accordance with the right principles or that it has exercised its discretion in an unreasonable way. The exercise of a discretionary power has to strike a balance between, in particular, the applicant's interest in obtaining adequate protection for his invention and the EPO's interest in bringing the examination to a close in an effective and speedy way. Moreover, the exercise of a discretionary power has to be reasoned, otherwise it would be arbitrary (T 246/08).

These considerations apply also when a board of appeal has to review the way in which an examining division has exercised its discretion under Rule 116(1) and (2) EPC in respect of the admission of amendments filed after the final date fixed for making written submissions in preparation for oral proceedings (see the last paragraph of the Case Law, section III.C.4.4).

6. In the present case the examining division applied the criterion of "clear allowability" set out in the Guidelines for Examination, H-II, 2.7.1, which is undoubtedly the right principle to have applied. Furthermore, when applying that criterion they gave an appropriate level of reasoning for the conclusion they reached, even if the conclusion under the "clear allowability" criterion should perhaps have been that the amendments were "not clearly allowable", rather than that they were "clearly not allowable".

7. The appellant argued that in coming to their conclusion the examining division had exercised their discretion unjustly because they had not taken into account that the expression "cable connection" in claim 1 was broad and could be construed either as being the "docking contact point" of the adaptor, as in claim 14, or as being some other unspecified connection. The Board considered these arguments to be of no relevance to the question at issue of whether the examining division had exercised their discretion in accordance with the right principles or had exercised their discretion in an unreasonable way.

8. The appellant also argued that when considering whether or not the amendments to the claims were "clearly allowable", it was not necessary for the amendments to resolve all minor issues. In the appellant's view it was sufficient that the main claims as amended provided a promising starting point and small issues of added subject-matter in a dependent claim, for example, could have been resolved after agreement had been reached on the main claims. These arguments were not persuasive because even if the examining division had been able to recognise the defects as being "minor", which is questionable, the fact that the applicant had chosen not to attend the oral proceedings meant that it would have involved a substantial procedural delay had the examining division postponed the oral proceedings to give the applicant an opportunity to remedy them. This would not have been in accordance with the need for procedural economy.

9. Taking all of these considerations into account the Board of Appeal came to the conclusion that they should not overrule the way in which the examining division exercised its discretion in this case and held the main and the three auxiliary requests that were re-filed on appeal to be inadmissible using the discretionary power afforded by Article 12(4) RPBA.

10. In the absence of an admissible request the appeal had to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.

T 0119/11 - 16 Years to refuse a business method

Key points

• PCT file in 1999, request for entry EP phase 18.05.2001, oral proceedings ED 27.05.2010, grounds appeal 02.12.2010,  oral proceedings of the Board 06.10.2017, written decision 25.01.2018.
• "As the application puts it, there is a need for an email system to track [] and store email messages, with other documents, in a database to insure that the email messages retained in the database may be the email messages an organization chooses to retain as their official records  [.] The invention stores what it calls an electronic tag that uniquely identifies an email (or other document). The tag is based on the user's profile and workstation. Based on the information in the tag, emails are monitored for compliance with the organization's policies."
• The Board applies the Comvik approach: "As claim 1 does not go beyond the definition of features that are strictly necessary to fulfil a non-technical requirement, the combination of features it defines would have been obvious for the technically-skilled person who has the task of fulfilling it."
• As a comment, perhaps the long pendency of the application is harmless (in view of the small chances of a patent ever being granted). On the other hand, the applicant has paid the renewal fees so there must have been some economic value in the possible monopoly on the claimed method.

EPO T 0119/11 - link

Reasons for the Decision

Background

1. The invention is concerned with emails written in the workplace. There may be legal requirements to retain certain emails, just as there may be personal or business interests in deleting them. Other emails should, for a variety of reasons, be deleted after a given period of time. Organisations need to manage the storage of emails to ensure that those that have to be kept are kept, and those that have to be deleted are deleted.

2. As the application puts it, there is a need for an email system to track, sort, index, manage, authenticate, purge and store email messages, with other documents, in a database to insure that the email messages retained in the database may be the email messages an organization chooses to retain as their official records versus unorganized messages that may have the potential to create a liability for the organization (published application, page 2, lines 15 - 19).

3. The invention stores what it calls an electronic tag that uniquely identifies an email (or other document). The tag is based on the user's profile and workstation. Based on the information in the tag, emails are monitored for compliance with the organization's policies.

T 2100/14 - The essentiality test still alive

Key points

• Board 3.2.03: "For the reasons detailed hereinafter, the board arrives at the same conclusion when applying the three-point essentiality test, namely that features A and B cannot be omitted in the independent claims (compared to PCT claim 1) without infringing Article 123(2) EPC"
• As a comment, see my earlier post about T 0046/15 about Board 3.2.04 no longer applying the essentiality test, following T 1852/13 of Board 3.2.05. 
• The Auxiliary Request is  not admitted. "First it is to be noted that the second auxiliary request is late-filed and that the appellant has neither indicated the amendments made to the claims nor explained where these amendments find support for their disclosure in the application as originally filed. [] These deficiencies alone could lead to the non-admittance of the second auxiliary request." 
• Furthermore, the AR corresponds to a request withdrawn before the ED. "If the board were to admit such a [previously withdrawn] request, it would be contrary to the main purpose of ex-parte appeal proceedings, which are primarily concerned with examining the contested decision [...]. [The] fact that the request was withdrawn before the issue of a reasoned decision on its merits by the examining division means that reinstating this request upon appeal would compel the board either to give a first ruling on the critical issues, [] or to remit the case to the department of first instance for further examination, which is clearly contrary to procedural economy. It is precisely with the purpose of forestalling these unsatisfactory options that Art. 12(4) RPBA provides the board with the discretionary power to hold inadmissible requests which could have been presented (and examined) (or were not admitted) in the first-instance proceedings."

EPO T 2100/14 -  link

Reasons for the Decision

1. Main request and first auxiliary request

Features A and B of claim 1 as filed or as published in WO-A-2007/006872 (WO):

A) a unit formed by at least a corrugated plate (10) of steel sheet mounted to be supported by steel support beams (14);
B) in which the corrugated plate (10) of steel sheet is mounted in the longitudinal direction of the balcony"

are omitted in claim 1 of both the main and the first auxiliary requests.

Corresponding features of independent method-claim 10 as filed/published have also been deleted in independent claim 10 of both the main and the auxiliary requests.

1.1 In its decision to refuse the application, the examining division arrived at the conclusion that the omission of features A and B in the independent device and method claims constituted a violation of Article 123(2) EPC by applying the essentiality test referred to in the EPO Guidelines H-V, 3.1.

1.2 For the reasons detailed hereinafter, the board arrives at the same conclusion when applying the three-point essentiality test, namely that features A and B cannot be omitted in the independent claims without infringing Article 123(2) EPC (see Case Law of the Boards of Appeal, 8th edition, 2016, II.E1.1.2.4, page 409).