J 0010/17 - No request for restoration of priority

Key points

• In this case about restoration of priority by EPO as designated Office for a Euro-PCT application, the USPTO as rO had granted the restoration based on the 'unintentional' criterium. However, that decision has no effect with EPO (Rule 49ter.1(b) PCT). The applicant had failed to request restoration upon EP Entry (or within 1 month from EP entry), under Rule 49ter.2 PCT.
• The EPO had sent out a reminder about the time limit, but this reminder was imprecise. The representative had replied that the request for restoration was already submitted with the USPTO. That does not count, at least because filing the request with EPO as designated office requires payment of a fee equal to the Re-establishment fee (Rfees 2(1).13).
• The applicant argues legitimate expectations, based on an inaccurate reminder of EPO about the time limit for filing the request for restoration. The Board does not accept this. 
• Note that re-establishment of rights is ruled out for the 1 month time limit, J 13/16. 

Summary of Facts and Submissions

I. The present appeal lies against the decision of the Receiving Section rejecting the request to reverse the finding that European patent application No. 13 845 204.0 does not enjoy a right of priority with respect to the claimed priority.

II. The application had been filed as an international application under the PCT on 7 November 2013, with the USPTO as receiving Office. Priority from an earlier US application of 9 October 2012 was claimed.

III. As the international application was not filed within the priority period, the applicant submitted a request for restoration of the right of priority with the receiving Office. The receiving Office decided to restore the right of priority based on the finding that the failure to file the international application within the priority period had been "unintentional". This information, however, did not reach the EPO until a later stage.

J 0004/17 - Resumption of proceedings

Key points

• In this case, the grant proceedings had been stayed upon request of Ferring, who had started entitlement proceedings before the Dutch Courts. Upon later request of the applicant, the Legal Division had set a date for the proceedings to be resumed. Ferring appeals that decision. 
• The Legal Board rejects the argument of Ferring, that under Rule 14(2) EPC the proceedings can only be resumed in case of a final decision of a court in the entitlement proceedings, or in case of abuse of proceedings.
• The Board gives a nice remark about the (discretionary) decision of the Legal Division to set a date for resumption of the proceedings: " It is the essence of a discretionary power to weigh up the specific facts and aspects of a case which the deciding body considers the most relevant and valid to reach a correct and appropriate balancing of the interests of the parties." 
• However, the Board decides to overrule the Legal Decision, and to maintain the stay: the applicant had " not shown any urgency in making its case"  in the appeal in the national entitlement proceedings, making maximum use of the time limits in the national proceedings. 
• " Although the procedural conduct of [the applicant] is compliant with the procedural law and judicial practice at national level, and thus cannot qualify as an abuse, this attitude is fundamentally in contradiction with the reasons it has given in favour of a resumption of the grant proceedings." 
• Therefore, the stay is not lifted. 

EPO Headnote
Rule 14(3) EPC is silent on the reasons for setting a date for resumption of the proceedings for grant. It is thus to be concluded that the legislator let it to practice and jurisprudence to define the circumstances that justify setting a date for resumption on a discretionary basis.
Resumption of the proceedings is not limited to cases involving misuse or delaying tactics. The possibility that the EPO sets a date for resumption upon staying the proceedings for grant hints towards a broader construction.
However an applicant cannot justify its request for resumption based on the length of the entitlement proceedings where this duration has been significantly caused by the applicant's procedural conduct.


EPO J 0004/17 - (J 4/17) - link
(similar J 5/17, J 6/17, J 7/17, J8/17, J9/17)

Summary of Facts and Submissions

I. The appeal lies against the decision of the Legal Division dated 28 March 2017 with regard to patent applications EP 03781836.6, EP 11000464.5, EP 11000465.2, EP 11000466.0, EP11000467.8 and EP 11000468.6, by which it ordered that the grant proceedings related to them be resumed under Rule 14(3) EPC on 1 June 2017.

II. The essential facts of the case are as follows:

The application was filed as an international application (PCT/US2003/35662) on 10 November 2003 and the time period for entry into the European phase expired on 10 June 2006.

Recommended: 100mostcited Blog

I am glad to recommend 100mostcited.blogspot.com, a weblog with "the EPO Boards of Appeal's 100 most cited decisions of all times".

The blog post each work day a blog with one frequently-cited decision, from nr. 100 to the most ranked decision. As of today, the blog has arrived at nr. 53, T248/85.

The blog is an initiative of a "an examiner and member of the (newly created) Opposition Directorate at the European Patent Office in Munich. Before joining the EPO in 2015, he was working as European and German patent attorney ". The author clearly knows his case law.

T 0149/15 - Parameter and device manual

Key points

• Claim 1 is for a gel having a particular viscosity value. Viscosity measurements are rather sensitive to how they are carried out. According to the opponent, for a repeatable viscosity measurement, you need information about 9 settings like temperature, container size, test speed, and 'how the sample was prepared'. The patent does  not give all this information.
• However, the Board notes that the patent specifies the viscosimeter model. Therefore, " the skilled person would turn to its operating instructions for carrying out the measurements" . This manual give the further required information. Hence, the lack of information about the parameter in the patent, does not cause a problem of insufficient disclosure.

EPO T 0149/15 -  link

Claim 1 specifies a gel composition comprising a sufficient amount of a thickening agent to give the composition a viscosity in excess of 9000 cps;.

Reasons for the Decision

3.1 Claim 1

3.1.1 The respondent argued that the skilled person would not be able to prepare the composition in granted claim 1 without undue burden because the patent did not provide sufficient information on the method that should be used for reliably measuring viscosity and because there was only one example of a thickener, at a specific concentration, that would achieve the minimum viscosity defined in the claim. These two aspects are treated separately in points 3.1.2 and 3.1.3 below.

3.1.2 Regarding the issue of whether the patent contains sufficient information for measuring the viscosity of the composition in granted claim 1, the respondent [opponent] noted that a repeatable viscosity test should specify the nine parameters cited on page 55 of document (1) [Operating instructions of the programmable rheometer Brookfield DV-II+ Pro EXTRA. Manual No. M/09-166, Brookfield Engineering Laboratories, Inc., pages 1-79] , namely:

- Test temperature
- Sample container size
- Sample volume
- Viscosimeter model
- Spindle used
- Whether or not to attach the guard leg
- Test speed
- Length of time or number of spindle revolutions to record viscosity
- How sample was prepared and/or loaded into the container

T 0765/12 - Two strontiums salts

Key points

• In this opposition appeal. the Board agrees with inventive step of a product claim for a pharmaceutical tablet, being a tablet or capsule, "comprising only two strontium salts, wherein said strontium salts consists (sic) of strontium carbonate and strontium chloride" . Good to see that you can still get a pharmaceutical product claim (i.e. for any disease) with two inorganic salts as active ingredient.
• The Board is also careful about what the closest prior art D6 teaches, and does not stop at the abstract.
• " The title of [D6] is "Effects of Low Doses of Strontium on Bone Quality and Quantity in Rats". In the abstract it is stated that strontium has been shown to increase bone mass when given at low doses (abstract, first and last sentences). However, the information gained from the experimental section of D6 does not support such a finding:" (follows an analysis of the experimental results in D6). In sum, from the data provided by D6, which partly show non-significant findings, it is not clear how strontium, especially strontium chloride, will influence bone and cartilage disorders, specifically those that require strengthening of the bone material. D6 merely conveys the message that administration of strontium chloride may affect bone formation and resorption..
• Therefore, the claimed subject-matter is inventive in view of D6. 

Claim 1 of the Main Request
"1. A pharmaceutical composition comprising only two strontium salts, wherein said strontium salts consists (sic) of strontium carbonate and strontium chloride for oral administration in the form of a tablet, a capsule, or a dissolvable tablet."



EPO T 0765/12 - link

3.2 Inventive step

The present invention relates to pharmaceutical compositions intended for use in the treatment of cartilage and bone disorders, especially for use in the treatment of osteoporosis (paragraphs [0001] and [0009]). Specific strontium salts are used to provide an active ingredient having high availability and fewer side-effects (paragraph [0012]). In particular, the combination of strontium chloride and strontium carbonate has been found to be advantageous (paragraph [0050], examples 2 to 4, 6, 7, 11, 12 and 17, claims 5 to 8 as granted).

T 1948/14 - ED refuses further amendments

Key points

• In this examination appeal, the ED had admitted a number of auxiliary request, until finally one was found to comply with Art. 76 EPC.
•  " The subject-matter of claim 1 of this [auxiliary request] was then considered by the examining division not to involve an inventive step, in particular in view of a line of argument presented in the consultation by telephone held [] six days before the date of the oral proceedings. [In] reply to the examining division's objection of lack of inventive step, the appellant expressed the intention to file a further amended request in order to overcome the objection under Article 56 EPC, but the examining division did not consent to further amendments." 
• " In view of these facts, [...] the board is of the opinion that the examining division should at least have accepted the proposal of the appellant to file amendments in reaction to the objection of lack of inventive step in order to subsequently decide on the admissibility of the amended request according to the appropriate criteria and, if admitted, on its allowability." 

EPO T 1948/14 - link

The board notes that during the first-instance oral proceedings

- the examining division admitted a main request and first to third auxiliary requests previously filed in writing by the appellant in reply to objections raised under Articles 56, 76(1) and 123(2) EPC in the communication annexed to the summons;

- during the discussion that took place during the first-instance oral proceedings on the issues under Article 76(1) EPC, the examining division was of the view that all these requests contravened Article 76(1) EPC, and subsequently admitted into the proceedings a replacement of the first auxiliary request and then a subsequent replacement of that request, resulting in an amended first auxiliary request - i.e. the first auxiliary request underlying the decision under appeal - which was then considered to comply with Article 76(1) EPC;

- the subject-matter of claim 1 of this amended first auxiliary request was then considered by the examining division not to involve an inventive step, in particular in view of a line of argument presented in the consultation by telephone held on 24 January 2014, i.e. six days before the date of the oral proceedings (see point 6.2 of the communication dated 29 January 2014 showing the result of the telephone consultation, sent also by fax on 24 January 2014); and

- in reply to the examining division's objection of lack of inventive step, the appellant expressed the intention to file a further amended request in order to overcome the objection under Article 56 EPC, but the examining division did not consent to further amendments.

During the appeal proceedings the appellant has contested the use by the examining division of its discretionary power not to consent to further amendments during the oral proceedings, and has submitted that the examining division's failure to consent to further amendments would justify the filing of auxiliary requests 1 to 7 with the statement of grounds of appeal and their admission into the proceedings.

In view of these facts, and more particularly in view of

- the new elements in the line of argument of lack of inventive step presented by the examining division by telephone six days before the first-instance oral proceedings and also during the oral proceedings (in particular, the formulation of different, unconnected objective problems solved by the claimed invention, and the additional combination of two documents in respect of one of the distinguishing features), and of

- the application of the mentioned line of argument to claim 1 of the first auxiliary request amended during the oral proceedings,

the board is of the opinion that the examining division should at least have accepted the proposal of the appellant to file amendments in reaction to the objection of lack of inventive step in order to subsequently decide on the admissibility of the amended request according to the appropriate criteria and, if admitted, on its allowability.

It follows that auxiliary requests 2 to 7 were submitted with the statement of grounds of appeal in reaction to the examining division's objection of lack of inventive step of the then first auxiliary request and also in reaction to the refusal by the examining division to consent to the filing of amendments without first considering the extent and the nature of the proposed amendments. In these circumstances, the board considers that the filing of auxiliary requests 2 to 7 with the statement of grounds of appeal constituted an appropriate reaction from the part of the appellant to the decision under appeal.

Having regard to the above, and noting that the present auxiliary requests 2 to 7 were filed in reply to the board's communication annexed to the summons to oral proceedings and differ from the preceding auxiliary requests 2 to 7 only by the incorporation of reference signs relating to the drawings, the board, exercising its discretion under Article 13(1) RPBA and taking into consideration the provisions of Article 12(4) RPBA, admitted the present auxiliary requests 2 to 7 into the appeal proceedings.

T 2335/12 - Limited lab resources in house

Key points

• In this opposition appeal, the title of the patent is "Animal product free media and processes for obtaining a botulinum toxin", and the patentee is Allergan Inc. Allergan is of course the major producer of Botox (r) and the active ingredient of that is the botulinum toxin.
• Patentee filed an experimental report late. 
• The Board: "Regarding the delay in submitting the evidence, the board is not persuaded by the [patentee's] arguments that it was caused by unsuccessful attempts to contract a university laboratory to carry out comparative tests and by limited resources for performing the tests in-house, since Allergan Inc. [the patentee ] is one of the largest manufacturers of [botulinum neurotoxin]BoNT and should have sufficient in-house capacities to perform a standard test for assessing the BoNT production of  [C. botulinum bacteria]  grown on different commercially available fermentation media." 

Reasons for the Decision

Admission of evidence filed with letter dated 29 July 2015 (Articles 114(2) EPC and 13(1) RPBA)

1. Document D32 was submitted with the appellant's [patentee,  Allergan, Inc.]  letter dated 29 July 2015, i.e. more than two and a half years after the filing of it's statement of grounds of appeal. It is therefore late-filed and its admission is at the board's discretion (Articles 114(2) EPC and 13(1) RPBA). In this context, account may inter alia be taken of whether or not a convincing case has been made as to why the evidence could not have been filed earlier and why it is prima facie relevant.

2. Regarding the delay in submitting the evidence, the board is not persuaded by the appellant's arguments that it was caused by unsuccessful attempts to contract a university laboratory to carry out comparative tests and by limited resources for performing the tests in-house, since Allergan Inc. [the patentee company] is one of the largest manufacturers of BoNT and should have sufficient in-house capacities to perform a standard test for assessing the BoNT production of Clostridium botulinum (hereinafter "C. botulinum") grown on different commercially available fermentation media.