T 1542/14 - Rule 137(5) not in opposition

Key points

• In this opposition appeal, the Board confirms that Rule 137(5) does not apply to amendments in opposition (following T443/97).

EPO T 1542/14 - link

5. Regel 137(5) EPÜ

Der Einwand der Beschwerdeführerin, dass die Änderungen des Anspruchs 1 während des Einspruchsverfahrens die Vorschriften der Regel 137(5) EPÜ verletzten, trifft nicht zu, da, wie von der Beschwerdegegnerin argumentiert, Regel 137(5) EPÜ nur auf Änderungen, die während des Prüfungsverfahrens vorgenommen wurden, abstellt, siehe Rechtssprechung der Beschwerdekammern, 8. Auflage 2016, IV.B.5.1-5.2.

T 1329/15 - Convergent requests

Key points

• The Board decides on admissibility of AR's filed four weeks before the oral proceedings.
• " An approach frequently adopted by the Boards when exercising their discretion in admitting an amendment filed during oral proceedings can be summarised as follows: Unless good reasons exist for filing the amendment so far into the proceedings - for example if it is occasioned by developments in the proceedings - it will be admitted only if it does not extend the scope or framework of discussion as determined by the decision under appeal and the statement of the grounds of appeal, and is moreover clearly allowable" 
• " Regarding the framework of discussion, new auxiliary requests filed in appeal proceedings are, in accordance with settled jurisprudence (cf. CLBA, IV.E.4, 4.4.4), expected to be convergent with the previous requests on file, i.e. to develop and increasingly limit the subject-matter of the independent claim in the same direction and/or in the direction of a single inventive idea." 
• " Furthermore, in the Board's view, auxiliary requests 1 and 2 are neither convergent with the main request, nor with each other. Claim 1 of the main request concerns the idea of adding a cyclone separator to the hand held vacuum cleaner (see characterising portion). Rather than further developing this idea, claim 1 of the first auxiliary request adds the feature of a floor nozzle and its flexible hose connection. Likewise, instead of adding features of the cyclone separator or the floor nozzle, the second auxiliary request abandons the floor nozzle features and instead adds features concerning the position of air outlet openings in the housing of the hand held vacuum cleaner." 
• As a comment, it is unity of invention does not apply to opposition procedures, but these AR's are deemed non-convergent by adding limiting features which do not "develop the idea"  of the Main Request.
• Moreover, the appeal is admissible even though the Notice of appeal contained no request.

EPO T 1329/15 - link

Reasons for the Decision

1. Admissibility of the appeal

The respondent-proprietor argued in their reply to the appeal that the appeal was not admissible because the notice of appeal contained no request and it was questionable whether the notice of appeal contained the appellant's address. Furthermore, they argued that the statement of grounds of appeal did not clearly indicate the reasons for setting aside the impugned decision and was structured more like an opposition notice than a grounds of appeal.

In a communication to the parties of 15 June 2018 (see section 2) the Board set out its reasoned preliminary opinion as to why the appeal of the opponent II was admissible. The opinion is reproduced in italics below:

T 0123/14 - Form 2061, procedural violations

Key points

• This is an appeal against a refusal with Form 2061, a decision "according to the state of the file".
• |" The impugned decision explicitly states that the applicant had filed no comments in reply to the latest communication, which is manifestly incorrect. The Examining Division therefore ignored the arguments submitted after the communication referred to in the impugned decision and thus infringed the appellant's right to be heard, which amounts to a first substantial procedural violation." 
• This is a substantial procedural violation, the decision is also insufficiently reasoned because the applicant's argument with the last letter were ignored.
• " The Board wishes to point out that the above procedural violations could have been avoided if the Examining Division had simply issued a regular reasoned decision in response to the letter of reply taking into account the freshly presented comments." 

EPO  T 0123/14  - link

Reasons for the Decision

1. The appeal is admissible.

Procedural violation

2. According to Article 113(1) EPC 1973, the decisions of the European Patent Office may only be based on grounds and evidence on which the parties concerned have had an opportunity to present their comments.

3. The right to be heard under Article 113(1) EPC 1973 requires that those involved be given an opportunity not only to present comments but also to have those comments considered, that is, reviewed with respect to their relevance for the decision on the matter. The deciding department must demonstrably consider the comments. For an Examining Division not to violate an applicant's right to be heard, its decision has to actually address the arguments put forward by the applicant in its reply to a previous communication. It may be assumed that the right to be heard has been contravened if the reasons given for the Examining Division's decision merely repeat the reasons given for the communication issued before the said reply (see Case Law of the Boards of Appeal of the European Patent Office, Eighth Edition, July 2016, III.B.2.4.2).

T 0874/16 - Essential features

Key points

• As already pointed out in the board's communication annexed to the summons to oral proceedings, claim 1 attempts to define the claimed subject-matter in terms of the result to be achieved, i.e. "to provide thermal compensation for output signals of said Coriolis flow meter", instead of defining it in terms of technical features responsible for achieving the claimed result (Article 84 EPC 1973). 
• "[The steps specified in claim 1]  have such a broad scope that they are manifestly insufficient to guarantee a thermal compensation for a Coriolis flow meter over the whole scope of claim 1. In other words, essential features for achieving the claimed result are missing in claim 1." 
• " This is contrary to the established jurisprudence of the boards of appeal according to which a claim "must define clearly the object of the invention, that is to say indicate all the essential features thereof. As essential features have to be regarded all features which are necessary to obtain the desired effect or, differently expressed, which are necessary to solve the technical problem with which the application is concerned" (see T 32/82)." (emphasis  added).
• " According to the application as filed, the invention provides a method and an apparatus for temperature compensation for Coriolis flow meters which avoid the problematic use of thermal sensors (see page 3, lines 12 to 14). In order to achieve this result, a calibration of the Coriolis flow meter must be carried out to derive calibration constants according to equation 1.10. Once the calibration constants are derived, they are used in equation 1.5 to correct the measured flow rate to provide a thermally compensated flow rate. See page 14, line 9 to page 16, line 5; page 18, line 5 to page 19, line 5; figures 10 and 11. It follows that at least equations 1.5 and 1.10 are essential features missing in present claim 1." 
• As a comment, the "technical problem with which the application is concerned" appears to be the subjective technical problem in the sense of T39/93 hn.II, not the objective technical problem.

EPO T 0874/16 - link

Reasons for the Decision

1. Main request

Claim 1 lacks clarity because it does not define all essential features of the claimed method for providing thermal compensation for a Coriolis flow meter (Article 84 EPC 1973).

1.1 As already pointed out in the board's communication annexed to the summons to oral proceedings, claim 1 attempts to define the claimed subject-matter in terms of the result to be achieved, i.e. "to provide thermal compensation for output signals of said Coriolis flow meter", instead of defining it in terms of technical features responsible for achieving the claimed result (Article 84 EPC 1973).

T 0660/15 - Transfer of opposition

Key points

• The opponent TCL submits that the opposition was transferred by way of universal succession.
• " In order to accept that a transfer of opposition has taken place by way of universal succession, it must be sufficiently proven that all of TCL's business assets have been transferred to TCBV. Hereby, the principle of free evaluation of evidence applies. In decision T 2357/12 the Board stated that the concept of universal succession had to be interpreted autonomously, i.e. independently from national law. An essential point for accepting universal succession was that there was only one transferee possessing all the assets and the former opponent had ceased to exist, so that no legal uncertainty could arise about who the opponent was." 
• TCL was an IP holding entity in the Tenaris group. TCL was registered in Saint Vincent and the Grenadines. TCBV is registered in The Netherlands and is the alleged successor opponent. 
• "Due to a corporate restructuring, Tenaris had decided to transfer and assign the TCL business assets from TCL to TCBV and to liquidate and dissolve TCL. Prior to TCL's liquidation and dissolution, all of TCL's business assets were transferred to TCBV. This is corroborated by the declaration dated 12 April 2017 of Mr Bollers, a barrister at law and notary public, who acted as the liquidator and who stated therein, that all of TCL's intangible assets had been transferred and assigned to TCBV and not to any other legal entity." 
• " Furthermore, the respondents were of the view that universal successorship cannot be acknowledged as long as it has not been proven that also the liabilities were taken over by TCBV. However, from point 3 of Mr Bollers's declaration of 12 April 2017, it follows that TCL's intangible assets, including any related duties and obligations were transferred to TCBV. Moreover, in his request to the financial services authorities dated 7 June 2017 he stated that after an advertisement in the relevant Government Gazette he had not received any claims and accordingly the requirements for a dissolution were complied with. This shows that there were no outstanding liabilities." 
• " Accordingly, the Board considers it as sufficiently proven that TCBV is the universal successor of TCL, and on this basis, the Board accepts that the opponent's status was transferred from TCL to TCBV and that the procedure is to be conducted with TCBV as the appellant." 
• This decision appears to be in line with T2357/12, hn.3. 

EPO T 0660/15 -  link

Reasons for the Decision

1. Admission of Mr Bollers's declaration dated 19 October 2018

Although this declaration was only filed one day before the oral proceedings, the Board admitted it into the proceedings because it did not raise any new issues but merely confirmed statements made earlier in the procedure. Thus, the respondents and the Board could be reasonably expected to deal with it without a postponement of the oral proceedings (Articles 13(1) and (3) RPBA).

2. Transfer of opposition

The status as an opponent cannot be freely transferred (G 2/04, OJ EPO 2005, 549). It can only be transferred in case of universal succession of the opponent, or when a relevant part of the opponent's business has been transferred (singular succession) (G 4/88, OJ EPO 1988, 480).

In order to accept that a transfer of opposition has taken place by way of universal succession, it must be sufficiently proven that all of TCL's [Tenaris Connections Limited (TCL) ] business assets have been transferred to TCBV [Tenaris Connections BV (TCBV)] . Hereby, the principle of free evaluation of evidence applies. In decision T 2357/12 the Board stated that the concept of universal succession had to be interpreted autonomously, i.e. independently from national law. An essential point for accepting universal succession was that there was only one transferee possessing all the assets and the former opponent had ceased to exist, so that no legal uncertainty could arise about who the opponent was.

From the declarations of Mr Lev and Mr Ramos, the former directors of TCL, it follows that TCL was a technology holding company and that TCL's business assets consisted of intangible assets including a worldwide patent portfolio, technical information, know how, trade and industrial secrets, licences and other agreements. In addition, TCL was only in the possession of some monetary assets to cover its costs and expenses. Due to a corporate restructuring, Tenaris had decided to transfer and assign the TCL business assets from TCL to TCBV and to liquidate and dissolve TCL. Prior to TCL's liquidation and dissolution, all of TCL's business assets were transferred to TCBV. This is corroborated by the declaration dated 12 April 2017 of Mr Bollers, a barrister at law and notary public, who acted as the liquidator and who stated therein, that all of TCL's intangible assets had been transferred and assigned to TCBV and not to any other legal entity. This was confirmed in his declaration of 19 October 2018.

The respondents argued that the European patents which had been transferred from TCL to TCBV, as exemplified by exhibit C, had already been transferred in June and July 2016 and thus before Mr Bollers had been appointed as liquidator in November 2016. At what point in time the European patents were transferred does not play a role in the present case. By this, the respondents seem to want to cast doubt on whether Mr Bollers was in a position to know what had happened before his appointment. However, even though the transfer had taken place before his appointment as liquidator, his role in this process was to make sure that the requirements for the liquidation had been fulfilled and to confirm that all assets had been transferred, even before his appointment, so that the company could be deleted from the register.

The respondents submitted Form 17 filed by TCL with the authorities of Saint Vincent and the Grenadines and argued that this showed that the object of TCL was not only the holding of technology but also other business, like e.g. bulk trading and wholesaling and the provision of services relating thereto. In the respondent's view this showed that TCL also carried out activities other than applying for patents and licensing patents and thus that not all the assets of TCL had been transferred to TCBV. The appellant, however, convincingly explained that it was usual practice that a business was broadly described when a company was registered in order not to be limited and that it did not necessarily mean that it performed all of this business. TCL acted exclusively as a technology holding company and did not conduct any other business. As set out above, this is clear from the declarations of Mr Lev and Mr Ramos and the Board sees no reason to doubt it.

Furthermore, the respondents were of the view that universal successorship cannot be acknowledged as long as it has not been proven that also the liabilities were taken over by TCBV. However, from point 3 of Mr Bollers's declaration of 12 April 2017, it follows that TCL's intangible assets, including any related duties and obligations were transferred to TCBV. Moreover, in his request to the financial services authorities dated 7 June 2017 he stated that after an advertisement in the relevant Government Gazette he had not received any claims and accordingly the requirements for a dissolution were complied with. This shows that there were no outstanding liabilities.

Thus, the appellant has convincingly demonstrated that all assets and liabilities were transferred from TCL to TCBV and not to anybody else. With effect from 7 June 2017, TCL was dissolved and ceased to exist, as is clear from the Certificate of Dissolution from the Company Register from Saint Vincent and the Grenadines (Exhibit E).

The respondents furthermore submitted that in case T 2357/12 the evidence presented was more conclusive and that the evidence in the present case was not as strong as the one in T 2357/12. However, each case has to be examined, and evidence has to be evaluated, on the basis of the facts of the particular case and therefore, reference to evidence in another case, which was based on different facts, is not useful.

Accordingly, the Board considers it as sufficiently proven that TCBV is the universal successor of TCL, and on this basis, the Board accepts that the opponent's status was transferred from TCL to TCBV and that the procedure is to be conducted with TCBV as the appellant.

T 1085/13 - Novelty based on purity of compound

Key points

• The Board departs from T 0990/96 which had found "that a document disclosing a low molecular chemical compound and its manufacture makes normally available this compound to the public in the sense of Article 54 EPC in all desired grades of purity" and T 728/98 which had held that " the general rule applies that the level of purity of that low molecular compound cannot entail novelty".
• The present Board considers that a document only discloses (in the sense of Art. 54 and Art. 123 and G2/10) the purity degree as inevitably achieved by the described manufacturing method. 
• Whether with other purification methods, a higher purity can be achieved (up to the now claimed level), and whether such purification methods are common general knowledge, are a matter to be considered in the assessment of inventive step, according to the present Board.
• The interesting follow-up question is, taking into account that any degree of purity is a selection from a range of 0-100%, whether this decision means that the rules for selection inventions are to be reconsidered as well. 

EPO Headnote 
A claim defining a compound as having a certain purity lacks novelty over a prior-art disclosure describing the same compound only if the prior art discloses the claimed purity at least implicitly, for example by way of a method for preparing said compound, the method inevitably resulting in the purity as claimed.

Such a claim, however, does not lack novelty if the disclosure of the prior art needs to be supplemented, for example by suitable (further) purification methods allowing the skilled person to arrive at the claimed purity.

The question of whether such (further) purification methods for the prior-art compound are within the common general knowledge of those skilled in the art and, if applied, would result in the claimed purity, is not relevant to novelty, but is rather a matter to be considered in the assessment of inventive step


EPO T 1085/13 - link

3. Document D1

3.1 As set out above, it is undisputed that LH as prepared according to example 16 of D1 is amorphous and has a level of crystallinity as defined in claim 1 at issue. Example 16, however, does not mention the purity of the LH obtained. By reworking example 16 of D1 (Report #56, above), the LH obtained has a purity of 97.91%, which is below the lower limit required by claim 1 at issue.

Note: operative claim 1 is: "1. Amorphous Lercanidipine Hydrochloride having a purity of at least 99.5% determined by HPLC analysis and containing less than 0.5% of crystalline Lercanidipine Hydrochloride".

3.2 The board is aware that according to decision T 0990/96 (OJ 1998, 489; headnote 1 and 2 and reasons, 7 and 8), "a document disclosing a low molecular chemical compound and its manufacture makes normally available this compound to the public in the sense of Article 54 EPC in all desired grades of purity (emphasis added by the present board).

3.3 The entrusted board reached this conclusion on the basis that, particularly in the field of pharmaceutical compounds, it was "common practice for a person skilled in the art of preparative organic chemistry to (further) purify a compound obtained in a particular chemical manufacturing process according to the prevailing needs and requirements, e.g. in samples for analytical purposes. Conventional methods for the purification of low molecular organic reaction products such as recrystallisation, distillation, chromatography, etc., which normally can be successfully applied in purification steps, are within the common general knowledge of those skilled in the art" (loc. cit. emphasis added by the present board).

It was accepted by that board that exceptional situations may exist which could justify a different conclusion. For example "a situation where it was proved on the balance of probability that all prior attempts to achieve a particular degree of purity by conventional purification processes had failed". However, "the burden of proving the existence of such an extraordinary situation lies with the party alleging its existence" (loc. cit., emphasis added by the present board).

T 1777/15 - Apportionment of costs

Key points

• In this opposition appeal, the case is remitted based on an auxiliary request. The opponent (respondent) had requested that in the case of a remittal, "the costs it would incur in connection with the further prosecution before the first instance and any subsequent appeal proceedings be paid by the appellant".
• The Board refuses this request.
• "From the wording of Article 104(1) EPC ("costs [a party] has incurred" (underlining by the board)), Rule 88(2) EPC, which relates to a bill of costs, and Article 16(1) RPBA, it follows that a decision on an apportionment of costs cannot be made in respect of future costs"
• As a first comment, Rule 88(2) is completely irrelevant here because it is about the procedure for the fixing of the costs, which is a distinct and separate procedure from the decision to give a different apportionment of the costs. The bill of costs (invoices and the like) can indeed by submitted for costs already incurred, but that is precisely why the fixing of the costs is in a separate procedure. I find it somewhat concerning that this Board confuses these two procedures.
• Furthermore, there is an established line of case law (though a bit older) that in case of a remittal (for a newly filed document), the  "costs between the parties should be apportioned under Article 104 [...], in such a way that the late-filing party should normally bear all the additional costs caused by his tardiness" (T 326/87, hn, OJ 1992, 522, CLBA IV.C.6.3.3). As an example of a cost order for future costs after remittal: see T622/89: "The Opponent shall bear all the costs of the Patentee reasonably incurred in the course of the further prosecution of the opposition before the Opposition Division, and of any appeal therefrom." (which is cited in Singer/Stauder, 5th edition, Art.104 nr.32. 
• As the Board does not engage with existing case law, I don't find the Board's reasoning convincing. In addition, for interpreting a legal provision, one can often not restrict oneself to the plain text, but needs to take into account the case law, purpose and system, and the travaux as well, unlike the Board in this case. 
• The Board also appears to indicate that for the OD to hold inadmissible a request filed after the date for written submissions under Rule 116, the OD must give more reasons than the observation that the request is filed after that date. However, the Board states that "In the present case, no reasoning was given" and also that "Without any reasoning" , while at the same time acknowledging that the written decision of the OD includes the statement that the  opposition division did not admit this request "as it is late filed, Rule 116(2) EPC" and "for the reason of being late filed, according to Rule 116(1) EPC". The Board may find it grossly insufficient reasoning, I don't think the OD gave "no reasoning". 

EPO T 1777/15 - link

5. Auxiliary request 4: admissibility (Article 12(4) RPBA)

5.1 Claim 1 of auxiliary request 4 corresponds to claim 1 of auxiliary request 3, except that the first alternative referred to in point 4 above has been deleted.

5.2 The claims of auxiliary request 4 are identical to the claims of auxiliary request 6 filed before the opposition division at the oral proceedings. The opposition division did not admit this request "as it is late filed, Rule 116(2) EPC" and "for the reason of being late filed, according to Rule 116(1) EPC" (see points 1.17.18 and 2.8.1 of the decision under appeal and point 16.9 of the minutes). No further reasoning was given.

5.3 Article 12(4) RPBA gives the board the discretion to hold inadmissible requests which could have been presented or were not admitted in the first instance proceedings.