T 0913/15 - Killed by a comma

Key points

• In this opposition appeal, claim 1 directed to a hair iron lacks basis because of the feature "an electrode therein" - raising the preliminary issue of claim interpretation to decide where the electrode must be placed. To anticipate the conclusion, I note that the application as filed teaches that the case 28 comprises an opening 28a and that this opening is near the electrode. 
• Claim 1 as granted however recites: "characterized in that the negative-ion generator (4) is built in the grip (1), and the grip further comprises an outlet (9) opening to the hair-care section (2) to emit the negative ions due to discharge around an electrode therein towards the hair-care section(2)."
• "The board agrees with the respondent that the skilled person would first read claim 1 as granted on the assumption that it is grammatically correct."
•  Due to the separation of the clauses [of the characterizing portions of claim 1] by a comma it can only be understood that there was a deliberate intention when drafting the claim to separate the specification of the second clause from the first clause."
• "Thus, the skilled person would interpret the specification of the second clause as defining the outlet (9) to be comprised in the grip and that an electrode for emitting negative ions is situated in the outlet."
• "the board agrees with the[opponent] that the structure of the second clause makes it clear, from both a linguistic and technical point of view, that the term "therein" must refer to "an outlet" which is part of the grip, i.e. the electrode is located within the outlet of the grip."
• Hence, the opening has a different position in claim 1 as granted than in claim 1 as filed and claim 1 lacks basis. The Auxiliary Request specifying the position differently (as being in the grip) violates Art 123(3) EPC. The appeal is dismissed and the patent remains revoked.

EPO T 0913/15 -  link

VI. Claim 1 as granted reads:

"A hair iron (100,120,130,140,150,160,170,180) comprising:
a grip (1),
a hair-care section (2) connected to the grip (1), having a heater (11) for generating heat to hair for hair dressing; and
a negative ion generator (4) which generates negative ions to emit them toward hair held by the hair-care section (2)
characterized in that
the negative-ion generator (4) is built in the grip (1), and the grip further comprises an outlet (9) opening to the hair-care section (2) to emit the negative ions due to discharge around an electrode therein towards the hair-care section(2)."

 Reasons for the Decision

1. Main request (claim 1 as granted),Extended subject-matter, Articles 100(c), 123(2) EPC

1.1 The opposition division considered that the requirements of Article 123(2) EPC were not met since it interpreted claim 1 as granted as specifying that the electrode for discharging the negative ions is in the outlet, as opposed to being near the outlet, which it considered to be the originally disclosed location.

1.2 The board agrees with the respondent that the skilled person would first read claim 1 as granted on the assumption that it is grammatically correct.

1.3 The pre-characterising part of the claim defines a negative ion generator, and also a direction in which the negative ions it generates are to be emitted. However, it does not provide any further specifications as regards the location, constitution or configuration of the negative-ion generator.

1.4 The characterizing portion of the claim 1, comprises two clauses which are separated by a comma followed by the conjunction "and".

NL - Further comments transfer of priority

Key points

• Today a different kind of post. I would like to follow up on my 5 August post about the transfer of priority and the Biogen vs Celltrion decision of The Hague Court of Appeal. Partly because my post was mid-summer, whereas it is a 'must-read' decision (to quote Martin Wilming; @FPCreview).
• To recall briefly, the Court found that the question of the validity of a transfer of priority must be decided by applying the EPC itself as lex loci protectionis (and not some national law). The Court then found that under an autonomous interpretation of the EPC, there are no formal requirements for such an assignment. Whether you agree with the decision or not, the Court's detailed reasoning on the topic deserves attention because the transfer of priority plays a role in quite a few cases.
• My first comment is that the granted patent originated from a PCT application. However, according to T577/11, r.6.2 (of 22.03.2017), based on Article 27(5) PCT,  "Article 87(1) EPC 1973 (and not Article 8 PCT or Article 4 Paris Convention) [...] for the question at issue in the present case, namely whether the applicant was entitled to claim priority from the earlier application." (in that case, the Board found that the alleged assignment was invalid under any of the national laws invoked by the parties)
• My second comment is a reply to the article of Mr Bremi in GRUR Int. 2018, 128, because the Biogen vs Celltrion decision addresses some of the concerns Mr Bremi has about current EPO practice concerning the transfer of priority.
• Mr Bremi writes that "the EPO in the current practice has regarded Art. 87 (1) EPC as a sufficient basis to allow examination of the successorship, to ask for evidence and to find a loss of the right to priority in case of failure."
  In reply, where priority is invalid from the outset, there is no "loss", and this is a crucial difference with loss of priority due to late filing of a priority document.
• Mr Bremi signals that the idea was to keep the EPO out of entitlement issues under Article 60 EPC. Mr Bremi then notes, "One additional reason for this is that the EPO should not be forced to be put into the “extremely difficult situation of having to apply the national law of the Contracting states”."  This situation is, of course, also avoided by EPC rules rather than national law; the former is the correct approach for the transfer of priority issues, according to the Court in Biogen vs Celltrion.
  The same applies to Mr Bremi's observation that " In assessing the validity of such assignments, the EPO is faced with highly complex conflict of law issues and, once the applicable law is determined, faced with having to apply basically any possible national law on earth, not only one of the laws of the Contracting States." This situation is equally avoided by adopting the approach of the Biogen vs Celltrion decision.
• Mr Bremi proposes that: "it would then be sufficient if the applicant claiming priority to a previous application filed by another applicant, made a corresponding valid priority declaration and filed the corresponding certified copy of the priority filing. There is little risk of abuse during this step, since these must be submitted well before the publication of the subsequent application and normally before the mere existence of the priority application is known to the public." Mr Bremi is presenting a proposal, not current EPO practice. In any case, Mr Bremi appears to overlook that some priority applications are published by the national patent office almost immediately (weeks after filing), i.e. well within the priority year. The prominent example is, of course, a DE utility model application (this is even discussed in GL G-IV,1; see also this case). I wonder if possession of the certified priority document is really sufficient to avoid abuse.
• Finally, Mr Bremi argues that "in contrast to the above mentioned general principles in general law, that only the truly entitled may raise the issue, the EPO allows any third party to challenge a priority claim based on this argument." Although the precise meaning of "general principle" can be discussed of course, this rule " that only the truly entitled may raise the issue'" is not a common rule of all EPC states. E.g. Italy has a different rule for entitlement of granted patents: 2 years after the grant, any third party may request revocation if the patentee is not entitled. (Global Patent Litigation; Hoyng and Eijsvogels (eds); Aug 2019; Chapter Italy, para. 30; Article 118(4) IP Code; "after two years from the publication of the grant of the patent, if the entitled party has not filed an action of reclaim, any interested party may seek the revocation of the patent" ). Perhaps the rule is a general principle in German law, but at least Italy does not have the rule.
• See for another reply to Mr Bremi's argument here.
• My third comment is about para. 4.16 of the decision where the Court actually rebuts the German BGH (at least, that's what I think). The Court acknowledges that if the assignment of the priority right is done early in the priority year, it may not yet be known in which countries priority-claiming applications will be filed; therefore, the lex loci protectionis may not yet be fully settled (e.g. the parties may decide after the assignment of the priority right that the PCT application will enter the national phase not only in USA, China and EPO but also Peru; they may then still have to check if the assignment document also suffices under the law of Peru). 
• The Court submits that "The practical problems that this may entail cannot set aside the principle enshrined in Article 2 of the PC that a country itself determines the conditions under which it grants and revokes patents for its territory (within the limits set by treaties)." (r. 4.16). 
• More interesting is that in BGH X ZR 49/12, para. 12, it was decided that the transfer of priority rights follows " dem Recht des Staates der ersten Anmeldung, [...] (Benkard/Grabinski, EPÜ, 2. Aufl., Art. 87 Rn. 5; Singer/Stauder/ Bremi, EPÜ, 6. Aufl., Art. 87 Rn. 52; Wieczorek, Die Unionspriorität, 1975, S. 143; aA Ruhl, Unionspriorität, 2000 Rn. 260)." The BGH  overturns the precedent of KPA 16.12.1905 (see my post of last year), which had concluded that the lex loci protectionis applies based on very detailed reasoning.
• The BGH's reasoning consists (entirely) of these references to the literature. So let's check it. Singer, 5th edition, Art.87 rdn.41 is silent about which national law applies. Benkard EPÜ 1st ed. Art.87 rdn.4 indicates the law of the state of first filing, referring to Benkard PatG. §15 Rdn.133 (9th ed.). I don't have Ruhl, but "a.a." indicates "other view" and indeed Benkard EPÜ  loc. cit. indicates that according to Ruhl, the law of the state of later filing applies to which the authors (Ullmann/Grabinski) add that "Dieser muß aber bei Übertragung des Prioritätsrechts noch nicht feststellen. Deshalb kann dessen Recht nicht grundsätzlich maßgebend sein" (idem Grabinksi in Benkard EPÜ 3rd ed. Art.87 rdn. 5) . Which brings us precisely at the point rebutted by the Court in Biogen vs. Celltrion, para. 4.16.
• In Benkard PatG (11th ed.) I don't find anything in §15; § Int. Teil rdn.35 (p.43) says no more than that the assignment follows "innerstaatlichem Recht" .
• Wieczorek discusses on p. 143 the KPA 16.12.1905  decision as "Grundleggend"; "diese Entscheiding fand in der Literatur allgemeine Zustimmung". As I discussed last year, KPA 16.12.1905 unambiguously chooses the lex loci protectionis and not the country of first filing. I have been at a loss (for more than a year by now) of how BGH X ZR 49/12 can cite Wieczorek in support of the law of the state of first filing. 
• Wieczorek (p.144) acknowledges that according to a French court decision, the form and " force probante" of acts done abroad are examined "aux préscriptions de la loi où ils sont rédigés”; hence the conflict-of-law rules are different in Germany and France. The French decision is Cour de Cassation 01.02.1944, "JCP 1944 II 2588"; excerpts in Prop. Ind. 1951 (No.8) p. 38) (PDF at WIPO site here, but p.138 is blanked out; I think because it was a 'letter to the editor'). I'm curious to learn whether this is still current French law (and if you can sell and convey a French using a simple contract executed abroad, or if you need a French notary, perhaps). French law at the time was stringent and required the official registration of all contracts between parties having an effect on third parties (according to Wieczorek, p.144).
• Finally, in the current Benkard EPÜ 3rd ed. Art.87 note 5, Mr Grabinksi writes that the law of the country of the first application applies, referring to Art. 14(2) Rome I Regulation. The Hague Court of Appeal explains why in their view, Art. 14(2) Rome I Regulation does not apply in reason 4.17 in some detail. Mr Grabinksi also highlights the difficulties in finding the lex contractus, as being uncertain for third parties and difficult to determine if the parties do not make an express choice of law. Of course, the Biogen vs Celltrion approach also avoids this by finding an autonomous EPC rule which applies to all patents granted by the EPO, irrespective of the place of residence of the parties and the state of first filing.
• In the more recent BGH decision ECLI:DE:BGH:2018:040918UXZR14.17.0, (repaired link; case X ZR 14/17;  07.05.2020) para.68, the BGH indicates that the questions of the assignability ("Übertragbarkeit"), formal requirements and other requirements for an effective assignment, must be distinguished from those concerning the obligations between assignor and assignee. The questions of obligations are governed by the law that governs the agreement ("Vertragsstatut"). The former issues are governed according to German conflict-of-law rules (as established in BGH X ZR 49/12) by the law of the state of first filing. 
• At least for the first question of whether a priority right can be assigned at all ("Übertragbarkeit"), established EPO case law is different in my view in that it is acknowledged that Article 87 EPC governs this for all priority right claimed for European patent applications, irrespective of the state of the filing of the priority application [Note 04.09.2019: see addendum below]. Hence the EPC governs the "Übertragbarkeit" according to the conflict-of-law rules applied by the EPO (Boards of Appeal) as the forum; I think on the ground that the EPC is the lex loci protectionis or possibly because Article 87 is so clearly meant to cover priority invoked for European patent applications before the EPO, not for applicants using an EP application as first filing for claiming priority, e.g. with the USPTO or Chinese Patent Office.
• Note 18.05.2020: For X ZR 14/17, the question of the applicable law is left open in para. 74, as I understand it, because of the Spaltungstheorie and Einheitstheorie. 

The EPO file for the patent EP1951304 at issue in Court of Appeal The Hague 30 July 2019 (Biogen vs Celltrion) is here; the OD decision is here. An appeal was filed, but the appeal decision  T2842/18 did not deal with priority.
The OD in EP1951304 found the priority to be validly claimed because all the inventors (applicants of the priority-founding provisional application) were applicants for the PCT application (the fact that they were applicants for the USA only was considered not prejudicial;  p. 28 of the reasons) (link).

• This so-called "PCT Request Form" approach of the OD may be based on Ntc. OJ 2014, A33 §9; this Notice does not bind the Boards (of course).
• Note 18.05.2020: as noted in this article of Evenson and Denny, the “PCT Request Form” approach was also applied by the OD in EP1965823 (appeal T 2749/18 pending) and in EP2940044 (appeal T1837/19 pending).
• See also T 0845/19 (EP2215124), Communication of 05.02.2020; and T 0419/16 (EP1725261), Communication of 06.02.2020.

Addendum 04.09.2019: I realized that I don't know a T decision saying with so many words that “it is acknowledged that Article 87 EPC governs [susceptibility to an assignment of priority rights] for all priority right claimed for European patent applications, irrespective of the state of the filing of the priority application” as I said above.

The closest remarks in the case law are that: "It is generally accepted that the right of priority is transferable independently of the corresponding first application." (T969/14, reason 1.1);  "It is generally accepted that the right of priority is transferable independently of the corresponding first application which can remain with the original applicant. " (T205/14, r.3.3) and "Priority rights are assignable independently of the corresponding patent application, and furthermore, their assignment may be restricted to specific countries." (T62/05, r.3.6) However, the FICPI country review indicates that under the national law of some countries, the priority right can not be assigned or not separately assigned ("Countries where these rights appear to be inseparable include the United States, Canada, Peru and Singapore." FICPI country review 6 June 2017 page 2).

Addendum 16.09.2019: I would like to add that Mr Bremi in Singer/Stauder/Luginbuhl 8th ed. Art.87 rdn 61, footnote 126 writes: "Es stellt sich z.B. auch die Frage, ob für das Verpflichtungsgeschäft zwar z.B. das Vertragsstatut oder eine Rechtswahl der Parteien im Vertrag Anwendung finden kann, hingegen für das Verfügungsgeschäft zwingend lex loci protectionis Anwendung finden muss."

Addendum 13.11.12: The interested reader may also consult the Swiss Federal Patent Court case S2019_007, 1 October 2019 (Icos vs Sandoz), in particular, footnotes 12 and 13 for a discussion of the Spaltungstheorie and Einheitstheorie. The decision implicitly raises the question of whether the choice of law rule should be the same for patents (as registered rights) and copyright. I add that the Court in Celltrion/Biogen gave an alternative basis for the lex loci protectionis by pointing out that priority is a rule about patentability.

Addendum 13.11.2019: A case note for this case was published by Mr Vigand in LexisNexis Propriété Industrielle 2019 comm.56 (November 2019 issue, p. 28).

T 1904/14 - Not addressing all grounds for refusal

Key points

• In this examination appeal, the application was refused for lack of novelty, inventive step, and lack of clarity. The applicant (a large industrial company) did not comment on clarity in the Statement of grounds, only on novelty and (in detail) on inventive step. 
• The Board finds that the appeal is inadmissible under Rule 99(2) EPC. The arguments in favor of clarity filed later in the appeal procedure do not help. The assertion of a substantial procedural violation (also only submitted later in the appeal procedure) neither helps. 
• The Board: "Einen Widerspruch in der Begründung der angefochtenen Entscheidung hat die Beschwerdeführerin vielmehr erst in Reaktion auf die vorläufige Meinung der Kammer mit ihrem am 23. Mai 2019 eingegangenen Schreiben gerügt. Die Zulässigkeitsvoraussetzung gemäß Regel 99 (2) EPÜ, das heißt eine hinreichende Beschwerdebegründung, muss jedoch innerhalb der nach Artikel 108 Satz 3 EPÜ vorgesehenen Frist für die Einreichung der Beschwerdebegründung erfüllt sein und kann nicht durch einen verspäteten Vortrag nachträglich geheilt werden."
• There were also no auxiliary requests implicitly addressing the clarity issue.
• I note that oral proceedings took place before the Board, from 13:00 to 13:45.

EPO T 1904/14 - link

Entscheidungsgründe

Zulässigkeit der Beschwerde

1. Aus Artikel 108 Satz 3 EPÜ in Verbindung mit Regel 99 (2) EPÜ ergibt sich, dass in der Beschwerdebegründung anzugeben ist, aus welchen Gründen die Entscheidung aufzuheben ist. Es ist dementsprechend ständige Rechtsprechung der Beschwerdekammern, dass sich eine für die Zulässigkeit einer Beschwerde ausreichende Begründung mit allen tragenden Gründen der angefochtenen Entscheidung auseinandersetzen muss (siehe Rechtsprechung der Beschwerdekammern, 8. Auflage 2016, IV.E.2.6.3.b)). Dies gilt auch dann, wenn die Begründung in der angefochtenen Entscheidung falsch oder widersprüchlich ist.

2. In der angefochtenen Entscheidung war die Prüfungsabteilung zu dem Schluss gelangt, dass der Gegenstand des Anspruchs 1 des damaligen Hilfsantrags 1, der identisch mit dem jetzigen Hauptantrag ist, nicht klar im Sinne von Artikel 84 EPÜ sei (siehe die Entscheidungsgründe der angefochtenen Entscheidung unter Punkt 2.2 in Verbindung mit Punkt 1.3).

T 2216/12 - Six year delay

Key points

• In this opposition appeal, the Notice of appeal was filed  October 2012 and the reply in May 2013. There was no further substantive action until the summons for oral proceedings of 22 January 2018.
• The appellant filed a new document D42 on 23.01.2018. The Board does not admit the document. " Das Beweismittel D42 wurde von der Beschwerde-führerin I mehr als sechs Jahre nach der Beschwerdebegründung mit Schriftsatz vom 23. Januar 2018 eingereicht. Sie begründete das späte Vorbringen damit, dass D42 aufgrund des Vertreterwechsels nicht zu einem früheren Zeitpunkt vorgebracht werden konnte. Zudem fasse D42 lediglich das allgemeine Fachwissen zusammen und werfe keine neuen und komplexen Fragen auf.". 
• The Board considers D42 to be not merely common general knowledge and furthermore to address issues with the impugned decisions. Furthermore, a change of the representative is no excuse for filing documents late, according to established case law.
• With the same letter of 23.01.2018, a new inventive step attack was also submitted which is neither admitted.
• I'm not sure what to make of the Board's observation of the 6 year delay in this case were the summons were also issued only after six years.

EPO T 2216/12 - link


8. Zulassung der Beweismittel D34 bis D37 und D42

8.1 D34 bis D36 wurden mit den jeweiligen Beschwerdebegründungen (siehe Punkte V und VI oben) als direkte Reaktion auf die Entscheidung der Einspruchsabteilung eingereicht. Beiden Beschwerdeführerinnen dienten die eingereichten Beweismittel dazu, bereits vorgebrachte Angriffslinien bezüglich mangelnder erfinderischer Tätigkeit ausgehend von D2 (in Kombination mit D2d) oder D3 zusätzlich zu untermauern. Insbesondere sollten sie die Auffassungen der Beschwerdeführerinnen hinsichtlich dessen, was D2 den Fachmann lehrt, weiter stützen. Die Kammer wertete das Einreichen der Beweismittel D34 bis D36 daher als normales Verhalten der unterlegenen Parteien und sah keinen Grund diese nicht in das Verfahren zuzulassen.

8.2 Gleiches gilt für das Beweismittel D37. Die Beschwerdeführerin I berief sich in der mündlichen Verhandlung vor der Kammer auf D37 als weiteren Beleg für die bereits in der Beschwerdebegründung geltend gemachte unzureichende Ovulationshemmung. Inwiefern D37 dazu tatsächlich geeignet ist, ist für die Frage Zulassung ohne Bedeutung und wird im Rahmen der Beurteilung der erfinderischen Tätigkeit zu untersuchen sein.

8.3 Das Beweismittel D42 wurde von der Beschwerde-führerin I mehr als sechs Jahre nach der Beschwerdebegründung mit Schriftsatz vom 23. Januar 2018 eingereicht. Sie begründete das späte Vorbringen damit, dass D42 aufgrund des Vertreterwechsels nicht zu einem früheren Zeitpunkt vorgebracht werden konnte. Zudem fasse D42 lediglich das allgemeine Fachwissen zusammen und werfe keine neuen und komplexen Fragen auf.

T 0105/14 - The Netherlands as opponent

Key points

• In this opposition-appeal about a vaccine, the opponent is "The Kingdom of the Netherlands, represented by the Minister of Public Health, Welfare and Sports". Let me emphasize at the outset that it is otherwise a normal Notice of opposition with inventive step attacks and attacks based on insufficient disclosure competently drafted by a professional representative - no political statements or morality objections.
• The case is also interesting about a request for apportionment of costs. The OD had revoked the patent for lack of inventive step. The Board issues its negative preliminary opinion. The patentee then announces that it will not attend the oral proceedings with a letter dated 3 April but submitted only on 9 April, without a courtesy copy being sent to the opponent; the oral proceedings were scheduled for 12 April. The opponent requests apportionment of costs: " [Patentee's] behaviour not only offended against the basic rules of courtesy but also deprived the respondent of any possibility to timely cancel any hotel and flight reservations." 
• " The board agrees with the respondent on the relevance of the case law concerning the equitable obligation on every party summoned to oral proceedings to inform the board and, following the basic rules of courtesy, the other parties as soon as that party knows that it will not attend as summoned." 
• " The board agrees with the respondent that such basic rules [of courtesy] are much desirable and certainly contribute to a fair development of all proceedings, not only of appeal proceedings. Unfortunately, most of these rules are not enshrined or laid down in the Convention, let alone any means and measures to enforce them." (As a comment, in my view the term 'reasons of equity' in Article 104 EPC can very well encompass "basic rules of courtesy", especially if these rules "contribute to a fair development of all proceedings". Clearly, the term "equity" refers to unwritten rules, so the observation that "these rules are not enshrined or laid down in the Convention" seems beside the point ).
• " In the board's view, it is not possible to conclude with certainty from the date on the appellant's letter that a decision was already taken on this date. The board cannot be sure of the appellant's decision-taking process. Appellant's letter may have been drafted on 3 April but only approved at a later date." 
• " [T]he decision whether to attend or not oral proceedings as summoned depends always not only on the party itself but on the other parties' actions and behaviour. In the light thereof, it is always up to a party to find and decide on the most appropriate conditions and suitable ways for arranging its travel and accommodation reservations accordingly. " 

EPO T 0105/14 - link

Apportionment of costs

22. The board agrees with the respondent on the relevance of the case law concerning the equitable obligation on every party summoned to oral proceedings to inform the board and, following the basic rules of courtesy, the other parties as soon as that party knows that it will not attend as summoned. It is also established by this case law that, under certain circumstances and in certain cases, if a party fails to attend as summoned, an apportionment of costs in favour of another party, who has attended as summoned, may be justified for reasons of equity in accordance with Article 104(1) EPC (cf. "Case Law", supra, IV.C.6.2.2, 990). In support of its arguments regarding the request for apportionment of costs, the respondent has also mentioned decision T 280/15 of 7 March 2019, wherein the board competent in that case decided an apportionment of costs in favour of the party attending as summoned (cf. point XVII supra).

T 1844/15 - Claim interpretation with Google

Key points

• This opposition appeal deals with the interpretation of the term "cart" in the claims. The opponent had supported their proposed - broad - interpretation by submitting "photo's retrieved by Google for "transportation cart" as search term".
• The Board: " Without insight into the reputedly complex search algorithms employed by Google, their search results can hardly be considered authoritative for establishing the true meaning of terminology." 
• The opponent had also submitted a USPTO examination report in support of their claim interpretation. The Board: "the Board is also not privy to examination practice in the USPTO or the considerations that may have motivated the US examiner to go so far as to cite as novelty destroying any wheeled structure including e.g. a shipyard crane - which in the Board's view no skilled person would reasonably consider subsumed under the term "cart". The Board is therefore unable to draw any convincing argument from this evidence that would change its opinion in respect of the scope of the term "transportation cart" in the sense of the contested claim." 
• According to the Board, a cart is "a small wheeled vehicle", citing Merriam-Webster.

EPO T 1844/15 -  link

3.3 [...] Therefore, in the Board's view the skilled person when reading the feature "transportation cart" would give the term "cart" its usual meaning of "a small wheeled vehicle" (Merriam-Webster), thus excluding larger devices as boat trailers, trucks and portable building works elevators. This is also supported by the patent specification that is generally directed to a transportation cart primarily designed for use in an animal barn, see paragraphs [0001] and [0002], and thus of limited dimensions. 

3.4 The Respondent-Opponent submits in this respect that the term "cart" also has meanings other than merely a "small wheeled vehicle", and that interpreted thus, the claim wording would also encompass the devices of D1-D5. In support they referred to photo's retrieved by Google for "transportation cart" as search term (enclosure I) and a USPTO examination report (enclosures II and III ) citing a wide variety of movable apparatus against novelty. Without insight into the reputedly complex search algorithms employed by Google, their search results can hardly be considered authoritative for establishing the true meaning of terminology. The Board is also not privy to examination practice in the USPTO or the considerations that may have motivated the US examiner to go so far as to cite as novelty destroying any wheeled structure including e.g. a shipyard crane - which in the Board's view no skilled person would reasonably consider subsumed under the term "cart". The Board is therefore unable to draw any convincing argument from this evidence that would change its opinion in respect of the scope of the term "transportation cart" in the sense of the contested claim.

T 0341/16 - Minor amendment, significant change

Key points

• In this opposition appeal, the patentee submits amended claims two days before the oral proceedings, reverting from "consisting of" back to the (original) term "including" so as to address an objection under Article 123(2) EPC. The Board does not admit the request.
• " Amended requests, in particular when used to overcome preliminary formal objections, can significantly change the structure of the proceedings even when they are based on apparently minor modifications. This appears to be the case in the present situation, because the appellants' late reaction to the formal objection under Article 123(2) EPC made in the Boards' preliminary opinion against the substitution of "including" by "consisting of", created a new situation for the respondent, as up until that moment the respondent could have expected that the main request as filed on 30 January 2019 would likely be rejected under Article 123(2) EPC. " 
• In particular, the opponent could have expected that the focus would have been on the patentability of the first auxiliary request wherein a feature was narrowed, not on the patentability of the (broader) main request. 

EPO T 0341/16 - link

Reasons for the Decision

1. Main Request - Admittance (Article 13(1) RPBA)

1.1 The Board has decided to exercise its discretion under Article 13(1) RPBA not to admit this request for the following reasons:

Amended requests, in particular when used to overcome preliminary formal objections, can significantly change the structure of the proceedings even when they are based on apparently minor modifications. This appears to be the case in the present situation, because the appellants' late reaction to the formal objection under Article 123(2) EPC made in the Boards' preliminary opinion against the substitution of "including" by "consisting of", created a new situation for the respondent, as up until that moment the respondent could have expected that the main request as filed on 30 January 2019 would likely be rejected under Article 123(2) EPC. 

Since in the main request the feature "metallic salt" was not restricted to CaCl2, and this feature was restricted to CaCl2 in the following requests, the respondent might have not expected to discuss patentability of claim 1 defining this broader version of the feature. Thus, the removal of the main cause of non-compliance with Article 123(2) EPC (i.e. the substitution of "consisting of" by the originally defined term "including" in claim 1) two days before the oral proceedings potentially confronted the respondent with a patentability discussion which he might have not expected in view of the preliminary opinion of the Board.

1.2 The appellant argued that the request was a reaction to the new objections raised in the preliminary opinion of the Board, and that this reaction had arrived at such late stage because only then had it become apparent that the prior art taught away from the subject-matter of claim 1, so that a more general definition of the composition (i.e. "including" instead of "consisting of") could be used. Furthermore, the new main request was the result of a minor amendment which could not be regarded as taking the other party by surprise.

1.3 The Board cannot follow this argumentation, because the appellant had ample opportunity to react to the preliminary opinion of the Board as evidenced by the fact that it filed a substantive reaction as well as a new main request and auxiliary requests 1-9 with letter dated 30 January 2019. The appellant thus created the impression that it consciously and deliberately only wanted to defend the main request with the "consisting of" wording. Furthermore, as explained above, even minor amendments can potentially lead to significant changes in the structure of the proceedings, in particular affecting the substance to be discussed in the assessment of patentability.